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and Mediation Center
L’Orйal, Helena Rubinstein, Lancфme Parfums et Beautй & Cie. v. Spiral Matrix
Case No. D2006-0869
1. The Parties
The Complainant is L’Orйal, Helena Rubinstein, Lancфme Parfums et Beautй & Cie, Paris, France, represented by Cabinet Dreyfus & Associйs, France.
The Respondent is Spiral Matrix, Eldoret, Kenya.
2. The Domain Names and Registrar
The disputed domain names:
<wwwlorealprofessionnel.com> are registered with Intercosmos Media Group
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2006. On July 10, 2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain names at issue. On July 10, 2006, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 the Respondent of the Complaint, and the proceedings commenced on July 24, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 14, 2006.
The Center appointed Sir Ian Barker as the sole panelist
in this matter on August 22, 2006. 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,
4. Factual Background
The Complainant, L’Oreal heads one of the world’s largest groups in the cosmetics business. It is present in over 130 countries. The other Complainants are subsidiary companies in the L’Oreal Group.
The Group markets over 500 brands and more than 2,000 products in all sectors of the beauty business: hair color, permanents, styling aids, skincare, cleansers and fragrance.
The L’Oreal Group holds trademarks for L’ORЙAL, L’ORЙAL PROFESSIONEL, REDKEN and MAYBELLINE New York. These trademarks have been registered in various jurisdictions, notably France, the European Union, United States and Japan. They are protected worldwide.
In 1917, the Maybelline Company introduced Maybelline Cake Mascara – the first modern eye cosmetic for everyday use. It became a leading cosmetics line in the United States. In February, 1996, Maybelline was acquired by the L’Oreal USA, Inc. and now operates as a separate division within L’ORЙAL USA, Inc. As a result, some MAYBELLINE trademarks belong to L’Orйal and some others to MAYBELLINE.
The Complainant, Lancome Parfums Et Beautй & Cie, is a leading luxury-cosmetics brand worldwide with 70 years of experience in three continents. Lancфme owns the trademark LANCOME.
The Complainant, HELENA RUBENSTEIN offers a comprehensive range of cosmetic products. It owns the trademark HELENA RUBENSTEIN.
The Complainants own websites at “www.loreal.com”, “www.maybelline.com”, “www.helenarubenstein.com” and “www.lancome.com”.
The disputed domain names were registered by the Respondent between February 6 and May 24, 2006.
The Respondent was not given any rights by any of the Complainants to use any of the marks in any of the disputed domain names.
The disputed domain names have links to a directory web-page presenting sponsored
links relating to the Complainant’s competitors in the cosmetics business.
4. Parties’ Contentions
The Respondent is a Company registering and storing many domain names based
on well-known trademarks. It was formerly known as SPIRAL MATRIX, a well-known
cybersquatter and typosquatter. It sponsors links in relation to well-known
trademarks. It has featured in several WIPO decisions, for example (Sociйtй
des Hфtels Meridien v. Spiral Matrix / Kentech Inc., Eldoret, Kenya,
WIPO Case No. D2005-1196, Ocean
Pacific Apparel Corp v. Spiral Matrix / Kentech Inc., Eldoret, Kenya,
WIPO Case No. D2006-0287).
The Complainants are entitled to act collectively as Helena Rubinstein, Lancome
Parfums et Beautй & Cie and L’Oreal in line with previous WIPO decisions.
In (Sociйtй Gйnйrale and Fimat International Banque v. Lebanon Index/La France
DN and Elie, WIPO Case No. D2002-0760)
it was said:
“The Panel finds that the naming of a parent and subsidiary as Complainants is permissible in a proceeding in which the Respondent is using domain names which are confusingly similar to trademarks owned by the parent company and its subsidiary. It is preferable that a dispute concerning the domain names be considered in a single proceeding than in a multiplicity of proceedings.”
See also Compagnie Gйnйrale des Etablissements Michelin CGEM - Michelin
& Cie, Michelin Recherche et Technique S.A. against Horoshiy Inc., WIPO
Case No. D2004-0752.
The domain names are confusingly similar to the trademark or service marks in which the Complainants have rights;
The disputed domain names are confusingly similar to the Complainants’
LANCФME, HELENA RUBINSTEIN, REDKEN, L’ORЙAL AND MAYBELLINE marks because
the Respondent has only added on generic terms for products or services offered
by Complainants, namely, “makeup”, “cosmetics”, “mascara”,
“hairstyles” and “models”. Thus, the internet user is
misled into thinking that the disputed domain names link to websites owned,
endorsed, sponsored or maintained by the Complainants (See Southern Communications
Services, Inc. d/b/a Southern Linc v. J Lee, WIPO
Case No. D2005-0212 and also Merrell Pharmaceuticals Inc., Aventis Pharma
SA. v. Filips Kostins, WIPO Case No. D2004-0943).
For the disputed domain name, <wwwlorealprofessionnel.com>; the risk of confusion is particularly acute. Domain name addresses on the World Wide Web are preceded by the three letters “www.”. Respondent is seeking to exploit this fact. The domain name is functionally identical to “lorealprofessionnel.com”, the primary mark and website with which the Complainant, L’Orйal, identifies itself on the Internet.
The Respondent has misappropriated the LORЙAL PREOFFESIONNEL trademark by using the very same name and then appending to that mark the prefix “www”. Individuals searching for L’Orйal’s website, who inadvertently type “www”, will be taken to the Respondent’s website, and thus be misled into thinking that the disputed domain name links to a site owned, endorsed, sponsored or maintained by L’Orйal.
The letters “www” have no distinguishing capacity in the context
of domain names. Panels have held that the letters “www” give particular
attention to the word succeeding them and an Internet user will assume that
the domain name is comprised only of the succeeding word. The practical effect
of preceding a trademark with the letters “www” in a domain name
is a common practice known as “typosquatting” (See AT&T Corp.
v. Byeong Deog Im, WIPO Case No. D2004-0026,
and also Southern Communications Services, Inc. d/b/a Southern Linc v. J
Lee, WIPO Case No. D2005-0212).
Concerning the disputed domain names <redkenshadeseq.com>, <lancomehypnose.com>, and <lancomemiracle.com>, these only reproduce the trademarks REDKEN and LANCOME with the addition of one of the Complainant’s well-known products. Lancфme Miracle is a perfume produced by the Complainant. Lancфme Hypnose is one of the Complainant’s luxury Perfumes and Mascara. Redken Shades EQ is an Enhancing Shampoo produced by the Complainant. In these domain names, the trademarks “REDKEN” and “LANCOM” are the predominant element. The addition of the Complainant’s products to the domain names is not sufficient to distinguish the domain names from the Complainants’ trademarks. On the contrary, these additions are designed to increase the risk of confusion between the Complainant’ trademarks and the domain names.
Concerning the disputed domain names <lorealcool.com> and <lorealcoupons.com>
the addition of the words <cool> and <coupons>, does not distinguish
the use of the trademark LOREAL from the association with the Complainant, in
the consumer’s mind. There is the strong similarity between the signs
in conflict since the relevant word LOREAL is identical, and the inclusion of
the word <cool> or <coupons> in the disputed domain names is not
an obstacle to the conclusion that the signs in conflict are strongly similar.
(WIPO Case No. D2003-0696, PepsiCo,
Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS)
October 28, 2003.
The Complainants have obtained
a favourable WIPO decision in a similar case (L’Orйal of Paris, Biotherm,
and Lancфme Parfums et Beautй & Cie. v. Unasi, WIPO
Case No. D2005-0623).
The Respondent has no rights or legitimate interests in respect of the domain names;
The Respondent is not affiliated with the Complainants in any way. None of them has authorized the Respondent to use and register their trademarks, or to seek the registration of any domain name incorporating said marks.
The Respondent is not making any legitimate non-commercial or fair use of the
domain names, as the domain names in dispute are redirected to webpages offering
sponsored links to competitors. The redirection to these websites can not appear
to be a legitimate non-commercial or fair use of the domain name, without the
Complainants’ knowledge or its permission. (CSC Holdings, Inc. v. cablevision-lightpath.com
Inc., WIPO Case No. D2004-1057)
The domain names were registered and are being used in bad faith.
The Respondent is a well-known cybersquatter and typosquatter. It has been involved in many WIPO UDRP cases. These facts create a presumption that the Respondent registered and used the disputed domain names in bad faith. At the time of registration of the disputed domain names, the Respondent could not ignore in good faith the existence of the Complainants’ well-known trademarks.
The Respondent uses disputed domain names to divert Internet users to websites
that links to other commercial websites, some of which are acting in the cosmetics
and beauty business. By diverting consumers to commercial websites selling products
and services in the same field of business in which the Complainants are involved,
the Respondent has benefits illegally from the fame and renown of Complainants’
trademarks. See (Banque Transatlantique S.A. v. DOTSCOPE, WIPO
Case No. D2004-1100):
“the linkage of the domain names with a website which only redirect users to search engine and unrelated third-party vendors cannot be considered as a bona fide offer of goods or services in the sense foreseen by the policy.”
Moreover, the owner of a website posting pop-up ads receives “click-through”
fees for diverting Internet users to the advertisers (COMSAT Corporation
v. Ronald Isaacs, WIPO Case No. D2004-1082).
This creates a presumption of bad faith.
The Respondent did not reply to the Complainant’s submissions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Since the Respondent has not filed a Response, the Panel accepts the statements of fact made by the Complainants.
For the reasons set out in the Complainants’ submissions, it is appropriate
to consider the challenges to the several disputed domain names in the one complaint.
All the Complainants are related companies in the same group. The Panel adopts
the views of the Panel in the previous L’Orйal case (D2005-0623)(Supra),
where it was said:
“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 Sociйtй Gйnйrale
and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri,
WIPO Cases No. D2002-0760
and Compagnie Gйnйrale des Etablissements Michelin CGEM – Michelin
& Cie, Michelin Recherche et Technique S.A. v. Horoshiy Inc., WIPO
Case No. D2004-0752.”
All the disputed domain names are confusingly similar to the marks in which one or other of the Complainants has rights. The addition of either the prefix “www” or some word descriptive of a product does not alter the confusing similarity. The Panel accepts the Complainants’ submissions as set out above in respect of individual domain names.
Accordingly, the first limb of Paragraph 4(a) of the Policy is proved.
B. Rights or Legitimate Interests
None of the Complainants gave the Respondent any right to use any of the marks in any of the disputed domain names. Since the Respondent filed no Response, that fact alone is sufficient to establish the second limb of Paragraph 4(a). The Respondent would have been entitled to establish any one of the circumstances described in paragraph 4(c) of the Policy, but has not done so.
C. Registered and Used in Bad Faith
Given the worldwide fame of the Complainants and their cosmetic and beauty products, it is hard to infer other than bad faith use and registration against the Respondent. This view is confirmed by:
(a) the Respondent’s track record as a typosquatter, as shown in the decisions cited; and
(b) the linkages on its websites with the products of competitors of the Complainants. Presumably, the Respondent receives “click through’ fees. The internet user is clearly going to be confused.
Accordingly, all three requirements of paragraph 4(a) of the Policy are proved.
In accordance with paragraphs 4(i) of the Policy and 15 of the Rules, for the reasons described in Section V above, the Panel orders that the disputed domain names be transferred to their legitimate owners according to their trademark rights as follows:
Owner - L’Oreal: <lorealcool.com>, <lorealcoupons.com>, <lorealmascara.com>, <wwwlorealprofessionnel.com>, <redkenhairstyles.com>, <redkenshadeseq.com>, <maybellinemodels.com>
Owner - Helena Rubinstein: <helenarubinsteincosmetics.com>.
Owner - Lancome: <lancomemakeup.com>, <lancomemiracle.com>, <lancomehypnose.com>.
Hon. Sir Ian Barker, QC
Dated: August 25, 2006