The Complainant is Fondation Bettencourt Schueller of Neuilly-sur-Seine, France, represented by Partenaires PI, France.
The Respondent is Jessica Chun of Sunnyvale, California, the United States of America.
The disputed domain name <fondationbettencourt.com> is registered with Melbourne IT Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2012. On the same date, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain name. On March 16, 2012, Melbourne IT Ltd 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” 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 10, 2012. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on April 11, 2012.
On April 13, 2012, the Center received and email communication from the Complainant submitting supplemental filings.
The Center appointed David Perkins as the sole panelist in this matter on April 19, 2012. 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.A.1 The Complainant was established by Liliane Berttencourt, together with her husband and daughter, in 1987 as a Foundation (Fondation Bettencourt Schueller, the “Foundation”)) to support and develop medical, cultural and humanitarian projects. Ms. Bettencourt is the daughter and only child of the founder L’Oréal Group, Eugene Schueller. L’Oréal Group is one of the world’s largest cosmetics and beauty companies. The Wikipedia entry for Ms. Bettencourt records that in 1957 she inherited the L’Oréal Group fortune when her father died, thereby becoming the principal shareholder of L’Oréal Group. In 1963, the company went public, although Ms. Bettencourt continued to own a majority stake. As of December 31, 2009, Ms. Bettencourt apparently owned some 31% of the outstanding shares of L’Oréal Group, with some 30% held by Nestlé S.A., the remainder of the shares being publicly held.
4.A.2 The Wikipedia entry states that the Foundation has an annual budget of some GPB 160 million and devotes approximately 55% of its funds to scientific education and research, 33% to humanitarian and social projects and 12% to culture and arts.
4.A.3 At the age of 89, Ms. Bettencourt became involved in very public litigation with her daughter, as a result of which on October 17, 2011, a French Judge ruled that she should be placed under the guardianship of members of her family for concern about her declining mental health. Shortly prior to that, Ms. Bettencourt also became involved in what is described by Wikipedia as “a high level French political scandal” in 2010. Certainly it seems, and the Complaint states, that Ms. Bettencourt and, through her, the Foundation have generated quite considerable international press coverage in recent years and certainly before the date when the disputed domain name was created on October 10, 2011.
4.A.4 The Complainant is the owner of numerous registered trademarks, including those set out below.
|
Country |
Reg. No. |
Mark |
Class(es) |
Date of Application / Registration |
|
Community Trade Mark |
009381427 |
FONDATION BETTENCOURT SCHUELLER |
35, 36, 41, 42 and 45 |
Filed: September 16, 2010 Registered: March 6, 2011 |
|
Community Trade Mark |
009384652 |
FONDATION BETTENCOURT SCHUELLER & Device |
35, 36, 41, 42 and 45 |
Filed: September 17, 2010 Registered: March 9, 2011 |
|
United States of America |
Application 79092620 |
FONDATION BETTENCOURT SCHUELLER |
35, 36, 41, 42 and 45 |
Filed: November 30, 2010 Published: November 1, 2011 |
|
United States of America |
4,085,808 |
FONDATION BETTENCOURT SCHUELLER & Device |
35, 36, 41, 42 and 45 |
Filed: November 30, 2010 Registered: January 17, 2012 |
4.A.5 The Complainant is also the registrant of the following domain names:
Domain Name | Date Created |
|
fondation-bettencourt-schueller.eu | |
|
fondation-bettencourt-schueller.org |
September 17, 2010 |
|
fondation-bettencourt-schueller.fr |
September 17, 2010 |
|
fondation-bettencourt-schueller.info |
September 17, 2010 |
|
fondation-bettencourt-schueller.com |
September 17, 2010 |
|
fondation-bettencourt-schueller.net |
September 17, 2010 |
|
fondationbettencourtschueller.eu | |
|
fondationbettencourtschueller.org |
September 17, 2010 |
|
fondationbettencourtschueller.fr |
September 17, 2010 |
|
fondationbettencourtschueller.info |
September 17, 2010 |
|
fondationbettencourtschueller.com |
September 17, 2010 |
|
fondationbettencourtschueller.net |
September 17, 2010 |
4.B.1 In the absence of a Response, all that is known of the Respondent is that the registrant address is given as Sunnyville, California, United States of America and that the disputed domain name was created on October 10, 2011.
4.B.2 The web page to which the disputed domain name resolves states
“This site is under construction”
5.A.1 The Complainant’s case is that the disputed domain name is confusing similar to its registered trademark FONDATION BETTENCOURT SCHUELLER and domain names for the reason that the disputed domain name comprises the first two elements of those trademarks and domain names, “fondationbettencourt”. The Complainant refers to it being typically referred to in the press as “Fondation Bettencourt”, rather than by the full name “Fondation Bettencourt Schueller”. No examples of such use are attached to the Complaint. However, from the English language website of the Complainant, it is apparent that there is, among others, “The Liliane Bettencourt Chair for Technological Innovation” and an annual award known as “The Liliane Bettencourt Prize for Life Sciences”. In relation to the cultural and humanitarian aspects of the Foundation’s activities, there is “The Liliane Bettencourt Prize for Coral Singing” and “The Liliane Bettencourt Prize for L’Intelligence de la main”.
5.A.2 The Complainant’s case is that none of the circumstances set out in paragraph 4(c) of the Policy apply to this administrative proceeding. Further, the Complainant has never licensed or otherwise authorised the Respondent to use its registered trademarks.
5.A.3 The Complainant’s case is that the circumstances set out in paragraph 4(b)(iv) of the Policy apply to the facts of this case.
5.A.4 As to registration in bad faith, immediately prior to the date when the disputed domain name was created, there was, as stated above, considerable international press coverage relating to the affairs of Ms. Bettencourt and, through her, the Foundation. Further, the Respondent only had to search for the Foundation to become aware of its many registered domain names containing the words “Foundation Bettencourt”. In addition, the Complainant says that the work of the Foundation is very well known and that, together with the notoriety of Ms. Bettencourt, point to the Respondent having registered the disputed domain name in the knowledge of the Complainant’s registered trademarks and domain names. Hence, the Complainant asserts that the disputed domain name was registered in bad faith.
5.A.5 As to use in bad faith, notwithstanding that (as noted above) the disputed domain name is not being used but resolves to a site under construction, the Complainant relies on passive holding citing the decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
5.A.6 Finally, the Complainant refers to a “cease and desist” letter sent by its attorneys to the Respondent on February 28, 2012, to which neither a reply nor even an acknowledgement has been received.
5.A.7 In the circumstances, the Complainant’s case is that the disputed domain name was registered and is being used in bad faith.
5.B.1 As already noted, no Response has been filed.
6.1 The Policy, paragraph 4(a), provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
6.2 The Policy, paragraph 4(c), sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interests in the disputed domain name.
6.3 The Policy, paragraph 4(b), sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
6.5 The Complainant has established that it has trademark registrations in at least the European Union and the United States of America for the mark FONDATION BETTENCOURT SCHUELLER. The Complainant has also established that it has rights in a number of top level domain names and country code domain names for “fondationbettencourtschueller” and “fondation-bettencourt-schueller” all dating from September 2010.
6.6 The disputed domain name is identical to the first two elements of the Complainant’s trademarks and domain names. In the Panel’s view, the disputed domain name incorporates the dominant elements of those trademarks and domain names, namely “Fondation” and “Bettencourt” and, consequently, that it is confusingly similar to the Complainant’s trademarks and name. Accordingly, the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy.
6.7 In the absence of a Response, there is no indication that the Respondent can demonstrate any of the circumstances set out in paragraph 4(c) of the Policy or otherwise show rights to use the “Fondation Bettencourt”, component of the Complainant’s trademarks.
6.8 In the circumstances, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests.
6.9 Accordingly, the Complaint satisfies the requirement of paragraph 4(a)(ii) of the Policy.
6.10 Again, in the absence of a Response, and in the light of the facts and matters set out in paragraph 4(a) above, the Panel has no hesitation in finding that the Complainant satisfies the requirement of paragraph 4(a)(iii) of the Policy.
6.11 As to the fact that the disputed domain name is a passive holding, the Panel refers to the consensus view set out in paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and finds that, in the circumstances set out in the Complaint, the Telstra Corporation Limited v. Nuclear Marshmallows decision cited in paragraph 5.A.5 above should be applied. Put shortly, the Complainant’s trademark has a strong reputation and is widely known; in the absence of a Response, the Respondent has provided no evidence whatsoever of any contemplated good faith use of the disputed domain name; further, given the reputation of the Fondation and its trademarks, it is not possible to conceive of any plausible, or actual contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, for example by being a passing off or an infringement of the Complainant's rights under trademark law.
7.1 This is the email communication received by the Center from the Complainant on April 13, 2012 referred to in paragraph 3 above. Having read that email, the Panel is satisfied that it adds nothing to the Complaint as originally filed on March 15, 2012. Accordingly, it is not taken into account for the purposes of this Decision according to paragraph 10 and 12 of the Rules.
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 <fondationbettencourt.com> be transferred to the Complainant.
David Perkins
Sole Panelist
Dated: April 26, 2012