Administrative panel decision l’Oréal V. Toomy Brice




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ARBITRATION
AND
MEDIATION CENTER




ADMINISTRATIVE PANEL DECISION

L’Oréal v. Toomy Brice

Case No. D2015-1356



1. The Parties

Complainant is L’Oréal of Paris, France, represented by Studio Barbero, Italy.


Respondent is Toomy Brice of New York and Maryland, United States of America.


2. The Domain Names and Registrar

The disputed domain names , and are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).




3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2015. On August 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 4, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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” 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 Respondent of the Complaint, and the proceedings commenced on August 13, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 3, 2015.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on September 15, 2015. 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 a company founded in 1909 and is today present in 130 countries with 30 global brands. Complainant markets various beauty products (i.e., hair colour, skin care, sun protection, make-up, perfumes and hair care) and is also active in the dermatological and pharmaceutical fields.


Complainant, along with its subsidiaries Urban Decay Cosmetics LLC and L'Oreal USA Creative, Inc., owns numerous trademark registrations filed before the United States Patent and Trademark Office (USPTO), such as: for trademark URBAN DECAY, reg. No. 2449408, of May 8, 2001 in classes 18 and 21; for trademark NAKED URBAN DECAY, reg. No. 4012641, of August 16, 2011 in class 03; and for trademark UD, reg. No. 4050476, of November 1, 2011 in classes 03 and 35. Complainant also owns international trademark registrations for the aforementioned trademarks, as per Annexes 3.3 A, 3.3 B, 3.6 A, 3.6 B, 3.8 A, 3.9 B of the Complaint.
Complainant also owns numerous domain names consisting of URBAN DECAY, UD and NAKED trademarks registered by Complainant and its subsidiaries, including, amongst others, , , , , , , < ud eyeshadows.com>, as per Annex 6 of the Complaint.
The disputed domain names , and were registered by Respondent on August 6, 2013, July 5, 2014 and July 8, 2014, respectively.


5. Parties’ Contentions

A. Complainant

Complainant claims that domain name is redirected to a website which displays Complainant’s trademarks, official images taken from its advertising campaigns, and uses a layout similar to Complainant’s official websites, in order to generate the impression that it is related to Complainant’s websites. Also, the commercial website to which the disputed domain name is redirected to is unauthorized and offer counterfeit products, which Complainant concludes since the products are offered at very low prices.


Complainant points out that disputed domain name resolves to an error page and resolves to a website displaying sponsored links. However, Complainant claims that until recently they were redirected to similar websites displaying Complainant’s trademarks and official advertising images, as per Annex 7.1 of the Complaint.
Moreover, Complainant alleges that counterfeit products bearing its trademarks are or were being offered for sale on these websites, including a specific product (the NAKED 4 palettes) which has not yet been manufactured and commercialized by Complainant.
Furthermore, Complainant asserts that, apart from the disputed domain names, Respondent has registered 11 other domain names that are also confusingly similar to Complainant’s trademarks, such as - , , , , . However, Complainant, as per Annex 7.3 of the Complaint, has already successfully recovered these domains.
Complainant also states that, on October 4, 2013, a cease and desist letter was sent to Respondent demanding the transfers of the disputed domain names (as per Annex 8 of the Complaint). Furthermore, on December 3, 2013, when Complainant became aware that Respondent had registered the domain name , an additional letter was sent, reiterating the requests set forth in the previous letter.
Since Respondent never gave a response, Complainant sent a final reminder to Respondent on May 12, 2015, as an attempt to resolve the matter amicably. Complainant claims that Respondent has not yet offered a reply to any of those letters.
Complainant affirms that the domain names registered by Respondent are confusingly similar to Complainant’s trademarks, as they fully incorporate Complainant’s URBAN DECAY and UD trademarks. Complainant refers to decisions that address situations in which generic terms are used in combination with trademarks, such as: L’Oréal, Lancôme Parfums Et Beauté & Cie v. Jack Yang, WIPO Case No. D2011 1627; Fry’s Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Marko Tusla d/b/a/ Toshiba-Club.com, WIPO Case No. D2004-1066.
In this sense, Complainant contends that the terms used by Respondent in the disputed domain names may cause confusion and induce Internet users to believe there is an association between the disputed domain names and Complainant’s products and trademarks. Complainant also states that the terms “wholesale” and “cheap” used alongside trademarks URBAN DECAY or UD in the disputed domain names and , resemble Complainant’s online sales and official websites.
With regard to , Complainant states that NAKED is the most famous line of products and the expression “Naked” is also part of a registered trademark, in combination with URBAN DECAY.
Complainant further adds that Respondent’s websites in connection with the disputed domain name were all designed to give Internet users the impression that they belong to Complainant. Thereby, it is easier to conclude that the disputed domain names are confusingly similar to Complainant’s trademarks, according to paragraph 4(a)(i) of the policy and as previously decided by the panel in Moncler S.R.L. v. World Top Sale Inc / WTS, WIPO Case No. D2012-2537.
Additionally, Complainant informs that other panels have already decided that the inclusion of the Top-Level Domain “.com” is merely instrumental and does not exclude confusion caused by similarity between domain names and trademarks: Telecom Personal, S.A., v. NAMEZERO.COM, Inc, WIPO Case No. D2001-0015; and Société Générale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri, WIPO Case No. D2002-0760.
Complainant asserts that Respondent is not licensed or authorized to use its trademarks, nor is commonly known by the disputed domain names as an individual, business or other organization and that URBAN DECAY, UD or URBAN DECAY NAKED are not its family name. Complainant also asserts that Respondent has not proven its use of the disputed domain names in connection with a bona fide offering of goods. Complainant asserts that these facts show lack of Respondent’s intention to use the disputed domain names for a legitimate purpose, as previously seen on UDRP decisions in PJ Hungary Szolgáltató Korlátolt Felelősségű Társaság v. Chenmei Mei Chen / Private Whois pepejeans-uk.org, Private Whois pepejeans-uk.net, WIPO Case No. D2012-0441; Moncler S.r.l. v. Daniel Park, WIPO Case No. D2011-0488; Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750; and Cartier International, N.V., Cartier International, B.V. v. David Lee, WIPO Case No. D2009-1758.
Complainant also alleges that the same conclusion can be drawn from the use of disputed domain names and , which are redirected respectively to an error web page and a web page where sponsored links are published and where Respondent might earn revenues from the click-through commission on these sponsored links. Complainant mentions previous UDRP decisions that sustains this understanding: Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483; Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044; and PC Mall, Inc. v. Admin Billing, WIPO Case No. D2004-0692.
Complainant asserts that Respondent must have been aware of the existence of trademark registrations that are confusingly similar to the disputed domain names by the time of their registrations, as Complainant uses URBAN DECAY trademarks worldwide since 1996. Complainant mentions several previous panels that have decided similar cases, such as The Coca-Cola Company v. Andrew Corr, WIPO Case No. D2012 0368; Moncler S.r.l. v. Zhongyuan Tec, WIPO Case No. D2011-0471; Moncler S.r.l. v. linhuiming, WIPO Case No. D2011-0172; Swarovski Aktiengesellschaft v. Luc Sun, WIPO Case No. D2012 0071; and Riedel Electronics, LLC d/b/a Telstar Electronics v. Ross Marshall, WIPO Case No. D2003-0231.
Complainant states that Respondent violates paragraph 4(b)(iv) of the Policy by intentionally attracting Internet users to his websites for commercial gain, which indicates Respondent’s bad faith.
Additionally, Complainant claims that Respondent has registered and activated a total of 14 domain names which were confusingly similar to Complainant’s trademarks URBAN DECAY, UD and NAKED, constituting a pattern of such conduct and bad faith, in accordance with paragraph 4(b)(ii) of the Policy.
Finally, Complainant asserts that the lack of response to the cease and desist letters sent to Respondent can be evidence of bad faith according to paragraph 4(a)(iii) of the Policy, as seen in previous UDRP decisions such as in TDS Telecommunications Corporation v. Registrant [20758] Nevis Domains and Registrant [117460] Moniker Privacy Services, WIPO Case No. D2006-1620.

B. Respondent

Respondent did not reply to Complainant’s contentions.




6. Discussion and Findings

To succeed, Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:


(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.
The burden of proving these elements is on Complainant.

A. Identical or Confusingly Similar

Complainant has duly proven the first element under paragraph 4(a) of the Policy by attesting that it is the legitimate owner of several trademark registrations for trademarks URBAN DECAY, UD and NAKEDworldwide.


The disputed domain names , and are composed by the exact same terms as Complainant’s trademarks URBAN DECAY, UD and NAKED” combined or with the addition of the generic terms “cheap” and “wholesale”, both of which are used or similar to these are used by Complainant in some of its registered domain names, as per Annex 6 of the Complaint. The words “wholesale” and “cheap” have low distinctiveness specially as they are directly connected to sales and commercialization of products comprised in Complainant’s field of activities.
The Panel therefore finds that the disputed domain names are confusingly similar to Complainant’s trademarks URBAN DECAY, UD and NAKED.

B. Rights or Legitimate Interests

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized at paragraph 2.1 of the WIPO Overview of WIPO Panel Views on UDRP Questions, Second Edition (“WIPO Overview, 2.0”) as follows: “[A] complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If Respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP [...] If Respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on Complainant.”


In this case, Complainant has provided sufficient prima facie proof of “no rights or legitimate interests”, so the burden of production shifts to Respondent. As Respondent has not filed any response, that burden has not been discharged, and the Panel has considered Complainant’s prima facie proof to be sufficient evidence to demonstrate that Respondent has no rights or legitimate interests in the disputed domain names , and .
The Panel acknowledges that Complainant has never entered in any agreement, authorization or license whatsoever with Respondent, regarding the use of the trademarks URBAN DECAY, UD or NAKED.
Furthermore, it is clear that Respondent is not commonly known by the disputed domain names, that there is no trademark registered, in the name of Respondent, that consists of, or contains, the terms URBAN DECAY, UD or NAKED; and that Respondent does not have any rights on an unregistered basis to such expressions.
Therefore, the Panel finds that Respondent has no right or legitimate interest in respect to the disputed domain names (Policy, Paragraph 4(a)(ii)).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include: “(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”.


The Panel finds it is highly unlikely that Respondent had no knowledge of Complainant’s company name and trademarks URBAN DECAY, UD and NAKED at the time of registration of the disputed domain names, considering its well-known status and success in the cosmetic field.
The Panel also understands that the fact that Respondent used Complainant’s trademarks URBAN DECAY, UD and NAKED as the major component of the disputed domain names - considering that “wholesale” and “cheap” are generic terms indicating products’ sales - in circumstances in which Respondent did not have any rights to the respective trademark, is indicative of bad faith as well.
The Panel was able to confirm that the page corresponding to the disputed domain name currently commercializes products under the URBAN DECAY and NAKED trademarks. However, the Panel is not able to confirm the provenance of such products. Furthermore, the Panel has confirmed that the website connected with the disputed domain name utilizes pictures of Complainant’s famous products, logo and advertising campaign pictures, which certainly generates a strong possibility of confusion, leading consumers into believing they are in fact dealing with Complainant’s company.
Consequently, it is clear to the Panel that the disputed domain name may mislead consumers into believing that Respondent is an authorized retailer of Complainant’s products, which Complainant has confirmed not to be true.
The Panel also finds that the disputed domain names and bearing Complainant’s trademarks NAKED and URBAN DECAY may create false associations between Complainant and Respondent, misleading consumers into believing that Respondent is affiliated with Complainant, fact which Complainant has confirmed not to be true. Despite the fact that there is currently no apparent use of these domain names by Respondent, their passive holding is also an act of bad faith under the circumstances as stated at paragraph 3.2 of WIPO Overview 2.0, especially in light of Respondent’s pattern of bad faith conduct.
Accordingly, the Panel concludes that the disputed domain names were registered and are being used in bad faith as per Paragraph 4(a)(iii) of the Policy.


7. Decision



For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names , and be transferred to Complainant.

Gabriel F. Leonardos

Sole Panelist



Date: September 29, 2015



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