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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LancГґme Parfums et BeautГ© et Compagnie, Laboratoire Garnier et Compagnie, LвЂ™Oreal SA, LвЂ™Oreal USA Creative v. Therese Kerr
Case No. D2008-1748
1. The Parties
The Complainants are LancГґme Parfums et BeautГ© et Compagnie of Paris, France; Laboratoire Garnier et Compagnie, of Paris, France; LвЂ™Oreal SA, of Paris, France; and LвЂ™Oreal USA Creative, of New York, United States of America, represented by Nathalie Dreyfus of Dreyfus & associГ©s, of Paris, France.
The Respondent is Therese Kerr, of New York, United States.
2. The Domain Names and Registrars
The disputed domain names <bloglancome.com>, <bloglancome-usa.com>, <bloggarnier.com> and <blogmaybelline.com> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the вЂњCenterвЂќ) on November 12 2008. On November 13 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On November 14 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on November 20, 2008, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on November 24, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the вЂњPolicyвЂќ or вЂњUDRPвЂќ), the Rules for Uniform Domain Name Dispute Resolution Policy (the вЂњRulesвЂќ), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the вЂњSupplemental RulesвЂќ).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on November 26, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 16 2008. The Respondents did not submit any response. Accordingly, the Center notified the RespondentsвЂ™ default on December 17, 2008.
The Center appointed David Stone as the sole panelist in this matter on December 29, 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
The Complainants are all companies in Groupe LвЂ™OrГ©al, one of the worldвЂ™s largest cosmetics businesses. Groupe LвЂ™OrГ©al has more than 63,000 employees in 130 countries and a global turnover in 2007 of в‚¬17 billion. The Complainants own numerous trademarks relating to the GARNIER, LANCГ”ME and MAYBELLINE brands, including:
LANCГ”ME вЂ“ United States Trademark no. 3022836 registered on December 6, 2005 in classes 3, 35 and 44;
GARNIER вЂ“ United States Trademark no. 2529094 registered on January 15, 2002 in class 3; and
MAYBELLINE вЂ“ United States Trademark no. 1065615 registered on May 17, 1977 (renewed) in class 3.
GARNIER, MAYBELLINE and LANCГ”ME branded products are available for sale in the United States and around the world.
The original Respondent was Domains by Proxy, Inc. Following removal of the privacy shield, the Complainant added as a Respondent Therese Kerr of New York. Ms. Kerr registered the above domain names with GoDaddy.com, Inc., on June 27, 2008.
5. PartiesвЂ™ Contentions
The Complainants submit that the disputed domain names are confusingly similar to the numerous trademarks they have registered in the United States and elsewhere because they reproduce the ComplainantsвЂ™ trademarks in their entirety and simply append the suffix вЂњblogвЂќ, and, in relation to one domain name, вЂњusaвЂќ. This, they argue, implies a вЂњhigh likelihood of confusionвЂќ for the consumer.
The Complainants submit that the Respondent has no prior rights or legitimate interests in the disputed domain names, claiming that the Respondent has never before used the terms вЂњGarnierвЂќ, вЂњLancГґmeвЂќ or вЂњMaybellineвЂќ in connection with a bona fide offering of goods or services or with a weblog about the ComplainantsвЂ™ brands. Further, the Complainants submit that the Respondent is not affiliated with the Complainants in any way and that the Complainants have never authorised the Respondent to register any domain name incorporating their trademarks.
The Complainants submit that the Respondent has acted in bad faith in relation to the disputed domain names, as the similarity of the disputed domain names to the trademarks of the Complainants means that the Respondent could not intend (or have intended) to develop a legitimate activity using the domain names. Furthermore, the Complainants submit that the domain names are being used to divert Internet users to other commercial websites, including competitors of the Complainants. This, it is claimed, generates pay-per-click revenue for the Respondent.
The Complainants request that the disputed domain names be transferred to Complainants.
The Respondent did not reply to the ComplainantsвЂ™ contentions.
6. Discussion and Findings
The Policy as affected by the Rules and the Supplemental Rules provides specific remedies to trademark rights holders against registrants of domain names where the rights holder (Complainant) proves each of the following elements:
(a) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(b) the registrant (Respondent) has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered and is being used in bad faith.
The burden of proof is on the Complainants in respect of (a), (b) and (c) above.
In these proceedings, the Respondent failed to respond. In accordance with paragraph 14(b) of the Rules, вЂњthe Panel shall draw such inferencesвЂ¦ as it considers appropriateвЂќ from this default.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain names are confusingly similar to trademarks in which the Complainant has rights.
Examples of the ComplainantsвЂ™ registered trademarks are set out above. The Panel is satisfied that each is a famous and well-known trademark for personal care products.
The disputed domain names differ from the ComplainantsвЂ™ own trademarks in three ways:
(a) the absence of the circumflex accent over the second вЂњoвЂќ in <bloglancome.com> and <bloglancome-usa.com>; and
(b) the addition of the word вЂњblogвЂќ in each of the disputed domain names; and
(c) the addition of вЂњ-usaвЂќ in <bloglancome-usa.com>.
In relation to the absence of the circumflex accent in <bloglancome.com> and <bloglancome-usa.com>, the Panel is satisfied that this does not serve to create any aural, visual or conceptual difference between the trademark and the domain names: See LancГґme Parfums et BeautГ© & Cie, LвЂ™OrГ©al v. 10 Selling,
WIPO Case No. D2008-0226 and LвЂ™OrГ©al, LancГґme Parfums et BeautГ© & Cie v. InfoChina Ltd,
WIPO Case No. D2008-0981.
In relation to the addition of the word вЂњblogвЂќ at the beginning of each domain name, the Panel is satisfied that Internet users would understand вЂњblogвЂќ to be a reference to вЂњweblogвЂќ, one of the publishing facilities made popular by the World Wide Web. In the context of a domain name, the Panel finds that the addition of the descriptive word вЂњblogвЂќ does not serve to distinguish the domain names from each of the ComplainantsвЂ™ trademarks: See Utrecht Manufacturing Corporation v. Web Management S.A.,
WIPO Case No. D2007-1258.
In relation to the addition of a hyphen and the letters вЂњusaвЂќ in the domain name <bloglancome-usa.com>, the Panel finds that Internet users would interpret the additional elements as a reference to the United States of America. The Panel finds that the addition of this geographic description is insufficient to distance the domain name from the ComplainantвЂ™s trademark: See PepsiCo, Inc v. Kieran McGarry,
WIPO Case No. D2005-0629 and Volvo Trademark Holding AB v. SC-RAD Inc.,
WIPO Case No. D2003-0601.
In Harrods Limited v. John Griffin,
WIPO Case No. D2002-0641, which involved the addition of вЂњusaвЂќ to the HARRODS trademark, the Panel noted:
вЂњThe geographic designation adds nothing distinctive, and the emphasis remains on the name Harrods to attract the attention of [I]nternet users.вЂќ
The Panel respectfully adopts the reasoning of the Panelist in that case.
The Panel therefore finds that the disputed domain names are confusingly similar to trademarks in which the Complainants have rights.
B. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Panel accepts the ComplainantsвЂ™ submissions that the Respondent is not authorised to use the ComplainantsвЂ™ trademarks; that the Respondent is not commonly known by the disputed domain names; and that the names involved in the disputed domain names are so similar to the ComplainantsвЂ™ trademarks that the Respondent could not be reasonably held to be developing a legitimate activity using the domain names. The Complainants have therefore made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names.
Policy Paragraph 4(a)(ii) provides that as a consequence of the ComplainantsвЂ™ prima facie case in support of its allegations, the burden shifts to the Respondent to produce evidence of its rights or legitimate interests. The Respondent has elected not to respond.
The Panel accepts the ComplainantsвЂ™ submissions and finds that the Respondent has no rights or legitimate interests in respect of the domain names.
C. Registered and Used in Bad Faith
The Panel find that the domain names were registered and are being used in bad faith.
Paragraph 4(b)(iv) of the Policy sets out the following guidance in relation to bad faith:
вЂњ4(b)(iv): by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.вЂќ
The disputed domain names include in full the ComplainantsвЂ™ trademarks. The Panel finds that given the fame of the ComplainantsвЂ™ trademarks including in the United States where the Respondent is based, the Respondent was aware of the ComplainantsвЂ™ trademarks at the time she registered the domain names.
The printouts of the web pages found at the disputed domain names submitted by the Complainant show that the domain names are being used to attract Internet users and divert them to websites which include competitors of the Complainants.
The Panel therefore finds that the RespondentвЂ™s registration of the domain names and subsequent activity at the disputed domain names does represent registration and use in bad faith: See Sanofi-Aventis v. Protected Domain Services and Jan Hus, Husiten,
WIPO Case No. D2008-0463.
In addition, the RespondentвЂ™s bad faith is also established by:
- her registration of well-known marks as domain names: See LвЂ™OrГ©al, LancГґme Parfums et BeautГ© & Cie v. InfoChina ltd,
WIPO Case No. D2008-0981; LвЂ™OrГ©al, Helena Rubinstein, LancГґme Parfums et BeautГ© & Cie v. Spiral Matrix,
WIPO Case No. D2006-0869; LвЂ™OrГ©al v. Liao quanyong,
WIPO Case No. D2007-1552; and
- her registration on the same day of four domain names containing well-known marks of a third party: See ACCOR v. Eliah Zusstone,
WIPO Case No. D2006-0362; and
- her use of a privacy shield: See Ustream.TV, Inc v. Vertical Axis, Inc.,
WIPO Case No. D2008-0598.
Further, the Panel finds that the RespondentвЂ™s bad faith is not mitigated by any issues of non-commercial commentary or criticism or otherwise legitimate speech. As is apparent from the pay-per click web pages at the domain names which trade on the value of the ComplainantвЂ™s marks, no non-commercial commentary or criticism or otherwise legitimate speech use is being made of the disputed domain names.
The Panel therefore finds that the Respondent registered and is using the disputed domain names in bad faith.
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 <bloglancome.com> and <bloglancome-usa.com> be transferred to LancГґme Parfums et BeautГ© et Compagnie; <bloggarnier.com> be transferred to Laboratoire Garnier et Compagnie; and <blogmaybelline.com> be transferred to LвЂ™OrГ©al SA.
Dated: January 12, 2009