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L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc [2005] GENDND 1450 (15 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc

Case No. D2005-0623

1. The Parties

The Complainants are L’Oréal of Paris, France, Biotherm of Le Neptune, Monaco and Lancôme Parfums et Beauté & Cie of Paris, France, represented by Cabinet Dreyfus & Associés, France.

The Respondent is Unasi, Inc. of Panama City, Panama.

2. The Domain Names and Registrar

The disputed domain names <biothermcosmetics.com>, <lancomeskincare.com>, <lorealpais.com>, <lorealpares.com>, <lorealpariz.com>, <lorealpars.com>, <lorealperis.com>, <lorealporis.com>, <lorealprais.com>, <lorealpris.com>, <lorealskincare.com>, <maybellinecosmetics.com>, <maybellinemakeup.com> and <www-lancome.com> (the “Domain Names”) are registered with iHoldings.com Inc. d/b/a DotRegistrar.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on June 15, 2005, and in hard copy on June 22, 2005. The Center transmitted its request for registrar verification to the Registrar by email on June 16, 2005. The Registrar responded by email on June 22, 2005, confirming that it was the Registrar and the Respondent was the registrant of the Domain Names, that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to the registrations, that the Domain Names would remain locked during this proceeding, and that the registration agreement for each of the registrations was in English and contained a submission by the Respondent to the jurisdiction at the principal office of the Registrar for court adjudication of disputes concerning use of the Domain Names; providing the contact details for the Respondent recorded on its Whois database; and stating that it had not received a copy of the Complaint.

The Center verified that the Complaint satisfied the formal requirements of 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”) on June 28, 2005.

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 June 28, 2005. The notification was sent by email to the email address on the Registrar’s Whois database and postmaster@ the respective Domain Names, registered post to the PO Box of the Respondent identified in the Complaint, courier to the street address on the Registrar’s Whois database, and fax to the fax number on the Registrar’s Whois database. The fax and the email to the address on the Registrar’s Whois database appear to have been transmitted successfully. The evidence in the Complaint also shows that the Respondent has received and replied to emails sent to that email address.

In accordance with the Rules, paragraph 5(a), the due date for Response was July 18, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 21, 2005.

The Center appointed Jonathan Turner as the sole panelist in this matter on August 10, 2005. 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.

Although the Registrar stated in its verification response that it had not received the Complaint, the Panel notes that the Complaint states that it was sent to the Registrar and that a copy of the Complaint was sent to the Registrar by the Center on formal notification. If there was any non-compliance with the Supplemental Rules, paragraph 4(b), it was immaterial and is hereby waived by the Panel.

The Panel notes that the Complaint is made by three companies in the same group of companies against the same Respondent. The Rules, paragraph 3(a), provide that “any person or entity may initiate a complaint”. The Panel considers that members of the same group of companies may constitute an “entity” for the purposes of this provision, in line with the decisions in Société Générale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri, WIPO Cases No. D2002-0760 and Compagnie Générale des Etablissements Michelin CGEM – Michelin & Cie, Michelin Recherche et Technique S.A. v. Horoshiy Inc., WIPO Case No. D2004-0752.

Having reviewed the file, the Panel is satisfied that the Complaint complied with formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.

4. Factual Background

The Complainants are members of a group of companies which supplies a wide variety of cosmetics products, including under the well-known names “L’Oréal”, “L’Oréal Paris”, “Lancôme”, “Biotherm” and “Maybelline”. It is also well-known that the L’Oréal business is based in Paris.

The Domain Names have been used by the Respondent for a web page containing sponsored links to suppliers of cosmetics competing with the Complainant.

The Complainant wrote to the Respondent by email on February 8, 2005, objecting to his registration of two of the Domain Names. The Respondent replied by email of February 10, 2005, offering to sell these Domain Names to the Complainants for $70 each plus escrow costs, and clarified by email of February 14, 2005, that the total cost would be $140 plus $25 escrow fee. The Complainants did not pursue the correspondence having found out about the other Domain Names registered by the Respondent.

5. Parties’ Contentions

A. Complainants

The Complainants contend that the Domain Names are identical or confusingly similar to its registered trademarks “L’ORÉAL, MAYBELLINE, BIOTHERM and LANCÔME; that the Respondent has no rights or legitimate interests in respect of the Domain Names; and that they were registered by the Respondent and are being used in bad faith, to divert internet users to a web page containing sponsored links to competing websites, thereby profiting from confusion by receiving “click-through” commissions.

The Complainants also rely on the fact that the Respondent has sought to sell two of the Domain Names for $70 each, when the cost of registration was between $7.49 and $14.95.

The Complainants further assert that the Respondent is the same person or entity as “J Lee” and “Alvaro Collazo”, a well-known cybersquatter who has been found to have registered domain names similar to well-known trademarks in bad faith in a number of previous decisions.

The Complainants request that the Domain Names be transferred to the respective owners within the Complainants’ group of the corresponding marks.

B. Respondent

As noted above, the Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In accordance with the Policy, paragraph 4(a), to succeed in this proceeding, the Complainants must prove (a) that the Domain Names are identical or confusingly similar to marks in which they have rights, (b) that the Respondent has no rights or legitimate interests in respect of the Domain Names, and (c) that the Domain Names were registered and are being used in bad faith. These requirements will be considered in turn.

A. Identical or Confusingly Similar to Marks in which Complainants have Rights

The Panel is satisfied on the evidence that the Complainants have registered rights in the marks L’ORÉAL, MAYBELLINE, BIOTHERM and LANCÔME in a considerable number of countries.

The Panel further considers that each of the Domain Names is confusingly similar to one or other of these marks. Apart from the generic top level domain, each of the respective Domain Names consists of one of these marks (excluding apostrophes and accents, which cannot be used in domain names) together with a descriptive term associated with the Complainants (“cosmetics”, “makeup”, “skincare”) or a mis-spelling or mis-typing of such a term (variants of “Paris”) or the generic web page indicator, “www”.

B. No Rights or Legitimate Interests

Based on the case file, the Panel considers that the Respondent has no rights or legitimate interests in respect of the Domain Names. As further discussed below, such use as the Respondent has made of the Domain Names has not been bona fide, legitimate or fair so as to give rise to rights or legitimate interests in relation to them.

C. Registered and Used in Bad Faith

The Panel is satisfied by the Complainants’ unchallenged evidence that the Domain Names are being used to attract internet users to the Respondent’s web page by creating a likelihood of confusion with the Complainants’ marks for the purpose of commercial gain in the form of click-through commissions on the sponsored links.

The Panel considers that many internet users, who type in one of the Domain Names seeking information about the owner of, or products sold under, the corresponding mark, are liable to click on one of the sponsored links without realizing that the Respondent’s website is not connected with the owner of the relevant mark. However, even where internet users realize when they view the Respondent’s web page that it is not connected with the owner of the mark, the Respondent is liable to profit from their initial confusion, since they may still be tempted to click on the sponsored links.

Such exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions: see e.g Future Brands LLC v. Mario Dolzer, WIPO Cases 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 is further satisfied by the evidence that the Respondent has sought to sell two of the Domain Names for a price significantly in excess of the Respondent’s documented out-of-pocket costs.

The Panel infers that the Domain Names were registered for one or both of these purposes.

The Panel concludes that the Domain Names were registered and are being used in bad faith.

The Panel finds it unnecessary to rely on the Complainants’ unsubstantiated assertion that the Respondent is the same person as “J Lee” and “Alvaro Collazo”, a well-known cybersquatter.

Relief

The Complainants request that the Domain Names be transferred to the respective owners of the corresponding trademark rights.

In the cases of the Domain Names <lorealpais.com>, <lorealpares.com>, <lorealpariz.com>, <lorealpars.com>, <lorealperis.com>, <lorealporis.com>, <lorealprais.com>, <lorealpris.com> and <lorealskincare.com> the Complainants identify the relevant trademark owner as the Complainant, L’Oréal. This is supported by the evidence of the trademark registrations and the Panel will so order.

In the case of the Domain Name <biothermcosmetics.com> the Complainants identify the relevant trademark owner as the Complainant, Biotherm. Again, this is supported by the evidence of the trademark registrations and the Panel will so order.

In the cases of the Domain Names <lancomeskincare.com> and <www-lancome.com> the Complainants identify the relevant trademark owner as the Complainant, Lancôme Parfums et Beauté & Cie. This is also supported by the evidence of the trademark registrations and the Panel will so order.

Finally, in the case of the Domain Names, <maybellinecosmetics.com>, <maybellinemakeup.com>, the evidence identifies the owner of the corresponding trademarks as the Complainant, L’Oréal. The Panel will order that these Domain Names be transferred to this Complainant.

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

(a) the Domain Names, <lorealpais.com>, <lorealpares.com>, <lorealpariz.com>, <lorealpars.com>, <lorealperis.com>, <lorealporis.com>, <lorealprais.com>, <lorealpris.com>, <lorealskincare.com>, <maybellinecosmetics.com>, <maybellinemakeup.com> be transferred to the Complainant, L’Oréal;

(b) the Domain Name, <biothermcosmetics.com>, be transferred to the Complainant, Biotherm; and

(c) the Domain Names, <lancomeskincare.com> and <www-lancome.com> be transferred to the Complainant, Lancôme Parfums et Beauté & Cie.

Jonathan Turner
Sole Panelist

Dated: August 15, 2005