WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Laboratoires M&L, L'Occitane International SA v. Super Privacy Service LTD c/o Dynadot / Chen Hui, Gname

Case No. D2021-1629

1. The Parties

The Complainants are Laboratoires M&L, France, and L’Occitane International SA, Switzerland, represented by Wilhelm Gilliéron Attorney Corp., Switzerland.

The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America / Chen Hui, Gname, Singapore.

2. The Domain Name and Registrar

The disputed domain name <loccitanr.com> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2021. On May 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 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 May 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 May 28, 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 May 31, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 21, 2021.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on June 25, 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.

4. Factual Background

The Complainants in this proceeding are Laboratoires M&L, a company affiliated to the L’Occitane Group, which holds and handles the Group’s trademark portfolio, and L’Occitane International S.A., also affiliated to the L’Occitane Group, which holds and handles the Group’s domain name portfolio.

L’Occitane Group is a global, natural and organic ingredient-based cosmetics and wellness product manufacturer and retailer. Active in all continents, as of March 31, 2020, the L’Occitane Group had 3,486 retail locations and 1,608 stores operated directly by the Group; at the same date, the Group had 9,347 employees.

Laboratoires M&L, i.e. the first Complainant, has proven to be the owner of:

- L’OCCITANE, International trademark No. 1006051, registered on October, 8, 2008;
- L’OCCITANE, International trademark No. 579875, registered on November, 5, 2011;
- L’OCCITANE, International trademark No. 1330027, registered on June 28, 2016.

L’Occitane International S.A., i.e. the second Complainant, has proven to be the holder of the following domain names. The domain name <loccitane.com> was registered on April 7, 1997, which has been extended it to several geographical versions with third level domains, such as: <fr.loccitane.com>, <de.loccitane.com>, <jp.loccitane.com>, <ch.loccitane.com> and <hu.loccitane.com>, all of which consist of the same website translated in the respective language of the country concerned to which the Internet user is automatically redirected depending on their location.

The disputed domain name was registered on April 21, 2021. The disputed domain name resolves to a parked web page with pay-per-click links, including some links referring to the Complainant’s business.

The Complainant’s trademark registrations predate the registration of the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name is confusingly similar to the Complainants’ registered trademark; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order for the Complainant to obtain a transfer of the disputed domain name, paragraph 4(a) of the Policy requires that the Complainant must demonstrate to the Panel that:

(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established rights in the L’OCCITANE trademark.

The disputed domain name consists of a small variation of the Complainant’s trademark. Specifically, the letter “e” in the end of the wording “loccitane” is replaced by the letter “r”. The Panel agrees with the Complainants’ assertion that this is a typical case of typo-squatting, where the Respondent relies upon Internet users’ mistakes in typing to redirect them to its website rather than to the Complainant’s official website.

The generic Top-Level-Domain (“gTLD”) “.com” is generally disregarded under the test for confusing similarity for the purposes of the Policy, and the substitution of the letter “e” with the letter “r” in the Complainants’ trademark is insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. In this sense WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”

The Panel finds that the Complainants’ trademark is clearly recognizable in the disputed domain name, and the substitution of the letter “e” with the letter “r” in the Complainants’ trademark is insufficient to avoid a finding of confusing similarity. See also WIPO Overview 3.0, section 1.9.

Accordingly, the Panel finds that the Complainants have satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

This Panel finds that the Complainants have made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has no connection to or affiliation with the Complainants, and the Complainants have not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainants’ trademark. The Respondent does not appear to be commonly known by the name “loccitanr” or by a similar name. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services.

Finally, the Respondent has not replied to the Complainants’ contentions, alleging any rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Based on the evidence put forward by the Complainant, the Panel is of the opinion that the Respondent was aware of the Complainant’s trademark rights when it registered the disputed domain name.

The Complainants’ trademark has been registered and used for many years and is a renowned trademark, especially in the cosmetics sector.

In addition, the Respondent’s knowledge of the Complainants’ trademark is particularly obvious, given that the Respondent, on the balance of probability, is using a slight variation of the Complainants’ trademark (i.e. a typo) to mislead Internet users to go to its own commercial website where pay-per-click links to third parties’ websites are displayed.

Hence, the registration of the disputed domain name does not seem to be a coincidence, and thus indicates that the Respondent knew of the Complainants’ trademarks and intentionally intended to create an association with the Complainants and their business at the time of the registration of the disputed domain name.

Inference of bad faith can also be found in the failure to respond to the Complainants’ claims made in this proceeding.

By using the confusingly similar disputed domain name to display pay-per-click links, including some links to Complainant’s business, without any explanation of the lack of relationship to the Complainant, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark.

Another factor supporting the conclusion of bad faith registration and use of the disputed domain name is given by the fact that the Respondent deliberately chose to conceal its identity by means of a privacy protection service. While the use of a privacy or proxy registration service is not in and of itself an indication of bad faith, it is the Panel’s opinion that in the present case the use of a privacy shield, combined with the elements discussed herein, amounts to a further inference of bad faith registration and use.

Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain names in bad faith.

Therefore, the Complainant has satisfied paragraph 4(a)(iii) of the Policy

7. Decision

For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name <loccitanr.com> be transferred to the Complainant.

Fabrizio Bedarida
Sole Panelist
Date: July 6, 2021