Biotherm et al. v. 邱子皓 et al.
Claim Number: FA1412001596344
Complainant: Biotherm of Monaco, Monaco.
Complainant Representative:
Complainant Representative: Dreyfus & associés of Paris, France.
Respondent: 邱子皓 of 上海, CN.
Respondent Representative: «cFirstName» «cMiddle» «cLastName»
REGISTRIES and REGISTRARS:
Registries: Zodiac Capricorn Limited
Registrars:
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
Prathiba M. Singh, as Examiner.
Complainant submitted: December 22, 2014
Commencement: December 23, 2014
Default Date: January 7, 2015
Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
In the present dispute, the Complaint is with respect to three domain names <biotherm.商城><lancome.商城><loreal.商城>. As the Whois information is identical with respect to the three domain names, the Complainant has covered all the disputed domain names within a single complaint, which is permissible.
The Complainant submits that the companies of Biotherm, and Lancôme Parfums Beauté & Cie are subsidiaries of L’Oréal. The Complainant submits that L’Oréal is the first cosmetics group worldwide. Biotherm is specialized in the conception and manufacture of skincare products and Lancôme Parfums Beauté & Cie is internationally known for its perfumes and cosmetics. The Complainant submits that Lancôme Parfums Beauté & Cie is the number 1 brand in the women’s selective cosmetic market.
The Complainant further submits that it owns several trademark registrations for the marks ‘L’ORÉAL’, ‘BIOTHERM’ and ‘LANCÔME’. The Complainant specifically submits that it owns trademark registrations for the said marks throughout the world including in China and that the same are in use.
The Complainant submits that the Respondent has no prior right or legitimate interest in the domain names and that the Respondent is not commonly known by the disputed domain names. The Complainant states that the Respondent is not affiliated with the Complainant. Furthermore, the Respondent is neither authorized nor licensed to use the aforementioned trademarks or to seek registration of any domain name incorporating the said trademarks.
The Complainant has provided the Panel with recent WIPO panel decisions (WIPO DTM2014-0002 and DTM2014-0001) wherein the Complainant’s trademarks ‘L’ORÉAL’, ‘BIOTHERM’ and ‘LANCÔME’ have been recognised and protected. Further, the Complainant states that it is implausible that the Respondent was unaware of the Complainant when he registered the disputed domain names. It is submitted that the Complainant is well known throughout the world, including in China. Furthermore, the Complainant’s trademarks are registered in the TMCH prior to the Respondent’s domain names being registered. Bad Faith is pleaded on the ground that the Respondent registered the domain names despite having received notification that the domain names matched trademarks registered with the TMCH.
The Complainant further submits that a quick search on ‘L’ORÉAL’, ‘BIOTHERM’ and ‘LANCÔME’ would have revealed to the Respondent the existence of the Complainants and its trademarks. The Complainant alleges that the Respondent’s failure to do so is a contributory factor to his bad faith. This is further compounded by the fact that the Complainant sent a cease and desist notice to the Respondent requesting the transfer of the domain names to the Complainant. The Respondent did not respond despite reminders. The Complainant states that the domain names are currently inactive and the Respondent has registered the three domain names to either prevent the Complainant from reflecting its trademarks or in order to attempt to sell them to the Complainant.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires the Complainant to establish a prima facie case, proven by clear and convincing evidence, for each of the following three elements in order to obtain an order for suspension of the domain name.
“1.2.6.1. that the registered domain name is identical or confusingly similar to a word mark: (i) for which the Complainant holds a valid national or regional registration and this is in current use; or (ii) that has been validated through court proceedings; or (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
a. Use can be shown by demonstrating the evidence of use – which can be a declaration and one specimen of current use in commerce
- Was submitted to, and validated by, the Trademark Clearinghouse.
b. Proof of use may also be submitted directly with the URS complaint
And
1.2.6.2 that the Registrant has no legitimate right or interest to the domain name; and
1.2.6.3 that the domain was registered and is being used in bad faith.”
The three elements are addressed by the Panel below:
1. Identical or Confusingly Similar:
The Complainant has established that it owns several registrations for its trademarks ‘L’ORÉAL’, ‘BIOTHERM’ and ‘LANCÔME’ and uses the same internationally. The registrations of the Complainant’s trade marks in different trade mark offices date back to many decades. Some of the registrations are as follows: -
|
S.No |
Trademark |
Registration No. |
Date of Registration |
|
1. |
BIOTHERM |
1435763 |
17th November, 1987 |
|
2. |
LANCÔME |
76096 |
7th October, 1977 |
|
3. |
L’ORÉAL |
0661746 |
13th May, 1958 |
Further, the Complainant has provided WIPO Panel Decisions (WIPO DTM2014-0002 and DTM2014-0001) which have recognised and protected the Complainant’s registered trademarks ‘L’ORÉAL’, ‘BIOTHERM’ and ‘LANCÔME’. These decisions have been perused by the Panelist. The Panel agrees that the Complainant has established that the aforesaid trademarks are well known and are distinctive of the Complainant’s business. The trademarks ‘L’ORÉAL’, ‘BIOTHERM’ and ‘LANCÔME’ are invented marks and are therefore entitled to the highest degree of protection.
The Respondent has registered the following domain names –
<biotherm.商城>
<lancome.商城>
<loreal.商城>
The disputed domain names fully incorporate the Complainant’s trademarks which is found to sufficiently establish identity/confusing similarity. The extension ‘商城’ translates into ‘mall’ which refers to a distribution channel. Thus, the Panel agrees with the Complainant that the extension of ‘.商城’ does not sufficiently distinguish the disputed domain name from the Complainant’s registered trademarks. In fact the registering of the domain name with the `.商城’ extension adds to confusion as to affiliation and sponsorship between the complainant and the respondent. The Complainant asserts, and the Panel agrees, that the domain names <biotherm.商城><lancome.商城><loreal.商城> are identity/confusingly similar to the Complainant’s registered trademarks.
2. No Rights or Legitimate Interests:
The Complainant has several trademark registrations for the marks ‘L’ORÉAL, BIOTHERM and LANCÔME’. Some of the Complainant’s earliest registrations have been since 1958. The Complainant has also been using the trademarks ‘L’ORÉAL’, ‘BIOTHERM’ and ‘LANCÔME’ for a long time. Furthermore, the Complainant has provided WIPO Panel decisions that have given judicial strength to the registered trademarks of the Complainant.
In the present matter, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Complainant has not licensed or authorized the Respondent to use its trademarks ‘L’ORÉAL’, ‘BIOTHERM’ and ‘LANCÔME’ in the disputed domain names, nor is there any evidence that the Respondent is commonly known by the disputed domain names. Furthermore, there is no evidence on record that would permit the Panel to consider that the Respondent has used or is undertaking preparations to use the disputed domain names in connection with a bona fide offering of goods or services or in connection with a legitimate noncommercial or fair use. Though the websites are currently inactive, there is a possibility of the Respondent misusing the domain names in the future, to the detriment of the Complainant.
As the Respondent has not filed a Response, the Respondent has not proved its rights or legitimate interests in the trademark. The Complainant has prima facie proved that the Respondent has no right or legitimate interest in the domain name.
3. Domain is Registered and Used in Bad Faith:
The Respondent registered the domain names <biotherm.商城><lancome.商城><loreal.商城>. URS 1.2.6.3 elaborates on the circumstances that entail bad faith registration and use, which is reproduced below:
“1.2.6.3. ….
a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that the Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s website 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 Registrant’s website or location or of a product or service on that website or location.”
Pursuant to the URS procedure, the Complainant has to establish that the Respondent registered and used the disputed domain name in bad faith to establish that the disputed domain names have been registered and used in bad faith. For the following reasons, the Panel considers that the Complainant has established both that the Respondent has registered and used the disputed domain names in bad faith.
The Panel is satisfied that the Complainant’s trademarks ‘L’ORÉAL’, ‘BIOTHERM’ and ‘LANCÔME’ are widely known in the world, including in China where the Respondent is apparently located. As evidenced by the WIPO Panel decisions the registration and use of the Complainant’s trademarks significantly pre-date the registration of the disputed domain name. It is clear to the Panel that the Respondent was aware of and intentionally registered the dispute domain name incorporating the Complainant’s marks. The websites of the Respondent are parked and currently inactive. The Complainant asserts and the Panel agrees that it is likely that the Respondent registered the three domain names to prevent the Complainant from reflecting its trademarks or in order to sell the domain names to the Complainant.
Further, it is established that despite receiving a notification from the Trademark Clearinghouse and a cease and desist letter from the Complainant the Respondent parked websites reproducing the Complainant’s trademarks ‘L’ORÉAL’, ‘BIOTHERM’ and ‘LANCÔME’ in entirety. The Complainant has referred to the WIPO Panel decision (WIPO D2000-0003), ‘Telstra Corporation Limited v. Nuclear Marshmallows’ in which a fine distinction has been made between use of a domain name in bad faith and a positive action in bad faith with respect to a domain name. The Panel observes as under:-
“the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name "being used in bad faith" is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”
Therefore, despite that the Respondent’s websites are currently inactive, passive inactivity with respect to a domain name is considered to be in bad faith. Thus, it is prima facie established that the Respondent’s registration and use of the impugned domain name by the Respondent is in bad faith.
As the Respondent has defaulted, and proof of service is evident, the Examiner has based the above findings on prima facie evidence and conclusions as provided by the Complainant.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.
<biotherm.商城>
<lancome.商城>
<loreal.商城>
Prathiba M. Singh, Examiner
Dated: January 07, 2015
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