The Complainants are Laboratoires M&L, France and L’Occitane International SA, Switzerland, represented by Wilhelm Gilliéron Attorney Corp., Switzerland.
The Respondent is Web Commerce Communications Limited dba WebNic.cc, Singapore / Tan Baozheng, China.
The disputed domain name <l-occitane.com> is registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2021. On August 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 24, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 28, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 31, 2021.
The Center verified that the Complaint together with the amended 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, and the proceedings commenced on September 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 14, 2021.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on October 19, 2021. 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.
The Complainants are part of the L’Occitane Group, a global, natural and organic ingredient-based cosmetics and well-being products manufacturer and retailer. The L’Occitane Group has 3,486 retail locations and 1,608 stores operated directly by it.
The first Complainant is Laboratoires M&L, and the second Complainant is L’Occitane International SA (collectively the “Complainant”).
The first Complainant holds several word marks for the L’OCCITANE, including the following:
- Int. Reg. No. 1006051, registered on October 8, 2008, for products in classes 09, 14, 18, 24, 25, 28, 30, 35, 43, and 44; and
- Int. Reg. No. 579875, registered on November 5, 1991, for products in classes 03, 04, 05, 16, and 21.
The second Complainant is the owner of numerous domain names, including <loccitane.com>.
The disputed domain name was registered on June 9, 2021. At the time of this decision, the disputed domain name is active, and redirects users to a sports betting website.
The Complainant maintains that the disputed domain name <l-occitane.com> is identical or at least confusingly similar to its L’OCCITANE trademark.
The Complainant submits that the mere addition of a hyphen between the letter “l” and term “occitane” makes no difference as users may well believe that the website at the disputed domain name is the Complainant’s official website.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent is not commonly known by the disputed domain name and has not been authorized to use the Complainant’s L’OCCITANE trademark. The Complainant submits that the Respondent is not using the disputed domain name with a bona fide intent and is not making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant further contends that the Respondent registered and is using the disputed domain name in bad faith.
The Complainant reiterates that the L’OCCITANE trademark is a famous mark owned by the Complainant and that the Respondent deliberately registered the trademark as a domain name. It is obvious then that the Respondent was aware of the Complainant’s trademark when registering the disputed domain name. In addition one cannot ascribe any reason for the registration and holding of the disputed domain name by the Respondent, other than out of bad faith. This is one of those cases where there is no conceivable non-infringing use to which the Respondent could put the disputed domain name to use.
The Complainant requests the transfer of the disputed domain name to the second Complainant, L’Occitane International SA.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name is 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The Complainant has demonstrated that it owns trademark registrations for L’OCCITANE.
The disputed domain name wholly incorporates the Complainant’s trademark and is therefore confusingly similar to it. The Panel is of the view that the mere addition of a hyphen between the letter “l” and term “occitane” does not prevent a finding of confusing similarity between the Complainant’s trademark and the disputed domain name.
As a result, the Panel finds that the Complaint succeeds under the first element of the Policy.
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the respondents may establish rights or legitimate interests in the domain name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the domain name shifts to the respondent.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent is using the disputed domain name confusingly similar to the Complainant’s trademark to direct Internet users to a commercial website displaying sports gambling content. This case has not been rebutted by the Respondent and for this reason and for the reasons described below under the third element, the Panel finds that the Complaint also succeeds under this element of the Policy.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another.
The Panel is of the view that the Respondent was aware of the Complainant’s trademark at the time of registering the disputed domain name since the trademarks are well-know (see Laboratoires M&L v. Hebe Leite, WIPO Case No. DBR2017-0001; Laboratoires M&L and L’Occitane International SA v. Hebe Leite, WIPO Case No. DES2016-0017).
The Respondent has used the Complainant’s trademark to direct Internet users to a website displaying sports gambling content that operates with a commercial purpose to establish Internet user confusion regarding the Complainant as the source, sponsor or affiliate of the Respondent’s commercial website.
The Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. In the absence of any reply by the Respondent, the Panel considers that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights.
Accordingly, the Panel finds that the disputed domain name was both registered and used in bad faith and the Complaint succeeds under this element of the Policy.
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 <l-occitane.com> be transferred to the second Complainant L’Occitane International SA.
Pablo A. Palazzi
Sole Panelist
Date: November 5, 2021