LABORATOIRES M&L v. Deborah R. Heacock
Claim Number: FA1910001868687
Complainant is LABORATOIRES M&L (“Complainant”), represented by Laurent Becker of Nameshield, France. Respondent is Deborah R. Heacock (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <loccitane.us>, registered with Dynadot, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 28, 2019; the Forum received payment on October 28, 2019.
On October 31, 2019, Dynadot, LLC confirmed by e-mail to the Forum that the <loccitane.us> domain name is/are registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On November 1, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 21, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@loccitane.us. Also on November 1, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 26, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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
Complainant, LABORATOIRES M&L, is a global, natural and organic ingredient-based cosmetics and well-being products manufacturer and retailer. Complainant has rights in the L’OCCITANE mark through its registration with the United States Patent Office and other international trademark agencies (e.g., Reg. No. 2,021,793, registered Dec. 10, 1996). Respondent’s <loccitane.us> domain name is identical to Complainant’s L’OCCITANE mark. Respondent’s omits the apostrophe and adds the “.us” country code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in the <loccitane.us> domain name. Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to register any variant of L’OCCITANE in a domain name per Policy ¶ 4(c)(iii). Nothing in the available evidence indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). Further, Respondent is not making a bona fide offering of goods or services via the disputed domain name, nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(ii) and (iv), respectively. Instead, Respondent’s disputed domain name points to a parked page with commercial links. Respondent also offers the disputed domain name for sale.
Respondent registered or has used the <loccitane.us> domain name in bad faith as the disputed domain name redirects to a parked page with commercial links. Respondent attempts to offer to sell the disputed domain name. Respondent has been involved as a Respondent in previous UDRP cases which shows a pattern of other bad faith registrations. Finally, Respondent had actual knowledge of Complainant’s rights in the L’OCCITANE mark through its distinctiveness of the mark and being an employer around the world.
B. Respondent
Respondent failed to submit a response to this proceeding. The Panel notes that the <loccitane.us> domain name was registered on July 7, 2012.
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 that Complainant must 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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of 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(f),14(a) and 15(a) of the Rules and draw such inferences it 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 (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 to have rights in the L’OCCITANE mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided the Panel with a copy of its USPTO registration for the L’OCCITANE mark (e.g., Reg. No. 2,021,793, registered Dec. 10, 1996). Therefore, the Panel finds that Complainant has adequately shown rights in the L’OCCITANE mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <loccitane.us> domain name is confusingly similar or identical to Complainant’s L’OCCITANE mark. Registration of a domain name that removes an apostrophe and adds a gTLD or ccTLD is irrelevant in determining confusion similarity analysis. See Macy’s Retail Holdings, Inc. and its subsidiary Macy's West Stores, Inc. v. jiangchunyuan, FA 1685126 (Forum Sept. 6, 2016) (“removal of an apostrophe and addition of the gTLD “.com” are not relevant to a confusing similarity analysis”). Here, Complainant argues that Respondent removes the apostrophe from the L’OCCITANE mark and adds the ccTLD “.us.” Therefore, the Panel finds that Respondent’s domain name is confusingly similar to identical to Complainant’s mark.
The Panel finds that there is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the 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)). Therefore, this Panel concludes that Respondent has failed Policy ¶ 4(c)(i).
Complainant argues Respondent lacks rights or legitimate interest in the <loccitane.us> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the L’OCCITANE mark or register domain names using Complainant’s mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name”.) The WHOIS information for the disputed domain name lists the registrant as “Deborah R. Heacock” and there is no other evidence to suggest that Respondent was authorized to use the L’OCCITANE mark or was commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(iii).
Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s <loccitane.us> domain name points to a parked page with commercial links. Use of a disputed domain name to resolve to a webpage that offers commercial links is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(ii) or (iv). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Here, Complainant has provided screenshots of Respondent’s disputed domain name’s resolving webpage that shows a parked page with commercial links that are unrelated or related to Complainant’s business. Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(ii) or (iv).
Complainant further argues that Respondent attempts to sell the disputed domain name. Offers to sell a <loccitane.us> domain name may be evidence that a respondent lacks rights or legitimate interests in a disputed domain name per Policy ¶ 4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Here, Complainant provides a screenshot from the domain name auction site <sedo.com> where the disputed domain name is being offered for sale. The Panel finds that this constitutes further evidence that Respondent lacks rights or legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered or used the <loccitane.us> domain name in bad faith by offering to sell the disputed domain name. Offers to sell a disputed domain name may be evidence of bad faith per Policy ¶ 4(b)(i). See Vanguard Staples, Inc. v. lin yanxiao, FA1617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”). Here, Complainant provides a screenshot from the domain name auction site <sedo.com> where the disputed domain name is offered for sale. Therefore, the Panel finds that this constitutes evidence that Respondent registered or used the disputed domain name in bad faith per Policy ¶ 4(b)(i).
Complainant further argues that Respondent has been involved in previous UDRP cases which indicates a pattern of bad faith registration. Evidence of prior UDRP actions may be evidence of bad faith per Policy ¶ 4(b)(ii). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Here, Complainant has provided the Panel with several previous decisions ruling against this Respondent. The Panel finds that this constitutes evidence of a pattern of bad faith registration per Policy ¶ 4(b)(ii).
Complainant argues that Respondent registered or used the <loccitane.us> domain name in bad faith as the disputed domain name redirects to a parked page with commercial links. Use of a disputed domain name to redirect users to a parked page with commercial links may be evidence of bad faith per Policy ¶ 4(b)(iv). See EL HIN / DTAPLES.COM, FA1557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). Here, Complainant has provided screenshots of Respondent’s disputed domain name’s resolving webpage that shows a parked page with commercial links. Therefore, the Panel finds that Respondent registered or uses the <loccitane.us> domain name in bad faith per Policy ¶ 4(b)(iv).
Lastly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the L’OCCITANE mark because the mark is known throughout the world due to its use and fame and use in multiple countries. The Panel agrees, and finds that Respondent had actual knowledge of Complainant’s rights in the L’OCCITANE mark prior to registration which constitutes bad faith per Policy ¶ 4(a)(iii).
For the above reasons, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <loccitane.us> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: December 10, 2019
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