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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

L’oreal v. Domain Park Limited

Case No. D2008-0072

 

1. The Parties

The Complainant is L’oreal, Paris, France, represented by Cabinet Dreyfus & associйs, France.

The Respondent is Domain Park Limited, Berlin, Germany.

 

2. The Domain Names and Registrar

The disputed domain names <lorealcolorfhope.com> and <lorealgenesis.com> are registered with Moniker Online Services, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2008. On January 18, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain names at issue. On January 21, 2008, Moniker Online Services, LLC 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 January 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 17, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 18, 2008.

The Center appointed Mladen Vukmir as the sole panelist in this matter on February 27, 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

L’oreal is French industrial group specialized in cosmetics and beauty, and the world’s number one cosmetics company. It was created in 1909. Today, L’oreal is present in over 150 countries and in the five continents with 290 subsidiaries and 37 factories worldwide, and employs more than 50,000 thousand people of nearly 100 nationalities. In 2006, L’oreal realized a sales turn over of 15,8 billions. L’Oreal markets over 500 brands and 2.000 products in all sectors of the beauty business: hair color, permanents, styling aids, body and science skincare, cleansers and fragrance. Furthermore, L’oreal owns 19 international brands such as L’OREAL PARIS, GARNIER, LANCФME, VICHY and KERASTASE. L’oreal is present in Germany since 1930, and L’oreal Germany is one of the oldest subsidiaries of the L’oreal Group. The Complainant provided the Panel with a number of exhibits to confirm these facts, in particular in Annexes 3, 4, 5, 6, 7 and 8 of the Complaint.

The Complainant is the registered owner of numerous L’OREAL trademarks throughout the world and especially in Germany, as per enclosed exhibits in Annex 15 of the Complaint:

– DE 931856 with priority date June 11, 1975;

– DE 1005131 with priority date July 20, 1980;

– DE 1006980 with priority date September 1, 1980;

– DE 1021728 with priority date August 17, 1981;

– DE 1022083 with priority date August 25, 1981;

– DE 1026875 with priority date December 16, 1981;

– DE 1040432 with priority date November 4, 1982;

– DE 1046104 with priority date March 15, 1983;

– DE 1052258 with priority date August 12, 1983;

– DE 1058351 with priority date 13, 1984;

– DE 1058897 with priority date January 26, 1984;

– DE 1060270 with priority date April 14, 1984;

– DE 1065537 with priority date July 6, 1984;

– DE 1080413 with priority date August 7, 1985;

– DE 1086987 with priority date January 22, 1986;

– DE 1100458 with priority date December 16, 1986;

– DE 398823916.9 with priority date August 28, 1990;

– DE 39833467.6 with priority date November 12, 1998;

– CMT 000767285 with priority date October 4, 1999;

– CMT 002148807 with priority date April 26, 2002;

– CMT 002174548 with priority date June 25, 2002;

– CMT 003521201 with priority date November 11, 2004;

– CMT 003918679 with priority date November 8, 2005;

– CMT 003584422 with priority date December 13, 2005;

– CMT 004327219 with priority date April 18, 2006;

– CMT 004420675 with priority date June 6, 2006;

– CMT 004701389 with priority date December 7, 2006;

– CMT 005419718 with priority date October 18, 2007;

– IR 137868 with priority date July 26, 1948;

– IR 166995 with priority date February 9, 1953;

– IR 184970 with priority date May 23, 1955;

– IR 230114 with priority date March 28, 1960;

– IR 238337 with priority date December 10, 1960;

– IR 378431 with priority date May 28, 1971;

– IR 378885 with priority date June 7, 1971;

– IR 394615 with priority date December 12, 1972;

– IR 412325 with priority date December 5, 1974;

– IR 447116 with priority date August 28, 1979;

– IR 516638 with priority date October 12, 1987;

– IR 658940 with priority date August 2, 1996.

Furthermore, the Complainant operates, among others, the following domain names, as it can be seen from the exhibits provided in Annex 16 of the Complaint:

– <loreal.fr>, registered on October 14, 1997;

– <loreal.com>, registered on October 24, 1997;

– <l-oreal.net>, registered on April 10, 1999;

– <loreal.net>, registered on April 16, 1999;

– <loreal.hu>, registered on March 21, 2000;

– <loreal.com.ar>, registered on April 10, 2000;

– <loreal.info>, registered on August 10, 2001;

– <loreal.biz>, registered on November 19, 2001;

– <loreal.ec>, registered on December 12, 2003;

– <loreal.us>, registered on June 9, 2004;

– <loreal.ht>, registered on June 21, 2004;

– <loreal.mobi>, registered on June 12, 2006;

– <loreal.eu>, registered on July 13, 2006;

– <lorealbio.com>, registered on May 1, 2007.

L’oreal USA, the American subsidiary of the Complainant in the United States of America is the owner of the domain names: <lorealskingenesis.com>, registered on April 26, 2007 and <lorealcolorofhope.com>, registered on August 30, 2006. (Annex 23 of the Complaint)

L’oreal is the Complainant’s trade name since March 1, 1963. (Annex 23 of the Complaint)

The domain name <lorealgenesis.com> was registered by the Respondent with the Registrar on August 13, 2007, and the domain name <lorealcolorfhope.com> on August 14, 2007. (Annex 1 of the Complaint)

 

5. Parties’ Contentions

A. Complainant

The Complainant states that today it is the International leader and one of the world’s largest groups in cosmetics and beauty business, and that it is very famous all over the world and especially in Germany, where the Respondent is seated.

Furthermore, the Complainant states that L’oreal is present in Germany since 1930, and that L’oreal Germany is one of its oldest subsidiaries, and also that Germany represents the third largest market for L’oreal, after United States of America and France.

In addition, the Complainant asserts that in Germany, it operates one of the most modern European production centers in the L’oreal Group, and that the purchase of Jade Maybeline in 1995 enabled L’oreal to strengthen its position in German cosmetics market and become the market leader in mass market distribution.

The Complainant states that it noticed that the disputed domain names were registered, and a WhoIs Database search revealed that said domain names were registered by the Respondent. Moreover, that each of said domains directs to a website proposing sponsored links, in particular for cosmetics, and that one of said links which is called loreal directs to a page proposing access to websites on which the Complainant’s products are being sold. Furthermore, the Complainant asserts that it also noticed that the disputed domain names were offered for sale on “www.sedo.com”.

Additionally, the Complainant states that on September 11, 2007, it sent a cease and desist letter to the Respondent in order to inform him that the domain names registration infringed its trademark rights and consequently to ask the amicable transfer of said domain names, and that the Respondent answered to the Complainant on September 26, 2007 by email, in which the Respondent indicated to the Complainant that he was ready to transfer the disputed domain names in exchange of the refunding of its registration costs for an amount of 650 USD (Annex 14 of the Complaint). Since in the Complainant’s opinion the offered amount substantively exceeds any possible costs of the domain registration, no amicable solution was reached.

The Complainant concludes that:

a) the disputed domain names <lorealcolorfhope.com> and <lorealgenesis.com> are identical, or at least confusingly similar to L’OREAL trademarks in which the Complainant has rights;

b) the Respondent has no rights or legitimate interests in the domain names <lorealcolorfhope.com> and <lorealgenesis.com>;

c) the disputed domain names <lorealcolorfhope.com> and <lorealgenesis.com> have been registered and used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. However, the Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. The Panel notes that the Complainant did support its assertions with actual evidence and now turns to examine them in turn.

 

6. Discussion and Findings

The Panel now proceeds to consider this matter on the merits in light of the Complaint, the absence of a response, the Policy, the Rules, the Supplemental Rules, and other applicable legal authority, pursuant to paragraph 15(a) of the Rules.

Paragraph 4(a) of the Policy provides that Complainant must prove, with respect to the domain name, each of the following:

(i) the domain name is confusingly similar to trademark 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.

A. Identical or Confusingly Similar

The Complainant has proven that it is the owner of rights in numerous L’OREAL trademarks in the world, and especially in Germany, where the Respondent is apparently located.

The Panel is satisfied with the Complainant’s argumentation that the L’OREAL trademark is reproduced virtually in its entirety in the disputed domain names, and that it is the most prominent part of the disputed domain names, which attracts consumer attention. Also, that the difference between the disputed domain names and L’OREAL trademarks is tiny, and does not give disputed domain names any distinctiveness. These are:

– The omission of the apostrophe between the “l” and the letter “o”;

– The adjunction of the term “genesis” and the term “colorfhope”;

– The adjunction of the gTLD “.com”.

Namely, the Panel accepts the Complainant’s argument that the absence of apostrophe after the letter “l” in the disputed domains is due to the technical reasons which prevent the domain name from being registered with an apostrophe, and that it does not change the trademark pronunciation. Therefore it cannot give the disputed domain names any distinctiveness, as it was also considered by the panel in two previous WIPO UDRP cases invoked by the Complainant (see Edmunds.com, Inc. v. Yingkun Guo, dba This domain name is 4 sale, WIPO Case No. D2006-0694 and L’oreal v. Liao quanyong, WIPO Case No. D2007-1552). In the latter decision, the panel in that case considered the following: “the omission of the apostrophe after the letter “l” in the L’OREAL marks is insignificant and does not alter the overall impression that Complainant’s distinctive mark has been incorporated in the disputed domain name”.

The Complainant argues that the adjunction of the terms “genesis” and “colorfhope” at the end of disputed domain names cannot be sufficient to set aside the likelihood of confusion with the Complainant’s trademarks, and that the word “genesis” is a descriptive word. In this regard, the Complainant stressed that numerous WIPO UDRP decisions did recognize that adding a generic name was insufficient to give any distinctiveness to the domain names in dispute, and it especially invoked The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No. D2005-1137. Also, the Complainant states that the term “colorofhope” refers to products of coloring for hairs and which are one of the products sold under the trademark L’OREAL. Although the Panel is not entirely satisfied with the Complainant’s assertion that the term “genesis” may be regarded as a descriptive term, the Panel believes that the combination of the famous mark and a term “genesis” does not provide sufficient distinction so as not to lead the consumers to believe that the domain name is not associated with L’oreal. Even more, the Panel finds that in the view of the fact that both terms – “genesis” and “colorfhope” tend to make use of the specific lines of products of the Complainant (“skin genesis” and “color of hope”) which is likely to enhance the confusion on part of the consumers and public. It has also been stated above in this decision that the Complainant’s American subsidiary is the owner of the domain names <lorealskingenesis> and <lorealcolorofhope.com>, so it can reasonably be concluded (and this Panel so concludes) that the terms “colorofhope” and “genesis” are indicative of a “typosquatting” practice of the Respondent.

As for the adjunction of gTLD “.com”, it is now well established that the generic top-level domain, in this case “.com”, should be excluded from consideration as being a generic or functional component of the domain name when making a finding on the first element. (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003)

For all foregoing reasons, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s L’OREAL trademarks.

B. Rights or Legitimate Interests

The Complainant claims that the Respondent has never used the term “l’oreal” in any way before or after the Complainant started their business, and that it is not known under the name “l’oreal” or any similar term. Furthermore, the Complainant states that the Respondent is not affiliated with the Complainant in any way, and that the Complainant has not authorized the Respondent to use and register its trademarks or service marks, or to seek the registration of any domain name incorporating said mark. In addition, the Complainant argues that that the Respondent is not making any legitimate non-commercial or fair use of the domain name, as the disputed domain names direct to a website proposing sponsored links, including one link which is called loreal and which directs to a page which is proposing the access to websites on which the Complainant’s products, as well as it’s competitors products are being sold. Also, the Complainant claims that the strict reproduction of the well-known trademark L’OREAL in the disputed domain names, constitutes an obvious intent to mislead the Internet consumers. Moreover, the Complainant argues that, since the domain names in dispute are so identical to the famous trademarks of the Complainant, the Respondent could not reasonably pretend it was intending to develop a legitimate activity.

Once a complainant has established a prima facie case, the burden of proving rights to and legitimate interest in a domain name shifts to the Respondent who has to prove the existence of, without limitation, any of three circumstances listed in paragraph 4(c) of the Policy. (see 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 Complainant has put forward well-supported arguments and, absent any reply from the Respondent, the Panel finds that the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Registration in Bad Faith

The Panel accepts the Complainant’s claims, that it is very famous in Germany where the Respondent is apparently located, and that the Respondent must have known about the existence of L’OREAL trademarks when it registered its domain names, since the Complainant has substantiated its claims with the following arguments:

– L’oreal is present in Germany since 1930;

– L’oreal Germany is one of the oldest subsidiaries of L’oreal Group;

– Germany represents the third largest market for L’oreal;

– L’oreal Germany operates one of the most modern European production Centers in Europe;

– The purchase of Jade Maybeline in 1995 enabled L’oreal to strengthen its position in German cosmetics market;

– The German UNESCO Commission and L’oreal Germany joined in order to launch their own support program for young women scientists;

– L’oreal is famous in Germany thanks to its publicity and to its website <loreal.de>;

– In two WIPO UDRP decisions WIPO panels have recognized the worldwide reputation of the Complainant and its L’OREAL marks. (L’Orйal, Helena Rubinstein, Lancфme Parfums et Beautй & Cie. v. Spiral Matrix, WIPO Case No. D2006-0869 and L’oreal v. Liao quanyong, WIPO Case No. D2007-1552);

– Since the registration of the disputed domain names, or at least before the sending of a cease and desist letter by the Complainant to the Respondent, each of the disputed domain names directed to a website proposing sponsored links in particular for cosmetics including one link which is called loreal and which directs to a page proposing the access to websites on which the Complainant’s products are being sold;

– The Respondent never denied its knowledge of the Complainant’s trademarks, even when he had the opportunity after receiving the cease and desist letter from the Complainant;

– Simple research on the Internet would have allowed the Respondent to find the Complainant. Specifically, research of the terms “lorealgenesis”, “loreal genesis, “loreal color f hope”, “lorealcolorofhope” and “loreal color of hope” on Google.de allows the searcher to identify the Complainant.

Therefore, taking into consideration these arguments as well as the fact that in this day and age of Internet and advancement in information technology it is hard to believe that the Respondent was unaware of the Complainant and its trademarks at the time of registration of disputed domain names, the Panel finds that the Respondent has registered disputed domain names in bad faith.

Use in Bad Faith

To support its claims that the Respondent used the domain names in bad faith, the Complainant states that each of the disputed domain names directs to a website proposing sponsored links in particular for cosmetics including one link which is called "loreal" and which directs to a page which is proposing access to websites on which the Complainant’s products and L’oreal’s competitors products are sold, and that therefore, consequently the Respondent’s website was in the same field as the Complainant’s activity, which demonstrates the Respondent’s intention to use the disputed domain names in order to attract the Internet users for a commercial gain by creating a likelihood of confusion with the Complainant’s trademarks. In addition, the Complainant stated once again that the disputed domain names imitate two domain names belonging to its subsidiary <lorealskingenesis.com> and <lorealcolorofhope.com>. Furthermore, the Complainant asserted that it is well established that websites proposing sponsored links permits to its owner to obtain click-trough commissions, and that numerous WIPO UDRP decisions recognized that “the exploitation of trademarks to obtain click-through commissions from the diversion of Internet users” is a common example of bad faith. In this respect, the Complainant invoked L’Orйal, Biotherm, Lancфme Parfums et Beautй & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; Future Brands LLC v. Mario Dolzer, WIPO Case No. D2004-0718; ACCOR v. Mr. Young Gyoon Nah, WIPO Case No. D2004-0681 and Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584. The Panel accepts the Complainant’s arguments, and finds that the Respondent’s intention to obtain click-through commissions from the diversion of Internet users amounts to bad faith.

In the absence of contrary evidence and the respond from the Respondent, the Panel accepts the Complainant’s argumentation, and considers the Respondent’s advertisement of sale of disputed domain names on the Internet page “www,sedo.com”, as well as the Respondent’s offer to sell the disputed domain names for the amount obviously higher that the registration costs, as the evidence of bad faith on the side of the Respondent.

Finally, the Panel cannot disregard the fact that Domain Park Limited has already been the Respondent in many WIPO UDRP complaints such as Asurion Corporation v. Domain Park Limited, WIPO Case No. D2007-1633; Florida Department of Management Services v. Domain Park Limited, WIPO Case No. D2007-1587 and F. Hoffmann-La Roche AG v. Hostmaster, Domain Park Limited, WIPO Case No. D2007-1096,where previous panels decided to transfer the domain names, and the Panel here infers bad faith from the pattern of behaviour in registration matters that has been previously established.

For all foregoing reasons, the Panel finds that the Respondent has registered and used 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 <lorealgenesis.com> and <lorealcolorfhope.com> be transferred to the Complainant.

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Mladen Vukmir
Sole Panelist

Dated: March 12, 2008