L'Oréal v Hong Li, Hong Li

WIPO Case No. D2025-0911

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION
L’Oréal v. Hong Li, Hong Li

Case No. D2025-0911

1. The Parties

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

The Respondent is Hong Li, Hong Li, China.

2. The Domain Name and Registrar

The disputed domain name <maciemugler.shop> is registered with PDR Ltd. d/b/a

PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2025. connection with the disputed domain name. On March 7, 2025, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 the Respondent of the
Complaint, and the proceedings commenced on March 10, 2025. In accordance with the Rules, paragraph
5, the due date for Response was March 30, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on March 31, 2025.

The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on April 8, 2025. 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

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4. Factual Background

The Complainant is a French industrial group specialized in the field of cosmetics and beauty. It has a portfolio of 37 brands including MUGLER, under which it markets fashion clothing and perfumes worldwide, including in China. It has registered the domain name <mugler.com> to promote this brand.

The Complainant is the proprietor of the following trademarks:

- International trademark No. 1086906 for MUGLER (word mark), registered on July 4, 2011, for goods in classes 3, 9, 14, 18, and 25;

- International trademark No. 1683176 for MUGLER (word mark), registered on June 3, 2022, for goods and services in classes 3, 9, 14, 18, 25, 35, and 41;

- Chinese trademark No. 13826469 for MUGLER (word mark), registered on March 21, 2015 for goods

in class 26.

The disputed domain name was registered on December 4, 2024. At the time of the Complaint and of this browser tab states, in Italian, “Macie Mugler – DSQUARED2® IT Official Online Store.”

The record contains evidence that the Complainant sent cease-and-desist notices to the Registrar and hosting provider on December 11, 13 and 19, 2024. On December 20, 2024, the hosting provider responded that it was unable to deactivate the site.

5. Parties’ Contentions

A. Complainant

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

Notably, the Complainant contends that it has a portfolio of 37 fashion and cosmetics brands, employs 86,000 employees, and is present in 150 countries, including China, where it recently launched a “mugler” store. The disputed domain name reflects the Complainant’s MUGLER mark together with the term “macie”, which does not distinguish it. Previous UDRP panels have found that the MUGLER mark is well-known and the Complainant states that it has a worldwide reputation. The Respondent has no rights in the MUGLER mark and is not associated with the Complainant. The disputed domain name resolves to a website purporting to sell high fashion clothing under the “DSQUARED2” mark. These goods are being sold at suspiciously low prices and without visible authorization from the right holder; therefore, they are likely counterfeit.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the UDRP requires the Complainant to make out all three of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii)      The Respondent has registered and is using the disputed domain name in bad faith.

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Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

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 the 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.

The 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 Complainant’s MUGLER 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, “macie”) may bear on assessment of the second and third elements, the Panel finds the addition of such a 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.

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

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the 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.

There is no evidence that the Respondent is commonly known by the disputed domain name, nor that there are any circumstances or activities that would establish the Respondent’s rights therein. The disputed domain name consists of the Complainant’s well-established MUGLER mark (and as such is similar to the Complainant’s own domain name <mugler.com>), with the prefix of “macie”, a term that does not appear to have any particular meaning in this context. The Panel finds that such composition indicates targeting of the Complainant.

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

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 the Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark. The Complainant’s rights in its MUGLER mark predate the registration of the disputed domain name by more than a decade. The disputed domain name contains the Complainant’s well-established MUGLER trademark and, together with the use to which the disputed domain name has been put, clearly implies an intention to benefit from the reputation of the Complainant’s mark.

The disputed domain name redirects Internet users to a website purporting to sell the goods of an entirely different brand, which appear to be offered without the visible authorization of that right-holder. In light of the finding that the Respondent has no rights in the disputed domain name, having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel finds that the 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 <maciemugler.shop> be transferred to the Complainant.

/Ingrīda Kariņa-Bērziņa /

Ingrīda Kariņa-Bērziņa

Sole Panelist
Date: April 23, 2025