Complainant is L’oreal, Paris, France, represented by Cabinet Dreyfus & Associés, France.
Respondent is Liao quanyong, Chengdu, Sichuan, China.
2. The Domain Name and Registrar
The disputed domain name <lorealchina.net> 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 October 19, 2007. On October 22, 2007, the Center transmitted by email to Xiamen eName Network Technology Corporation Limited dba eName Corp a request for registrar verification in connection with the domain name at issue. On October 26, 2007, Xiamen eName Network Technology Corporation Limited dba eName Corp transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On October 30, 2007, the Center notified Complainant that the Complaint was administratively deficient as it was submitted in English when according to the information received from the Registrar concerned, the language of the registration agreement for the disputed domain name is Chinese. In response to this notification, Complainant filed a request for English to be the language of the present administrative proceedings on November 2, 2007. 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 Respondent of the Complaint in both Chinese and English, and the proceedings commenced on November 5, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 25, 2007. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 26, 2007.
The Center appointed Susanna H.S. Leong, who is conversant in Chinese and English, as the sole panelist in this matter on December 10, 2007. 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
Complainant is L’oreal, a French industrial group which specialized in the cosmetics and beauty and first started business in 1909. It has business presence in over 150 countries and markets over 500 brands and more than 2000 products in all sectors of the beauty business. Complainant is the owner of numerous trademarks incorporating the well known mark L’OREAL throughout the world including: L’OREAL PROGRESS HOMME; L’OREAL LES TECHNICARES; L’OREAL TECHNIQUE PROFESSIONNELLE; L’OREAL PERM-LIGHT; L’OREAL STUDIO EXPRESS; L’OREAL FREE STYLE; L’OREAL EXPRESS SELF BEAUTY; L’OREAL ROUGE SUBLIME; L’OREAL MASCARA SUBLIME; L’OREAL PERFECTION; L’OREAL BEAUTY EXPRESS; L’OREAL EXPERTISE; L’OREAL PERFORMANCE HYDRATANCE; L’OREAL PERFORMANCE; L’OREAL PERFORMANCE RAYONNANCE; L’OREAL PERFORMANCE ENERGANCE; L’OREAL EXCELLENCE; L’OREAL BLUSH CARESSE; L’OREAL SOPHISTICATED RED; L’OREAL PERFECTION DUALITE; L’OREAL PERFECTION CREA CONTRASTE; L’OREAL PERFECTION SENSIBILITE; L’OREAL PREFECTION CREA COULEUR; L’OREAL PLENITUDE CAPITAL E; L’OREAL PROFESSIONNEL; L’OREAL PLENTITUDE FUTUR E; L’OREAL INFINIUM; L’OREAL I D; L’OREAL PROFIL; L’OREAL E-START CHALLENGE; L’OREAL TIME STOP; L’OREAL BRANDSTORM; and L’OREAL. These marks are collectively known as the L’OREAL marks and they are international trademark registrations protected in numerous countries throughout the world including China.
Complainant also operates, among others, the following domain names which reflect its L’OREAL marks: <loreal.fr>; <loreal.net>; <loreal.org>; <lorealchina.com>; <loreal.biz>; <loreal.tv>; <loreal.com.mx>; <loreal.mobi>; <loreal.eu>; and <loreal.lu>. Complainant uses these domain names to market and promote its goods and services on the Internet.
Complainant became aware that the disputed domain name <lorealchina.net> was registered. At first, the disputed domain name directed to the website “http://shop34119077.taobao.com”, with sponsored links in Chinese language and pictures of Complainant’s current beauty products. On September 11, 2007, Complainant sent a cease and desist letter to Respondent informing him that the registration and use of the disputed domain name infringed Complainant’s trademarks. Complainant requested for an amicable transfer of the disputed domain name and Respondent replied that he was ready to transfer the disputed domain name in consideration of a financial compensation. Complainant offered to Respondent an amount of Euro 50 dollars for the refund of Respondent’s costs in registration and for the transfer of the disputed domain name from Respondent to Complainant. On September 21, 2007, Respondent refused Complainant’s offer and requested for a sum of Euro 5,000 dollars in order to proceed with the transfer of the disputed domain name. Thereafter, the disputed domain name no longer directs to the website “http://shop34119077.taobao.com”. Since the sending of the cease and desist letter by Complainant to Respondent, the disputed domain name directs to the domain name <lorealchina.com> which belongs to Complainant.
5. Parties’ Contentions
A. Complainant
Identical or Confusingly Similar
Complainant asserts that it has rights in its L’OREAL marks since March 1, 1963 which are very well known particularly in the field of beauty products in numerous countries throughout the world including China. Complainant contends that the disputed domain name is identical or at least similar to its L’OREAL marks. The addition of the geographic term “china” is not sufficient to give distinctiveness to the disputed domain name. As Complainant has registered the domain name <lorealchina.com> especially for its business in China and consequently, Complainant contends that the addition of the term “china” would lead consumers to think that the disputed domain name <lorealchina.net> similarly belongs to Complainant. Furthermore, Complainant contends that the mere addition of the ccTLD as well as gTLD, such as “.com” or “.net” are not a distinguishing feature and do not change the conclusion that the disputed domain name creates a likelihood of confusion with Complainant’s L’OREAL marks.
Consequently, Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or a service mark in which Complainant has rights.
Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name for the following reasons:
1. Respondent is not affiliated with Complainant in any way.
2. Complainant has not authorized Respondent to use and register its trademark and service marks, or to seek the registration of any domain name incorporating the L’OREAL marks.
3. Respondent has no prior rights or legitimate interest in the domain name and Respondent has never used the term “l’oreal” in any way before or after Complainant started their business.
4. Respondent is not known under the name “l’oreal” or any similar term.
5. Respondent is not making any legitimate non-commercial or fair use of the domain name as it directs to Complainant’s website.
6. Respondent’s conduct is parasitical in nature as the disputed domain name is so identical to Complainant’s famous L’OREAL marks. Consequently, Respondent could not claim that the use of the disputed domain name was to develop a legitimate activity.
Registered and Used in Bad Faith
Complainant contends that the disputed domain name was registered by Respondent in bad faith for the following reasons:
1. Complainant’s L’OREAL marks are very famous throughout the world including China where Respondent appears to be domiciled.
2. Complainant has substantial business presence in China and Complainant ranks No.2 in the Chinese beauty market.
3. Complainant contends that given its widespread business presence in the Chinese beauty market, it seems obvious that Respondent knew or must have know the L’OREAL marks at the time the disputed domain name was registered.
4. Respondent appears to be in the same business as Complainant and therefore, Respondent knew of Complainant and its famous L’OREAL marks when he registered the disputed domain name.
Complainant contends that the disputed domain name was being used by Respondent in bad faith for the following reasons:
1. At first, Respondent’s domain name directed to sponsored links of cosmetics products and therefore, Respondent’s website was in a common field of activity as Complainant’s websites.
2. Subsequently, Respondent’s domain name directs to Complainant’s website and this shows that Respondent has used the disputed domain name in order to attract Internet users for commercial gain.
3. Respondent has registered the disputed domain name in order to make a profit from his illegitimate registration and this is evident from the email correspondences between Respondent and Complainant regarding the proposed transfer of the disputed domain name for a sum which is obviously excessive to the initial registration costs.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The language of the registration agreement for the disputed domain name is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the Case File, no agreement appears to have been entered into between Complainant and Respondent to the effect that the proceedings should be in English. Complainant has submitted a request that English is the language of the present proceeding because (a) Complainant drafted the Complaint in English and this choice of language is presumably related to the combined fact that the English language is the language most widely used in international relations and is one of the working languages of the Center; (b) Complainant is located in France and has no knowledge of Chinese. To proceed in Chinese, Complainant has to retain specialized translation services at a cost that is likely to be higher than the overall cost of the present proceedings. Consequently, the use of Chinese in the present proceeding would impose an burden on Complainant which must be deemed significant in view of the low costs of the present proceedings; (c) Respondent seems to have sufficient ability to understand English as all mails and emails between Complainant and Respondent were in English and Chinese; (d) the disputed domain name included an English word “china”; (e) the WhoIs database of the disputed domain name indicates that the referral URL for the said domain is “http://www.ename.com” which resolves onto a webpage in English.
After considering the circumstances of the present case and the submission of Complainant’s request, the Panel is of the opinion that the language for the present proceedings shall be in English and the decision will be rendered in English. The Panel based its decision on the following reasons:
(i) The Panel’s discretion under the Policy
Paragraph 11 of the Rules provides:
“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.”
Thus, parties may agree on the language of the administrative proceeding. In the absence of an 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 ability to articulate the arguments for the case.
(ii) The Circumstances of this Case
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that Respondent is conversant and proficient in the English language. In particular, the Panel notes that (a) the disputed domain name included a word in English –“china”; and (b) Respondent appears to have understood Complainant’s English email correspondences and Respondent has always replied to Complainant’s emails either in Chinese or English. The Panel also notes that the Center has notified Respondent of the proceedings in both Chinese and English. Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. However, Respondent has chosen not to respond to Complainant’s allegations. Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
After considering the circumstances of the present case, the Panel decides that the proceeding shall be English and the decision will be rendered in English.
6.2 Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, Complainant must establish that each of the three following elements is satisfied:
1. the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
2. Respondent has no rights or legitimate interests in respect of the domain name; and
3. the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
A. Identical or Confusingly Similar
Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the L’OREAL marks since March 1, 1963 in relation to beauty products and services. The Panel rules that Complainant has rights and continues to have such rights in the relevant L’OREAL marks.
The disputed domain name consists of Complainant’s mark L’OREAL in its entirety, the English word “china” attached to it at the back and the suffix “.net”. In assessing the degree of similarity between Complainant’s trademarks and the disputed domain names, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between Complainant’s L’OREAL marks and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user seeking to purchase or download information about Complainant’s products and services.
The Panel finds that the term “loreal” in Complainant’s L’OREAL marks is an arbitrary word and it is the distinctive portion of Complainant’s marks and it has been reproduced in its entirety in the disputed domain name. The Panel finds the “loreal” portion to be the most prominent part of the disputed domain name which will attract consumers’ attention. 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 into the disputed domain name. The Panel accepts Complainant’s contention that the English word “china” is a mere geographic description and it does not provide additional specification or sufficient distinction from Complainant or its L’OREAL marks. The Panel finds that the addition of the word “china” to the word “loreal” does not serve to distinguish it from Complainant’s L’OREAL marks. Furthermore, the Panel finds that the addition of the word “china” serves to suggest a geographical location of Complainant’s business, which increases the level of confusion of Internet users as Internet users may confuse Respondent’s website for Complainant’s official website devoted to its customers in China. It is also an accepted principle that the addition of suffixes such as “.net” being the generic top-level domain is not a distinguishing factor.
The confusion generated by Respondent’s domain name is further heightened by the fact that Complainant is the owner of domain name such as <lorealchina.com> targeted at the Chinese beauty market and has been using this domain name extensively to market its goods and services on the Internet. Consequently, the Panel finds that the disputed domain name is identical or confusingly similar to Complainant’s trademarks in which Complainant has rights.
The Panel finds for Complainant on the first part of the test.
B. Rights or Legitimate Interests
The burden of proof on this element lies with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests to a disputed domain name, the burden of proof shifts to the respondent to rebut the complainant’s contentions.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds that Complainant has made out a prima facie showing and notes that Respondent has not provided any evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name.
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
1. Respondent has not provided evidence of a legitimate use of the domain name or reasons to justify the choice of “loreal” in its business operations;
2. There was no evidence to show that Complainant has licensed or otherwise permitted Respondent to use its trademark or to apply for or use any domain name incorporating the trademark;
3. There is no indication that Respondent is commonly known by the disputed domain name and/or is using the domain name in connection with a bona fide offering of goods or services;
4. Complainant and its L’OREAL marks enjoy a worldwide reputation including China, with regard to its beauty products and services. Consequently, in the absence of contrary evidence and satisfactory explanations from Respondent, the L’OREAL mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant.
The Panel finds for Complainant on the second part of the test.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product.
The above circumstances are indicative of registration and use of the domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the Panel can also constitute registration and use of the domain name in bad faith by Respondent in the appropriate cases.
One important consideration in the Panel’s assessment of whether Respondent has registered and used the domain name in bad faith is prior knowledge on the part of Respondent of Complainant’s rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. Taking into account the worldwide reputation of Complainant and its L’OREAL marks, as well as the high level of notoriety of Complainant and its marks in the Chinese market (evidenced by the substantial business presence and extensive promotion and marketing activities), the Panel finds that it is highly unlikely that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the domain name. The Panel’s findings are further buttressed by the following evidence that (a) the term “l’oreal” in Complainant’s L’OREAL marks is an arbitrary mark with no descriptive significance to the underlying goods or services and is unlikely to be used by Respondent to describe its goods or services; (b) Respondent has directed the disputed domain name at first to a competing website and subsequently, to Complainant’s website “www.lorealchina.com”; (c) Respondent has requested for a sum grossly in excess of the initial registration costs for the proposed transfer of the disputed domain name to Complainant. Consequently, in the absence of contrary evidence and satisfactory explanations from Respondent, the Panel finds that the term “l’oreal” in Complainant’s L’OREAL marks which have acquired a worldwide reputation in the beauty market is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. Thus, it would have been pertinent for Respondent to provide an explanation of its choice in the disputed domain name. However, Respondent has chosen not to respond to Complainant’s allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered by Respondent in bad faith with the intent to create an impression of an association with Complainant and its products and services, and profit there from.
Complainant has adduced evidence to prove that by using a confusingly similar disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website which at first was in competition with Complainant and thereafter, resolves onto Complainant’s website targeted at its Chinese consumers thereby giving Internet users the false impression that Respondent’s domain name is in some way related to or associated with Complainant. Given the worldwide reputation of Complainant’s L’OREAL marks in the beauty market, the compelling conclusion is that Respondent, by choosing to register and use a domain name which is identical or confusingly similar to Complainant’s widely known and distinctive trademark, intended to ride on the goodwill of the Complainant’s trademark in an attempt to exploit, for commercial gain, Internet traffic destined for Complainant. Potential partners and end users are led to believe that the website “www.loreal.net” is either another of Complainant’s Chinese websites or it is the site of official authorized partners of Complainant, while in fact it is neither of these. Consequently, Respondent has through the use of a confusingly similar domain name created a likelihood of confusion with Complainant’s L’OREAL marks and this constitutes a misrepresentation to the public that Respondent’s website is in one way or the other associated or connected with Complainant’s. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website on to which the domain name resolves are indicative of registration and use of the disputed domain name in bad faith.
The Panel finds for Complainant on the third part of the test.
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 name, <lorealchina.net> be transferred to Complainant.
Susanna H.S. Leong Sole Panelist
Dated: December 24, 2007
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