L’Oréal v. Bruce Mole
Claim Number: FA1203001435940
Complainant is L’Oréal (“Complainant”), represented by Nathalie Dreyfus of Dreyfus & Associés, France. Respondent is Bruce Mole (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lorealprofessionnel.us>, registered with Dynadot, LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically March 23, 2012; the National Arbitration Forum received a hard copy March 30, 2012.
On March 23, 2012, Dynadot, LLC confirmed by e-mail to the National Arbitration Forum that the <lorealprofessionnel.us> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC verified that Respondent is bound by the Dynadot, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On March 30, 2012, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 19, 2012, by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 23, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications record, the Administrative Panel (the “Panel”) finds that the Forum discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following allegations in this proceeding:
1. Complainant produces and sells beauty products under the L’OREAL PROFESSIONNEL mark.
2. Complainant owns a trademark registration with the European Office for Harmonization in the Internal Market (“OHIM”) for the L’OREAL PROFESSIONNEL mark (Reg. No. 8,118,903 registered October 21, 2009).
3. Respondent registered the disputed domain name on June 25, 2010.
4. The disputed domain name is confusingly similar to Complainant’s mark.
5. Respondent is not commonly known by the disputed domain name.
6. The disputed domain name resolves to a parked page displaying sponsored links to Complainant’s competitors in the hair product industry.
7. Respondent commercially benefits from these links through the collection of click-through fees.
B. Respondent did not submit a Response in this proceeding.
Complainant established that it has rights in a mark that Respondent used in the disputed domain name.
The disputed domain name is confusingly similar to the Complainant’s mark.
Respondent has no rights to or legitimate interests in the domain name or mark.
Respondent registered and used the disputed domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(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.
Given Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims rights in the L’OREAL PROFESSIONNEL mark pursuant to Policy ¶ 4(a)(i). The Panel notes that Complainant provided evidence of its registration of the mark with the OHIM (Reg. No. 8,118,903 registered October 21, 2009). The Panel also notes that registration of a mark with a trademark authority is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). The Panel finds that Complainant established rights in the L’OREAL PROFESSIONEL mark pursuant to Policy ¶ 4(a)(i), despite the fact that Complainant does not hold a trademark registration in the country in which Respondent operates or resides. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the UDRP does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant contends that the <lorealprofessionnel.us> domain name is confusingly similar to its L’OREAL PROFESSIONNEL mark under a Policy ¶ 4(a)(i) analysis. The Panel finds that the disputed domain name omits the apostrophe from Complainant’s mark, deletes the space between words, and adds the country-code top-level domain (“ccTLD”) “.us.” These changes do not create a distinctive domain name. See LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms did not establish distinctiveness from the complainant’s mark under UDRP ¶ 4(a)(i)); see also Check Into Cash, Inc. v. Questar, FA 1024235 (Nat. Arb. Forum Aug. 13, 2007)(holding that the addition of the ccTLD “.us” did not distinguish the disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
Based on the foregoing, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Complainant satisfied the elements of usTLD Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds no evidence in the record to support any finding that Respondent owns any service marks or trademarks that reflect the <lorealprofessionnel.us> domain name. Therefore the Panel finds that Respondent does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002 (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant alleges that Respondent is not commonly known by the disputed domain name. The WHOIS information identifies the domain name registrant as “Bruce Mole.” The Panel finds that the WHOIS information bears no nominal similarity to the <lorealprofessionnel.us> domain name, providing evidence that Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(iii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that UDRP ¶ 4(c)(ii) does not apply). Complainant further states that Respondent has never been affiliated with Complainant in any way and has not been authorized by Complainant to use the L’OREAL PROFESSIONNEL mark. The Panel notes that the absence of a Response gives the Panel no other evidence that Respondent is commonly known by the disputed domain name. The Panel therefore finds that Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(iii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant further alleges that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) and does not constitute a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). Respondent’s disputed domain name resolves to a parked page displaying sponsored links to Complainant’s competitors in the hair product industry. The Panel notes that the use of a disputed domain name to resolve to this type of website cannot constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii)); see also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use under UDRP ¶ 4(c)(iii)). The Panel finds that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant also contends that Respondent’s offer to sell the disputed domain name is grounds for a finding that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Complainant claims that Respondent responded to an e-mail, in which Complainant asked that Respondent cease and desist use of the disputed domain name, with an offer to sell the disputed domain name to Complainant for 600 euros. The Panel finds that Respondent’s willingness to sell the disputed domain name to Complainant constitutes a lack of rights or legitimate interests under Policy ¶ 4(a)(ii). See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under UDRP ¶ 4(a)(ii))
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name. Complainant satisfied the elements of usTLD Policy ¶ 4(a)(ii).
Registration or Use in Bad Faith
Complainant argues that Respondent’s solicitation of 600 euros for the disputed domain name supports findings of bad faith registration and use under Policy ¶ 4(b)(i). The Panel agrees; this is in keeping with Policy ¶ 4(b)(i) and holdings of prior UDRP panels when a respondent offers to sell a disputed domain name for an amount in excess of reasonable registration fees. See Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith).
The Panel finds that Respondent’s offer to sell the disputed domain name supports findings of bad faith registration and use under Policy ¶ 4(b)(i).
Complainant further argues that Respondent’s pattern of registering domain names in bad faith evidences bad faith under Policy ¶ 4(b)(ii). Complainant claims to provide evidence of past cases in which the transfer of a domain name registered by Respondent was ordered. The Panel notes, however, that the respondent in the cases provided by Complainant is a “Bruce Molsky,” while Respondent in the immediate case is identified as “Bruce Mole.” The Panel finds that the probability that these two respondents are not in fact the same person is too great to rule on this issue pursuant to Policy ¶ 4(b)(ii).
Complainant urges as well that, by operating a parked page displaying sponsored links to Complainant’s competitors in the hair product industry, Respondent disrupts Complainant’s business in bad faith pursuant to Policy ¶ 4(b)(iii). The Panel notes that, through the use of a confusingly similar domain name, Respondent increases the likelihood that consumers will visit Respondent’s website, when they had in fact intended to visit Complainant’s official website. The facts support an inference by the Panel that a portion of these consumers will inevitably visit the competing links displayed on Respondent’s website, eventually purchasing hair products from a competitor of Complainant. The Panel finds that Respondent’s website, therefore, causes Complainant to lose a sale to the direct benefit of a competitor and that this constitutes a disruption of Complainant’s business. This circumstance also supports findings of bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to UDRP ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under UDRP ¶ 4(b)(iii)).
Complainant urges that Respondent’s registration and use of the disputed domain name also exhibits bad faith in that it seeks to attract Complainant’s customers for Respondent’s own commercial gain, also found to be bad faith registration and use under a Policy ¶ 4(b)(iv) evaluation. The Panel finds that Respondent’s use of a confusingly similar domain name substantially increases the likelihood that consumers will believe that Respondent’s site is sponsored by, or somehow associated with, Complainant and that Respondent hopes to use this confusion to drive Internet traffic to its site. The Panel under such circumstances is also permitted to make an inference that Respondent collects click-through fees each time one of the links featured on its page is accessed. The Panel finds that Respondent, therefore, attempts to realize a commercial gain from the confusion it creates, as greater traffic will lead to a higher click-through rate, in turn leading to a greater financial gain. The Panel finds that this type of use constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to UDRP ¶4(b)(iv).”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under UDRP ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Complainant also contends that, in light of the fame and notoriety of Complainant's L’OREAL PROFESSIONEL, it is inconceivable that Respondent could have registered the disputed domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here may find that any arguments of bad faith based on constructive notice are irrelevant, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, and finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name, which also supports findings of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of usTLD Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lorealprofessionnel.us> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 7, 2012.
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