WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

L’Oréal and Biotherm v. Li Hai Lu

Case No. D2016-0631

1. The Parties

The Complainants are L’Oréal of Paris, France (the “first Complainant”); and Biotherm of Monaco (the “second Complainant”), both represented by Dreyfus & associés, France.

The Respondent is Li Hai Lu of Beijing, China.

2. The Domain Names and Registrar

The disputed domain names <biotherm.club> and <lorealcosmetics.club> are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2016. On April 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 5, 2016, the Registrar transmitted by email to the Center its verification response which confirmed that the Respondent is listed as the registrant and provided the contact details.

On April 5, 2016, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On April 7, 2016, the Complainants confirmed their request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date or thereafter.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on April 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2016.

The Center appointed Matthew Kennedy as the sole panelist in this matter on May 11, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Both Complainants form part of the L’Oréal Group. The first Complainant manufactures and distributes cosmetics. The second Complainant manufactures skincare products for men and women and is a subsidiary of the first Complainant. Both Complainants sell and widely promote their products in many countries, including China. The first Complainant has also established a research center in China.

The first Complainant owns multiple registrations of L'OREAL trademarks, including International registration no. 184970 (L’ORÉAL in a particular script) registered in 1955 in respect of goods in classes 3 and 5 including cosmetics; and Chinese registrations nos. 148647 (L’ORÉAL in a particular script), 1487385 (L’OREAL) and 1657449 (L’ORÉAL in a particular script), registered in 1981, 2000 and 2001, respectively, in respect of goods and services in classes 3, 42 and 25, respectively, including cosmetics and cosmetic research. These registrations are all still in effect.

The second Complainant owns multiple registrations of the trademark BIOTHERM, including International registration no. 198936 registered in 1957 in respect of goods in class 3; and Chinese registrations nos. 76630 and 76631, both registered in 1978 also in respect of goods in class 3. These registrations are all still in effect.

The Complainants and their affiliates operate websites to promote their services, including “www.loreal.com” and “www.biotherm.com”.

The Respondent is the registrant of both disputed domain names. The disputed domain names were both created on June 6, 2015 and updated on January 10, 2016 and April 5, 2016. Neither of them resolves to any active website. The Respondent is also the registrant of other domain names, including <boucheron.club>, <sisley.club>, <dulux.club> and <ferrero.club>.

5. Parties’ Contentions

A. Complainants

The Complainants argue that the disputed domain names are identical or at least confusingly similar to the Complainants’ trademarks. The disputed domain names reproduce the Complainants’ L’OREAL and BIOTHERM trademarks in their entirety. The omission of the apostrophe in the trademark L’OREAL and the lack of an accent over the “e” are insignificant. The addition of the generic or descriptive term “cosmetics” does not dispel the likelihood of confusion. The word “club” is only a generic Top-Level Domain (“gTLD”) and should be disregarded in this case but, even if it were taken into consideration, it would only increase the likelihood of confusion as Internet users are likely to believe it indicates a club or loyalty program related to the Complainants’ brands.

The Complainants argue that the Respondent has no prior rights or legitimate interests in the disputed domain names. The trademark registrations precede the domain name registrations. The disputed domain names are so similar to the famous trademarks of the Complainants that the Respondent cannot reasonably pretend he was intending to develop a legitimate activity through them. The Respondent is not commonly known by the names “L’oreal” or “Biotherm” or in any way affiliated with the Complainants, nor authorized or licensed to use the Complainants’ trademarks or to seek registration of any domain names incorporating them. The Respondent did not demonstrate use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services; the disputed domain names resolve only to inactive pages. The Respondent has registered around 20 domain names reproducing other well-known trademarks and company names.

The Complainants argue that the disputed domain names were registered and are being used in bad faith. It is implausible that the Respondent was unaware of the Complainants when he registered the disputed domain names. The Complainants’ trademarks are well known throughout the world and a quick trademark search would have revealed the existence of Complainants and their trademarks. The inclusion of the term “cosmetics” makes a direct reference to the first Complainant’s field of activity and trademark. The Respondent is engaged in a form of cybersquatting. The disputed domain names are confusingly similar to the Complainants’ trademarks and any use was unauthorized by the Complainants. The disputed domain names resolve only to inactive pages. It is likely that the Respondent registered the disputed domain names to prevent Complainants from using their trademarks in the disputed domain names. All these circumstances are evidence of bad faith.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

6.1 Language of this Proceeding

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreements for the disputed domain names are in Chinese.

The Complainants request that the language of the proceeding be English. Their main argument is that they have no knowledge of Chinese hence translation of the Complaint would impose a significant burden on them. They also point out that the disputed domain names use only Latin characters from which they deduce that the Respondent has knowledge of languages other than English.

The Panel notes that all the Center’s email communications with the Parties have been in both Chinese and English. The Respondent was given an opportunity to object to the Complainants’ request that English be the language of the proceeding but the Respondent did not in fact object.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the parties are treated with equality, that each party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. (See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293).

The Panel observes that in this proceeding the Complaint was filed in English and that the Respondent has not expressed any wish to respond to the Complaint or otherwise participate in this proceeding. Therefore, the Panel considers that requiring the Complainants to translate the Complaint into Chinese would create an undue burden and delay.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.

6.2 Multiple Complainants

The Complaint was filed by two complainants against a single respondent. Both Complainants form part of the same corporate group. Each Complainant owns registrations of a trademark that is incorporated in one of the disputed domain names. The Respondent is the registrant of both disputed domain names. The Panel finds that they have a common grievance against the Respondent and that it is efficient to permit the consolidation of their complaints. Therefore, the Complainants are referred to below collectively as “the Complainant” except as otherwise indicated.

6.3 Analysis and Findings

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the first Complainant has rights in registered trademarks consisting of the word L’OREAL and L’ORÉAL, and the Panel finds that the second Complainant has rights in registered trademarks consisting of the word BIOTHERM.

The disputed domain name <lorealcosmetics.club> incorporates the first Complainant’s L’OREAL trademark in its entirety and that trademark is the dominant element of this disputed domain name. This disputed domain name includes the additional element “cosmetics” but that is merely a generic word. A generic word is not sufficient to dispel the confusing similarity of the disputed domain name to the Complainant’s trademark. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110. This disputed domain name also omits the apostrophe in the Complainant’s L’OREAL trademark, and omits the acute accent over the “e” present in certain registrations, but these are minor differences that are insufficient to dispel the confusing similarity. See, regarding the omission of the apostrophe: L’Oreal v. Tracey Johnson, WIPO Case No. D2008-1721.

The disputed domain name <biotherm.club> incorporates the second Complainant’s BIOTHERM trademark in its entirety and that trademark is the dominant element of the disputed domain name.

An additional element in both disputed domain names is “.club” but this is a gTLD. A gTLD suffix generally has no capacity to distinguish a domain name from a trademark. See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080.

Therefore, the Panel finds that each of the disputed domain names is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain names or a name corresponding to the [disputed] domain names in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain names, even if [the Respondent has] acquired no trademark or service mark rights; or

(iii) [the Respondent is] making a legitimate noncommercial or fair use of the [disputed] domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel has already found each of the disputed domain names to be confusingly similar to one of the Complainant’s trademarks. The Complainant submits that it has never authorized the Respondent to use or register its trademarks or to register the disputed domain names.

With respect to the first and third circumstances set out above, the evidence shows that the Respondent makes only passive use of the disputed domain names. There is no evidence that the Respondent has made any other use, or preparation to use, the disputed domain names.

With respect to the second circumstance, the Respondent’s name is “Li Hai Lu”, which has no apparent connection with the names “lorealcosmetics”, “loreal” or “biotherm”.

In view of the above circumstances, the Panel considers that the Complainant has discharged its burden of proof that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The burden now shifts to the Respondent to show that it does have some rights or legitimate interests, but the Respondent did not respond to the Complaint.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of either of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive.

With respect to registration in bad faith, the Panel observes that the disputed domain names were registered long after the Complainant’s trademarks were registered, including in China, where the Respondent is located. The Respondent registered the two disputed domain names on the same day, each incorporating a different L’Oréal Group brand, namely L’OREAL (minus the apostrophe) and BIOTHERM. The possibility that the Respondent registered not one but two L’Oréal Group brands on the same day without being aware of the Complainant’s trademarks appears remote. One of those disputed domain names includes the additional element “cosmetics”, which indicates an awareness of the Complainant’s products. The other is identical to the Complainant’s BIOTHERM trademark but for the addition of a gTLD. There is no evidence on the record that either trademark (as opposed to, say, “biothermal”) has any dictionary meaning. Information on the Complainant’s products and the Complainant’s websites “www.lorealparis.com.cn” and “www.biotherm.com.cn” are the top search results for the terms “loreal” and “biotherm”, respectively, in the Baidu search engine. In view of these circumstances, the Panel is persuaded that the choice to register domain names identical to, or wholly incorporating, one of the Complainant’s trademarks, in combination with a gTLD, was deliberate.

With respect to use in bad faith, the Respondent makes only passive use of the disputed domain names but this does not preclude a finding of use in bad faith. See Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the present dispute, the Complainant has a strong reputation in its trademarks which are widely known through use in connection with cosmetics and skincare products, respectively, including through the Complainant’s official websites in China. One disputed domain name combines the Complainant’s L’OREAL trademark (minus the apostrophe) with one of the Complainant’s product categories (cosmetics), plus a gTLD. One disputed domain name consists of the exact trademark BIOTHERM plus a gTLD. The choice of the gTLD “.club” in combination with the Complainant’s trademarks (and the product category “cosmetics”) increases the likelihood that Internet users will be misled into believing that the disputed domain names relate to some type of brand loyalty program affiliated with the Complainant. The Respondent did not offer any explanation of any actual or potential use of the disputed domain names. Given these circumstances and those described in Section 6.3B, the Panel finds that the disputed domain names are being used in bad faith.

Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <lorealcosmetics.club> be transferred to the first Complainant and that the disputed domain name <biotherm.club> be transferred to the second Complainant.

Matthew Kennedy
Sole Panelist
Date: May 16, 2016