WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

L'oreal SA v. 张容容, LinChaoJie, Guangxi NanNing IDEA Business Planning Co., Ltd

Case No. D2010-1318

1. The Parties

The Complainant is L'oreal SA of France, represented by Dreyfus & associés of France.

The Respondent is 张容容, LinChaoJie, Guangxi NanNing IDEA Business Planning Co., Ltd of People’s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <lorealparisjapan.com> is registered with Xiamen eName Network Technology Corporation Limited dba eName Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2010. On August 5, 2010, the Center transmitted by email to Xiamen eName Network Technology Corporation Limited dba eName Corp. a request for registrar verification in connection with the disputed domain name. On August 6, 2010, Xiamen eName Network Technology Corporation Limited dba eName Corp. transmitted by email to the Center its verification response in relation to 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 10, 2010 providing the registrant and contact information provided by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 18, 2010. The Center verified that the Complaint and 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”).

On August 10, 2010, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. On August 18, 2010 the Complainant filed a request that English be the language of the proceedings, which was incorporated in the amended Complaint. The Respondent did not comment on the language of proceedings by the due date.

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 August 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 12, 2010. The Response was filed with the Center on September 12, 2010.

The Center appointed Jonathan Agmon as the sole panelist in this matter on September 21, 2010. 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 Panel notes the parties’ further submissions in relation to a possible settlement. However, the parties did not reach an understanding and the Panel will proceed to render a decision.

4. Factual Background

The Complainant, L'oreal SA, is a French based industrial group, founded in 1909. The Complainant engages in cosmetics and beauty, and is nowadays one of the international leaders in its field.

The Complainant, along its subsidiary companies (hereinafter: the "Complainant"), has a global workforce of over 64,000 workers in 130 countries and has consolidated sales of 17.5 billion Euros in 2009 alone.

The Complainant markets more than 500 brands and 2,000 products in all sectors of the beauty and cosmetics industry under different names, such as: L'oreal Paris, L'oreal Professionnel and others.

The Complainant is the owner of multiple registered trademarks containing the mark L'OREAL. For example, International trademark registration No. 184970 – L'OREAL logo, with the registration date of May 23, 1955, designated for Austria, China, Germany, Egypt, Spain, Hungary, Italy, Liechtenstein, Morocco, Monaco, Mongolia, Portugal and others; International trademark registration No. 230114 – L'OREAL logo, with the registration date of March 28, 1960, designated for Austria, Bosnia and Herzegovina, China, Czech Republic, Germany, Egypt, Spain, Croatia, Hungary, Italy and others; International trademark registration No. 328403 – L'OREAL logo, with the registration date of November 28, 1966, designated for Bulgaria, Czech Republic, Egypt, Spain, Croatia, Hungary, Italy, Democratic People's Republic of Korea, Liechtenstein, Morocco, Monaco, Mongolia, Russian Federation and others; International trademark registration No. 238337 – L'ORÉAL DE PARIS, with the registration date of December 10, 1960, designated for Austria, China, Germany, Egypt, Spain, Hungary, Italy, Liechtenstein, Morocco, Monaco, Mongolia, Portugal and others.

The Complainant has also developed a formidable presence on the Internet and is the owner of several domain names, which contain the word "loreal". For example: <loreal.com>, <lorealparis.com>, <loreal.us>, and many more. The Complainant is using these domain names in connection with its activities.

The disputed domain name <lorealparisjapan.com> was registered on April 5, 2010.

The disputed domain name resolves to a parking webpage, which displays the following announcement: "Internet Explorer cannot display the webpage".

According to the evidence displayed by the Complainant, the disputed domain name resulted until recently to a pay-per-click advertisement webpage, which included links to French and English websites that engage in cosmetics and beauty products. Some of these websites are direct competitors of the Complainant.

The Complainant sent a Cease and Desist letter to the Respondent on May 18, 2010, informing the Respondent of its intellectual property rights in the name "L'OREAL" and demanding that the disputed domain name be transferred to the Complainant. The Respondent replied to this letter on May 22, 2010 and offered the Complainant to purchase the disputed domain name. Since then, the Respondent contacted the Complainant several times in an effort to sale the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is identical or confusingly similar to the L'OREAL trademark, owned by the Complainant, seeing that it incorporates the trademark as a whole. The Complainant further argues that the omission of the apostrophe after the letter “l” and the accent mark on the letter ”e” is insufficient to avoid confusing similarity as typographical discrepancies such as the inclusion or omission of grammatical marks are inadequate for that purpose.

The Complainant further argues that the additional words "Paris" and "Japan" do not distinguish the disputed domain name from the L'OREAL mark, as they are merely geographical descriptions rather than substantial elements.

The Complainant further argues that it has exclusive rights to the L'OREAL trademark as this trademark is widely recognized with the Complainant and with its operations. Furthermore, the Complainant argues that it has not licensed or permitted the Respondent to use the L'OREAL mark.

The Complainant further argues that the Respondent did not make legitimate use in the disputed domain name.

The Complainant further argues that the Respondent has registered and is using the disputed domain name solely for commercial gain and is attempting to free-ride the goodwill associated with the L'OREAL mark. The Complainant argues that this evidences the Respondent's bad faith.

The Complainant further argues that the Respondent is attempting to promote the sale of products that compete with the Complainant's products, under the disputed domain name. The Complainant argues that this constitutes bad faith.

The Complainant further argues that the Respondent was using the disputed domain name to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark.

The Complainant further argues that the Respondent was aware of the Complainant’s existence and of the L'OREAL mark and products at the time he registered the disputed domain name.

The Complainant further argues that the Respondent's repeat offers to sale the disputed domain name to the Complainant indicate on the Respondent's bad faith.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent argues that he had purchased the disputed domain name legally and in good faith.

The Respondent further argues that he has recently purchased the disputed domain name from another entity. The Respondent argues that he did not act with malice when purchasing the domain name nor is he violating or infringing upon intellectual property rights.

The Respondent further argues that the disputed domain name is sufficiently different from the Complainant's L'OREAL mark, due to the additional word "Japan" and the gTLD ".com".

The Respondent further argues that he has no arbitration agreement with the Complainant and is therefore of the opinion that the proceedings should be conducted in a Chinese court under Chinese law.

The Respondent further argued that the arbitration proceedings may be avoided as he is willing to reach an amicable agreement with the Complainant.

6. Discussion and Findings

A. Procedural Issues

Language of the Proceedings

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 language of the registration agreement for the disputed domain names is Chinese.

The Complainant requested that the language of proceedings should be in English.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of proceedings:

a) The disputed domain name <lorealparisjapan.com> consists of Latin letters and includes two geographical indicators in English ("Paris" and “Japan"). The disputed domain name does not include Chinese words;

b) The advertisements previously included in the website that operated under the disputed domain name <lorealparisjapan.com> were in English and in French;

c) The Respondent sent the Complainant several emails in English that indicate that he is proficient in the English language. The Complainant, however, is not proficient in the Chinese language.

d) The Respondent did not object to the Complainant’s request that English be the language of proceedings.

Upon considering the above, the Panel decides to render the Complainant’s request and rules that English be the language of the proceedings.

Jurisdiction

The Panel notes the Respondent’s claim that any proceedings should be conducted in a Chinese court under Chinese law. In this respect the Panel draws the Respondent’s attention to paragraph 1 of the UDRP which states as follows: “This [Policy] has been adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN"), [and] is incorporated by reference into [the Registrant’s] Registration Agreement, and sets forth the terms and conditions in connection with a dispute between [the Registrant] and any party other than [the registrar] over the registration and use of an Internet domain name registered by [the Registrant]”. In the case at hand, the relevant registrar has confirmed that the UDRP applies to the disputed domain name. Accordingly, the Panel has jurisdiction to decide the matter.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant owns multiple trademark registrations for the mark L'OREAL. For example, International trademark registration No. 184970 – L'OREAL logo, with the registration date of May 23, 1955, designated for Austria, China, Germany, Egypt, Spain, Hungary, Italy, Liechtenstein, Morocco, Monaco, Mongolia, Portugal and others; International trademark registration No. 230114 – L'OREAL logo, with the registration date of March 28, 1960, designated for Austria, Bosnia and Herzegovina, China, Czech Republic, Germany, Egypt, Spain, Croatia, Hungary, Italy and others; International trademark registration No. 328403 – L'OREAL logo, with the registration date of November 28, 1966, designated for Bulgaria, Czech Republic, Egypt, Spain, Croatia, Hungary, Italy, Democratic People's Republic of Korea, Liechtenstein, Morocco, Monaco, Mongolia, Russian Federation and others; International trademark registration No. 238337 – L'ORÉAL DE PARIS, with the registration date of December 10, 1960, designated for Austria, China, Germany, Egypt, Spain, Hungary, Italy, Liechtenstein, Morocco, Monaco, Mongolia, Portugal and others.

The disputed domain name <lorealparisjapan.com> differs from the registered L'OREAL trademark by the additional words "Paris" and “Japan", the additional grammatical indicators (apostrophe and accent marks) and the additional gTLDs “.com”.

The disputed domain name integrates the Complainant’s L'OREAL trademark in its entirety, as a dominant element. The addition of grammatical indicators does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s L'ORERAL trademark. Previous UDRP panels have ruled that "minor typographical differences such as the inclusion or omission of grammatical marks such as hyphens and apostrophes are inadequate to avoid a finding of confusing similarity" (L'Oreal v. Tracey Johnson, WIPO Case No. D2008-1721).

The addition of the geographical names "Paris" and “Japan" is also insufficient to avoid confusing similarity. The Complainant owns a trademark registration that incorporates the trademark L'OREAL with the word "Paris" (International trademark registration No. 238337 – L'ORÉAL DE PARIS) and is using the term "L'oreal Paris" as the name of one of its product series. Evidence to the magnitude use of the L'oreal Paris term by the Complainant may be found in the Response filed with the Center, in which the Respondent refers to the Complainant as L'oreal Paris. The additional word "Japan" in itself is also insufficient to avoid confusing similarity, as it is a non-significant element that is somewhat connected with the Complainant, which markets its products, among others, in Japan.

Previous WIPO UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505). Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name <redbull-jp.net> is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd., WIPO Case No. D2006-0909).

The addition of the gTLD ".com" to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Thus, the gTLD ".com” is without legal significance since the use of a gTLD is technically required to operate the domain name.

The result is that the Complainant has shown that the above disputed domain name is identical or confusingly similar to a trademark, in which the Complainant has rights.

C. Rights or Legitimate Interests

Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that he has rights or legitimate interests in respect to the disputed domain name.

In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights, or legitimate interests. The Panel finds that the Complainant has established such a prima facie case inter alia due to the fact that Complainant has not licensed or otherwise permitted the Respondent to use the L'OREAL trademark, or a variation thereof.

The Respondent claimed he had purchased the domain name lawfully and in good faith. However, the Respondent did not provide any evidence to show his legitimate interest in the disputed domain name (for example, in the form of registered intellectual property rights), nor has he alleged to be well-known by the “lorealparisjapan” name. This, along the fact that the Respondent is not currently using the disputed domain name and has offered the disputed domain name for sale on several occasions, indicates lack of legitimate interest. The Panel cites the following with approval: "[…] Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4 (c) of the Policy, any rights or legitimate interest in the Domain Name. However, considering that Respondent does not use the Domain Name and that he has offered the Domain Name for sale to Complainants sub 3, it can reasonably be considered that Respondent would not be able to bring evidence of any the circumstances described in paragraph 4 (c) of the Policy" (Fortis NL N.V.- Fortis B S.A.- Fortis A.G. NL S.A. v. X.X, WIPO Case No. D2000-1453).

Accordingly, it is the Panel’s view that the Respondent did not provide any evidence to show any rights or legitimate interests in the disputed domain name that are sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

D. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns registrations for the L'OREAL trademark at least since the year 1955. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use by the respondent, if by using the domain name it had intentionally attempted to attract, for commercial gain, Internet users to the website or other on-line location, to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name is resolved to.

The disputed domain name currently resolves to a parking webpage, which displays the following announcement: “Internet Explorer cannot display the webpage”. The Complainant alleges that this disputed domain name used to resolve to a pay-per-click advertisement webpage, which included links to French and English websites that engage in cosmetics and beauty products.

The Respondent's previous use of the disputed domain name included the offering of commercial links, referring to other websites. The Respondent’s previous use of the L'OREAL mark to promote goods that are regularly sold by the Complainant clearly indicates that the Respondent registered this disputed domain name with knowledge of the Complainant and of the use the Complainant is making in the L'OREAL mark and subsequently intent to trade off the value of these. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”. Indeed, the use the Respondent made in the disputed domain name for quasi-identical goods to the ones the Complainant manufactures and markets constitutes bad faith on behalf of the Respondent (See Schur International A/S v. Jorge Massa, WIPO Case No. D2009-0450).

The disputed domain name currently resolves to a parking webpage, which displays an error announcement. However, the fact that the Respondent does not use this domain name at the moment does not preclude the Panel from finding bad faith, having taken regard of all the circumstances of this case. See Mobimate Ltd. v. “World Mate” and Sachiwo Inagaki, WIPO Case No. D2008-1867.

The Panel also notes that the disputed domain name is confusingly similar to the Complainant’s trademark. Previous WIPO UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc. v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior WIPO UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the Policy.

In addition, the Panel notes the Respondent repeatedly tried to sell the disputed domain name to the Complainant. The Respondent’s first asking price was USD1,000 (this price was later reduced due to the Complainant declines). The asking price of USD1,000 is significantly in excess of Respondent’s out-of-pocket registration expenses. This, along the Respondent’s repeated attempts to sell the disputed domain name to the Complainant, fall within the scope set forth in paragraph 4(a)(iii) to the Policy, according to which, bad faith includes "circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling […] the domain name registration to the complainant who is the owner of the trademark […] for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name".

Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the use of the L'OREAL trademark in the disputed domain name and the Respondent’s repeated attempts to sell the disputed domain name, the Panel draws the inference that the disputed domain name was registered and used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

It is therefore the finding of the Panel that the Respondent registered and is using the disputed domain name 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 disputed domain name <lorealparisjapan.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Dated: October 4, 2010