Westmore · UDRP DecisionDarkandlovely.com
The Panel ordered transfer of <darkandlovely.com> to L’Oréal. It found the domain confusingly similar to the DARK & LOVELY mark because replacing the ampersand with the word “and” did not avoid similarity. The Respondent lacked rights or legitimate interests because the domain resolved to a parking page containing commercial links related to hair care products, including competing products. That pay-per-click use was also found to constitute bad-faith registration and use under Policy paragraph 4(b)(iv).
The timeline behind darkandlovely.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind darkandlovely.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The decision is a clear example of how panels assess a domain that converts an ampersand-containing mark into a registrable textual equivalent. It also illustrates the combined effect of trademark-targeted pay-per-click links: the same use defeated any claim to a legitimate interest and supported bad faith under paragraph 4(b)(iv).
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION L’Oréal v. PPA Media Services, Ryan G Foo / Fundacion Private Whois, Domain Administrator Case No. D2013-2230 1. The Parties The Complainant is L’Oréal of Paris, France, represented by Dreyfus & associés, France. The Respondent is PPA Media Services, Ryan G Foo of Santiago, Chile / Fundacion Private Whois, Domain Administrator, Panama, Panama. 2. The Domain Name and Registrar The disputed domain name <darkandlovely.com> (the “Domain Name”) is registered with Internet.bs Corp. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2013. On December 23, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 30, 2013 a reminder email was sent to the Registrar. On December 30, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 31, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 3, 2014. The Center verified that the amended 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 30, 2014. The Center appointed Dana Haviland as the sole panelist in this matter on February 26, 2014. 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 According to the undisputed allegations of the Complaint, the Complainant L’Oréal is a well-known global cosmetics company which has been manufacturing and marketing luxury and consumer cosmetics for over a century. The Complainant employs over 72,000 persons and has a business presence in 130 countries. In 2000, the Complainant acquired the Dark & Lovely brand of hair care products and associated trademarks (the “DARK & LOVELY Mark”), pursuant to Complainant’s acquisition of Carson, Inc., a company described in the Complaint as “the leading manufacturer and marketer of hair and skin products formulated specially for people of color”. According to the Complaint, the DARK & LOVELY Mark has been used in advertising these products internationally for over 40 years and “enjoys a very large success on a global basis.” The Complainant has provided evidence that it is the owner of registered trademarks for its DARK & LOVELY Mark, including a European Community Trademark Registration No. 001212158 DARK & LOVELY, filed on June 15, 1999, registered on January 16, 2011, and duly renewed for goods in Class 3; and a French Trademark Registration No. 92 427 682 DARK & LOVELY, filed on July 22, 1992 and duly renewed for goods in Class 3. The Domain Name was registered on September 5, 2001. 5. Parties’ Contentions A. Complainant The Complainant asserts that the Domain Name is identical or confusingly similar to trademarks in which it has prior registered rights, that the Respondent has no rights or legitimate interests in the Domain Name, and that the Respondent registered and used the Domain Name in bad faith. The Complainant requests transfer of the Domain Name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under the Policy, paragraph 4(a), in order to prevail, a complainant must prove the following three elements of a claim for transfer or cancellation of a respondent’s domain name: (i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) that the respondent has no rights or legitimate interests in the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Domain Name incorporates the Complainant’s DARK & LOVELY Mark in its entirety, adding only the “.com” generic Top-Level Domain (“gTLD”) suffix, and changing only the ampersand in Complainant’s Mark to the word “and”. The substitution of the word “and” for the ampersand in the Mark does not negate the confusing similarity of the Domain Name to the Complainant’s Mark, because the ampersand symbol means “and”. In Cox & Kings Ltd. v. Mr. Manoj, WIPO Case No. D2011-0349 , the UDRP panel found that a domain name’s use of the complainant’s trademark with the substitution of the word “and” for the ampersand in the trademark was confusingly similar: “The Panel notes that the trademark COX & KINGS has the ampersand symbol, whereas the disputed domain name uses the word “and” in place of the ampersand symbol. Use of the word “and” in place of the ampersand symbol does not affect confusing similarity, as the word “and” is a mere substitution for the ampersand symbol. See Villeroy & Boch AGVi v. Whois Data Shield/Hong Kong Names LLC, WIPO Case No. D2008-1300 , where the ampersand symbol was replaced with the word “and” in the domain name <villeroyandboch.com>, but did not affect the finding of confusingly similar to the trademark VILLEROY & BOCH.” Other UDRP cases concur and note that the ampersand symbol may not be used in a domain name. See Wright & Lato, Inc v. Michael L. Epstein, WIPO Case No. D2000-0621 (“Respondent’s domain name wrightandlato.com is legally identical to Complainant’s mark WRIGHT & LATO….. As Complainant notes, the ampersand symbol may not comprise part of a domain name.”); Fortnum & Mason PLC v. Corporate Business Sales Limited, WIPO Case No. D2000-1207 (It is prima facie obvious that the Domain Name is virtually identical and/or confusingly similar to the Complainant’s trade marks. It is not possible to register an ampersand as part of a domain name and so “fortnumandmason” is the closest equivalent to FORTNUM & MASON possible as part of a domain name.”). It is well established that the inclusion of the gTLD, here “.com,” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to the complainant’s trademark. See Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 ; Iconcard S.p.A. v. Linecom, WIPO Case No. D2005-1115 ; L’Oréal v. Tina Smith, WIPO Case No. D2013-0820 . The Panel finds that the Domain Name is confusingly similar to the Complainant’s DARK & LOVELY Mark, in which the Complainant has prior rights, and that the Complainant has thus established the first element of its claim, under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides that a respondent may establish rights or legitimate interests in a domain name by proof of any of the following non-exclusive list of circumstances: (i) before any notice to the respondent of the dispute, the respondent used, or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has not acquired trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Complainant asserts that the Respondent is not affiliated with the Complainant in any way, has not been authorized or licensed to use Complainant’s trademark in a domain name or otherwise, is not commonly known by the name “Dark & Lovely”, and has not used, or made demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods and services. In this regard, the Complainant has alleged, and submitted evidence to show, that the Domain Name is being used as a parking page displaying commercial links related to hair care products and services, including both the Complainant’s products and those of its competitors. It thus appears that the Respondent has registered and is using the Domain Name incorporating the Complainant’s DARK & LOVELY Mark to attract Internet users for commercial gain from the sponsored links. This commercial use of the Domain Name by the Respondent to offer goods and services competing with those of the Complainant does not demonstrate any right or legitimate interest in the Domain Name. The Respondent’s use of the Complainant’s Mark for a website displaying click-through links to the Complainant's competitors does not constitute either a bona fide offering of goods or services, or a legitimate noncommercial or fair use, within the meaning of paragraphs 4(c)(i) and 4(c)(iii) of the Policy. See Barclays Bank PLC v. Rico Martinez , WIPO Case No. D2010-1987 ; Swarovski Aktiengesellschaft v. Transure Enterprise Ltd., WIPO Case No. D2009-1638 ; Columbia Insurance Company, Benjamin Moore v. Whois Data Shield and St Kitts Registry, WIPO Case No. D2007-0741 ; Unilever N.V. v. Kentech, Inc ., WIPO Case No. D2005-1021 . Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the 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.” See the WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. The Respondent has not submitted any response or evidence to rebut the allegations of the Complaint. For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name, and that the Complainant has satisfied the second element of its claim, in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of a domain name in bad faith for the purpose of paragraph 4(a)(iii) of the Policy: (i) circumstances indicating that the 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark 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 (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. The Respondent’s use of the Domain Name for a pay-per-click website diverting Internet users to sponsored links for products and services offered by the Complainant’s competitors, in order to generate income for the Respondent, constitutes evidence of bad faith registration and use of the Domain Name under paragraph 4(b)(iv) of the Policy. See Barclays Bank PLC v. Rico Martinez , supra ; Swarovski Aktiengesellschaft v. Transure Enterprise Ltd., supra ; Asian World of Martial Arts Inc. v. Texas International Property Associates , WIPO Case No. D2007-1415 . In conclusion, the Panel finds that the Complainant has established the Respondent’s bad faith registration and use of the Domain Name under paragraph 4(b)(iv) of the Policy, and that the Complainant has therefore satisfied the third element of its claim under 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 Domain Name <darkandlovely.com> be transferred to the Complainant. Dana Haviland Sole Panelist Date: March 11, 2014
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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