L'Oréal v Faizan khan, c

WIPO Case No. D2025-0187

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

L’Oréal v. Faizan khan, c

Case No. D2025-0187

1. The Parties

Complainant is L’Oréal, France, represented by Dreyfus & associés, France.

Respondent is Faizan khan, c, Pakistan.

2. The Domain Name and Registrar

The disputed domain name <maybellines.online> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2025. On January 17, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 21, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to Complainant on January 22, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 24, 2025.

The Center verified that the Complaint together with 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 27, 2025. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2025. Respondent did not submit any response. Accordingly, the

Center notified Respondent’s default on February 17, 2025.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on February 19, 2025. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

page 2

Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

Complainant is a multinational enterprise registered in Paris with headquarters in Clichy, France.1 It is
specialized in the field of cosmetics and beauty and is the first cosmetics group worldwide, with 36 brands,
employing approximately 86,000 employees, and doing business in 150 countries. Complainant’s
MAYBELLINE NEW YORK is a leading international cosmetics brand, available in over 120 countries.
Complainant markets its MAYBELLINE cosmetic products, inter alia, at the domain name <maybelline.com>,
initially registered on October 20, 1998. Complainant undertakes extensive advertising and promotion of the
MAYBELLINE brand through a variety of media outlets.

Complainant is the owner of registrations for the trademark MAYBELLINE and MAYBELLINE NEW YORK in numerous jurisdictions. The word MAYBELLINE is the subject of registration as an international trademark under the Madrid System, including registration number 959892, registration dated January 9, 2008, in international classes (“ICs”) 3 and 5, covering, inter alia, mascara, eyebrow pencils and cosmetics; and pharmaceutical and veterinary products, as further specified (designating a number of countries), and; registration number 1681807, registration dated May 31, 2022, ICs 3, 9, 35 and 41, covering cosmetics, skin and haircare products; downloadable virtual products, including computer software programs for purposes such as ordering products; retail services for virtual products, and; virtual game services, all as further specified (designating China). The word and device trademark MAYBELLINE NEW YORK is registered by Complainant as a European Union Trade Mark (“EUTM”) at the European Union Intellectual Property Office (“EUIPO”), registration number 000543900, registration dated March 31, 1999, in IC 3.

According to the Registrar’s verification, Respondent is the owner of registration of the disputed domain name. According to WhoIs data, the disputed domain name was registered on October 8, 2024. There is no indication on the record of this proceeding that any party other than Respondent has owned or controlled the disputed domain name since its initial creation date.

Respondent has used the disputed domain name to direct Internet users to a website headed with the term MAYBELLINES. This website displays models who illustrate makeup applications, and it purports to offer for online sale a variety of products branded with Complainant’s MAYBELLINE trademark. Complainant asserts that these products are likely to be counterfeit, and that they are in direct competition with Complainant’s products. There is no evident disclaimer of association between Complainant and Respondent on Respondent’s website.

There is no affiliation, commercial or otherwise, between Complainant and Respondent.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, Complainant contends that it owns rights in the trademark MAYBELLINE and that the disputed domain name is confusingly similar to that trademark.2

1https://en.wikipedia.org/wiki/L%27Or%C3%A9al, Panel visit of March 1, 2025.

2Complainant does not specifically argue that the disputed domain name is confusingly similar to MAYBELLINE NEW YORK.

page 3

Complainant alleges that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent is not affiliated with Complainant in any way, nor has Complainant authorized Respondent to use and register its trademark, or any domain name incorporating that trademark; (2) Respondent may not claim any prior rights or legitimate interests in the disputed domain name as Complainant’s registration of its trademark preceded Respondent’s use; (3) Respondent is not commonly known by the disputed domain name or Complainant’s trademark; (4) Respondent cannot assert that before any notice of this dispute it was using or making demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services; (5) Respondent is misleadingly suggesting that Complainant is associated with its website; (6) Respondent is not making legitimate noncommercial or fair use of the disputed domain name; (7) Respondent’s likely use of the disputed domain name to sell fake products may injure user health, and; (8) the typographical similarity between Complainant’s trademark and Respondent’s disputed domain name may result in inadvertent diversion of Internet users to Respondent’s website.

Complainant argues that Respondent registered and is using the disputed domain name in bad faith because: (1) it is implausible that Respondent did not know of Complainant’s trademark when it registered the disputed domain name; (2) the disputed domain name is obviously connected with Complainant’s well- known trademark, suggesting opportunistic bad faith; (3) Respondent has no reasonable bona fide or legitimate use of the disputed domain name; (4) the confusing similarity between Respondent’s disputed domain name and Complainant’s trademark will inevitably result in diversion of Internet traffic from Complainant to Respondent; (5) Respondent has deliberately created a website designed to create confusion as to Complainant acting as the source of Respondent’s products; (6) Respondent is acting for commercial gain.

Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its record of registration. Courier delivery to the physical address provided by Respondent in its record of registration was unsuccessful based on an inaccurate address furnished by Respondent. There is limited indication of difficulties in email transmission to Respondent. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a
finding that a respondent has engaged in abusive domain name registration and use and to obtain relief.

These elements are that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which

complainant has rights;

(ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

page 4

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or
threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between
Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on

Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms, here an appended “s”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

Respondent’s use of the top-level domain “.online” is not material for purposes of determining confusing similarity.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on Complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of

Respondent. As such, where Complainant, as here, makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on Complainant). If Respondent, as here, fails to come forward with such relevant evidence, Complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

Respondent’s registration and use of the disputed domain name to direct Internet users to a website headed with a term nearly identical to Complainant’s trademark, and offering unauthorized and presumptively (unrebutted) counterfeit goods, does not constitute bona fide preparations for use, or use, of Complainant’s trademark, and Respondent is not engaged in legitimate noncommercial or fair use of Complainant’s trademark.

Panels have held that the use of a domain name for illegitimate and illegal activity, as claimed here the sale of presumptively (unrebutted) counterfeit goods and impersonation/passing off, can never confer rights or legitimate interests on Respondent. WIPO Overview 3.0, section 2.13.1.

The Panel finds the second element of the Policy has been established.

page 5

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that Respondent manifestly targeted Complainant and its distinctive
trademark, including by creating a website designed to appear as operated by or with the consent of
Complainant and offering goods that replicate Complainant’s branded products without authorization. In light
of Respondent’s manifest efforts to confuse Internet users regarding the affiliation between Complainant
(and its products) and Respondent (and its website identified by the disputed domain name), Respondent
could not have been unaware of Complainant and its trademark when it registered and used the disputed
domain name.

Respondent for commercial gain is using the disputed domain name that is confusingly similar to Complainant’s trademark to create a likelihood of confusion for Internet users regarding Complainant acting as the source, sponsor, affiliate or endorser Respondent’s website. Such conduct and the associated offering and sale of presumptively (unrebutted) counterfeit products demonstrates bad faith within the meaning of paragraph 4(b)(iv) of the Policy. Respondent has made no effort to justify its conduct.

Panels have held that the use of a domain name for illegitimate and illegal activity, as claimed here the sale use of the disputed domain name constitutes bad faith under the Policy.

of presumptively (unrebutted) counterfeit goods and impersonation/passing off, constitutes bad faith.

The Panel finds that Complainant has established the third element 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 disputed domain name <maybellines.online> be transferred to Complainant.

/Frederick M. Abbott/
Frederick M. Abbott
Sole Panelist
Date: March 4, 2025