WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
L'OREAL v. Lewis Cheng
Case No. D2008-0437
1. The Parties
The Complainant is L'OREAL, Paris, France, represented by Cabinet Dreyfus & Associés, France.
The Respondent is Lewis Cheng, Palo Alto, California, United States of America.
2. The Domain Names and Registrar
The disputed domain names <loreal-recall.com>, <lorealrecall.com>, <loreal-recalls.com> and <lorealrecalls.com> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2008. On March 25, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On March 26, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 2, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 22, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 23, 2008.
The Center appointed Eduardo Machado as the sole panelist in this matter on May 6, 2008. 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
Complainant is L’Oreal, a French industrial group specialized in cosmetics and beauty, created in 1909 by a French chemist, which is present in over 150 countries and in the five continents with 290 subsidiaries and 37 factories worldwide. L’Oreal is represented in the United States of America by its subsidiary L’Oreal USA, based in New York, and has entered in the United States of America in 1953.
According to the documentary evidence and contentions submitted, Complainant L’Oreal owns a number of trademark registrations for the L’OREAL trademark in the United States of America. The L’OREAL trademark was first registered in the United States of America under Reg. No. 0540541 on April 3, 1951 and under Reg. No. 0661746 on May 13, 1958. Complainant owns a number of domain names which include the name L’Oreal, particularly the domain name <l-oreal.com>, registered on October 22, 1996.
The notoriety of the L’OREAL trademark has been recognized in prior WIPO UDRP decisions. L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; L’Oréal, Helena Rubinstein, Lancôme Parfums et Beauté & Cie. v. Spiral Matrix, WIPO Case No. D2006-0869; L’Oreal v. Liao quanyong, WIPO Case No. D2007-1552; L’oreal v. Domain Park Limited, WIPO Case No. D2008-0072.
In the absence of a Response, nothing is known about the Respondent except that it is the registrant of the domain names in issue.
5. Parties’ Contentions
A. Complainant
Identical or Confusingly Similar
Complainant contends that the disputed domain names <lorealrecalls.com>, <lorealrecall.com>, <loreal-recall.com> and <loreal-recalls.com> are identical or at least confusingly similar to its trademarks. Complainant contents that said domain names reproduce its trademarks in their entirety.
Complainant asserts that the only difference between the disputed domain names and its trademarks are:
- the suppression of the apostrophe to L’OREAL’s trademarks.
- the adjunction of a generic term “(-)recall(s)”.
- the adjunction of a gTLD “.com”.
Complainant alleges that the suppression of the apostrophe on Complainants trademarks after the “l” of L’Oreal is due to technical reasons which prevent the registration of domain names with an apostrophe.
Consequently, said suppression cannot give to the disputed domain names any distinctiveness.
Regarding the adjunction of the generic term “(-)recall(s)”, Complainant asserts that the adjunction of said term does not avoid the likelihood of confusion between the disputed domain names and the trademark L’OREAL.
Regarding the adjunction of gTLD “.com”, Complainant contents that it is not a distinguishing feature and does not suppress the likelihood of confusion.
Rights or Legitimate Interests
First, Complainant contents that Respondent is not affiliated with Complainant in any way. Second, Complainant asserts that it has not authorized Respondent to use and register its trademark, or to seek the registration of any domain name incorporating said mark.
Third, Complainant asserts that Respondent has no prior rights or legitimate interests in the disputed domain names and that Respondent has never used the terms l’oreal in any way before or after Complainant started their business.
Fourth, Complainant alleges that Respondent is not known under the name l’oreal or any similar term.
Fifth, Complainant asserts that Respondent never claimed any rights or legitimate interests in the registration of the domain names in dispute.
Sixth, Complainant contents that the mere reproduction of the well-known trademark L’OREAL constitutes an obvious intent to misleadingly divert Internet consumers.
Finally, Complainant states that since the disputed domain names are so identical to its famous trademarks, Respondent could not reasonably pretend it was intending to develop a legitimate activity.
Registered and Used in Bad Faith
First, Complainant asserts that Respondent knew or must have known the trademark “L’OREAL” at the time it registered the domain names.
Second, Complainant asserts that Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with its marks. Additionally, Complainant contents that the disputed domain names are not substantively exploited since their registration and that said behavior constitutes a passive holding of domain names.
Finally, Complainant contents that the lack of response to Complainant’s cease-and-desist letter and reminder constitutes additional evidence of Respondent’s bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested:
(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, Policy, paragraph 4(a).
A. Identical or Confusingly Similar
The Panel finds that the domain names <lorealrecalls.com>, <lorealrecall.com>, <loreal-recall.com> and <loreal-recalls.com> are confusingly similar to the L’OREAL marks since the dominant portion of Complainant’s registered mark is being reproduced. The disputed domain names differ from Complainant’s registered L’OREAL marks only in the suppression of the apostrophe to L’OREAL’s trademarks, the adjunction of a generic term “(-)recall(s)”and the adjunction of a gTLD “.com”.
The Panel finds that the suppression of the apostrophe to L’OREAL’s trademarks, the adjunction of a generic term “(-)recall(s)”and the adjunction of a gTLD “.com” are not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of Complainant.
The suppression of the apostrophe is due to technical reasons which prevent the registration of domain names with an apostrophe and does not give any distinctiveness to the disputed domain names.
The disputed domain names differ from Complainant’s registered L’OREAL mark in that they contain the generic word “(-)recall(s)”. Several prior UDRP panels have held that the addition of a non-distintictive, descriptive or generic term like “(-)recall(s)” does not change the overall impression of a mark. “The addition of ‘my’ is not sufficient to avoid confusion”. Sony Kabushiki Kaisha also trading as Sony Corporation v. Sin, Eonmok, WIPO Case No. D2000-1007.
Finally, it is well established that the mere adjunction of the gTLD “.com” is not a distinguishing feature and does not suppress the likelihood of confusion (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and Société des Hôtels Méridiens v. Richard English, WIPO Case No. D2005-0646).
The Panel finds that Complainant has established the first element of the Policy.
B. Rights or Legitimate Interests
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared 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.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain names.
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain names and has not used the disputed domain names, or a name corresponding to them, in connection with a bona fide offering of goods or services. At the time the UDRP Complaint was filed and at the time of this Decision, the disputed domain names resolve to websites displaying an “unavailable” message. This can be considered passive holding of the domain names in dispute, as outlined in other UDRP cases (Comerica Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0615; Banco Bilbao Vizcaya Argentaria, S.A. v. N/A, WIPO Case No. D2003-0996; Telstra Corporation supra, WIPO Case No. D2000-0003).
A complainant is required to make out a prima facie case that a respondent lacks rights or legitimate interests. Once such prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If a respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Morgan Freeman v. Mighty LLC, WIPO Case No. D2005-0263; Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
The Panel finds that the circumstances enumerated above establish that Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
There is no evidence that Respondent has effectively used the disputed domain names to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark. No evidence has been provided to show if Respondent has tried to sell the disputed domain names to Complainant or to others.
Nonetheless, trademark registrations of record confirm Complainant’s allegations that it had long been using its L’OREAL marks when the disputed domain names were registered. The Panel finds persuasive Complainant’s allegation that Respondent must have been aware of Complainant’s rights in the mark and, further, that Respondent knowingly infringed Complainant’s trademark when it registered the disputed domain names.
At the time the Complaint was filed and at the time of this Decision, the disputed domain names resolve to an “unavailable” page, which, according to several prior UDRP panels, is considered a case of passive holding of a domain name. Prior panels have ruled that in such cases the use of the domain name is not essential to establish bad faith use. As the disputed domain names reproduce Complainant’s trademarks in its whole, in the circumstances of this case, absent a reply from Respondent, and given Complainants well-known trademark, there is no possible good faith use of them. Also, it is not reasonable to force Complainant to wait for a future use of said domain names, as their sole appropriation characterizes bad faith of Respondent.
Therefore, the Panel finds that Respondent registered and is using the disputed domain names in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <lorealrecalls.com>, <lorealrecall.com>, <loreal-recall.com> and <loreal-recalls.com> be transferred to the Complainant.
Eduardo Machado
Sole Panelist
Dated: May 20, 2008