Complainant is L'Oréal of Paris, France, represented by Dreyfus & associés, France.
Respondent is Haya Manami of Nagoya, Japan. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with N LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 1, 2015. On June 1, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 2, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceeding commenced on June 4, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 25, 2015.
The Center appointed John R. Keys, Jr. as the sole panelist in this matter on July 14, 2015. 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
Complainant, L'Oréal, is a French industrial group founded in 1909, now present in 130 countries, specializing in cosmetics and beauty products, such as hair color, styling aids, cleansers, and fragrances, which it markets using over 500 trademarks, including 28 international trademarks.
Since 1964, the brand name Kerastase has represented Complainant's premium, luxury hair care products, which are intended for sale by hair care professionals in prestigious hair salons globally. Complainant operates in Japan through a subsidiary, L'Oréal Nihon.
Complainant owns a number of trademarks for KERASTASE, including an international registration, No. 522548, since April 1, 1988, and renewed, and several Japanese trademark registrations: No. 904318 (June 28, 1971) in Japanese Class 3; No. 2320085 (July 31, 1991) in Japanese Class 21; and No. 3123362 (February 29, 1996) in Class 42.
The Domain Name was registered on January 20, 2015. The Domain Name directs the user to an inactive page.
Complainant sent a cease-and-desist letter to Respondent but received no response, despite several reminders. 5. Parties' Contentions A. Complainant
Complainant contends that the Domain Name is identical or confusingly similar to its KERASTASE trademark in which it has rights. The Domain Name incorporates Complainant's very well-known trademark in its entirety. The public would therefore assume the Domain Name was owned by or related to Complainant.
The Domain Name adds to Complainant's trademark the letters "jp" which is a common abbreviation or code for "Japan". It is thus a geographic term that does not sufficiently distinguish the Domain Name from the trademark and may actually suggest that the Domain Name is meant to indicate a website developed by Complainant for the Japanese market and Japanese consumers.
The generic Top-Level Domain ("gTLD") suffix ".net" should be disregarded for purposes of determining likelihood of confusion.
Complainant next contends that Respondent has no rights or legitimate interests in the Domain Name. Respondent has not shown use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services, nor could it reasonably pretend to do so given the fame of Complainant's trademark.
Respondent is not commonly known by the name "Kerastase", is not affiliated in any way with Complainant, nor is he authorized or licensed to use the KERASTASE trademark or to register a domain name incorporating the trademark.
Complainant further cites the fact that Respondent did not come forward to defend himself or his Domain Name in response to Complainant's cease and desist letter as indicative that Respondent did not believe he had rights or legitimate interests in the Domain Name.
Complainant further contends that Respondent registered and used the Domain Name in bad faith. Complainant cites that Complainant's trademark is so well-known throughout the world, including Japan, that it is highly unlikely that Respondent did not know of Complainant's trademark and of Complainant's proprietary rights in its trademark. Such knowing use of a well-known trademark by someone not connected with the trademark suggests opportunistic bad faith and bad faith registration of the Domain Name.
Complainant asserts also that in registering a domain name, the registrant represents to the Registrar that registration will not infringe the rights of any third party, that this creates a duty on the part of the registrant to verify the truth of this representation, and that a trademark search or even a Google search would have revealed Complainant's interest in the KERASTASE trademark. Where Respondent knew or should have known of Complainant's trademark rights at the time of registration, registration of the Domain Name was in bad faith.
Complainant cites several factors indicating that Respondent uses the Domain Name in bad faith, including the following:
(i) No actual or contemplated bona fide or legitimate use of the Domain Name could reasonably be claimed;
(ii) Passive holding of the Domain Name does not preclude a finding of bad faith; all circumstances of Respondent's behavior must be considered;
(iii) Complainant's trademark had a strong reputation and was widely known;
(iv) Respondent has provided no evidence of actual or contemplated good faith use;
(v) Respondent has taken steps to conceal its true identity;
(vi) Respondent has provided false contact details;
(vii) Respondent likely registered the Domain Name to prevent Complainant from using its trademark in the Domain Name; and
(viii) Respondent failed to respond to Complainant's cease-and-desist letter. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Because Respondent did not respond to the Complaint, the Panel considers whether Respondent was given adequate notice of the proceeding. The evidence indicates that the Center sent the Complaint in electronic form and the Written Notice in hard copy by courier to Respondent at the addresses provided by the Registrar and in the Amended Complaint. The Panel concludes that the Center discharged its responsibility under the Rules to notify Respondent of the Complaint and administrative proceeding.
Where there is no response to the complaint, the panel shall decide the dispute based upon the complaint. Rules, paragraphs 5(e) and 14(a). The panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any rules and principles of law the panel deems applicable. Rules, paragraph 15(a). Under Rules, paragraph 14(b), respondent's failure to answer entitles the panel to "draw such inferences therefrom as it considers appropriate".
Under the Policy, paragraph 4(a), Complainant must prove each of three elements of its case in order to obtain the requested relief:
(i) the 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 Domain Name; and
(iii) Respondent registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar
Complainant has rights in its KERASTASE trademark by reason of its international and national registrations of the mark and its long-term use of the mark in commerce in many countries, including Japan where Respondent apparently resides.
The fact that the Domain Name incorporates Complainant's trademark in its entirety is typically sufficient to establish that the Domain Name is confusingly similar to Complainant's trademark. See, L'Oreal v. Ana Ring,WIPO Case No. D2013-1826; L'Oreal v. Tina Smith,WIPO Case No. D2013-0820; Swarovski Aktiendessellschaft v. mei xudong,WIPO Case No. D2013-0150; RapidShare AG, Christian Schmid v. InvisibleR, Domain Admin,WIPO Case No. D2010-1059. The addition of the prefix "jp", an abbreviation for Japan and the country code TopLevel Domain for Japan, is essentially a geographic designator that does not distinguish the Domain Name, does not negate confusing similarity and, in this case, tends to add to the confusion by suggesting, falsely, that the Domain Name is in fact related to Complainant's business activities and products in Japan. See, L'Oreal v. Tina Smith,WIPO Case No. D2012-0384; L'Oreal, Laboratoire Garnier & Compagnie v. Australian Internet Investments Pty Ltd.,WIPO Case No. D2008-1640; L'Oreal v. Liao Quanyong,WIPO Case No. D2007-1552; Accor v. Serdar Ceylan,WIPO Case No. D2012-2231. The addition of the gLTD ".net" is typically irrelevant for purposes of determining confusing similarity.
Complainant has established the confusing similarity of the Domain Name to Complainant's trademark, the first element of the Policy B. Rights or Legitimate Interests
Complainant bears the overall burden of proving that Respondent has no rights or legitimate interests in the Domain Name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). However, where Complainant makes a prima facie case that Respondent does not possess such rights or legitimate interests, the burden of production shifts to Respondent to demonstrate that he does in fact possess such rights or legitimate interests. Id. Where, as here, Respondent fails to come forward with allegations or evidence to demonstrate that he possesses such rights or legitimate interests, Complainant's prima facie case will usually be found sufficient to meet Complainant's overall burden of proof.
Paragraph 4(c) of the Policy provides that Respondent may demonstrate rights or legitimate interests in the Domain Name by showing one of the following circumstances:
(i) before any notice to Respondent of the dispute, Respondent's use of, or 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) Respondent has been commonly known by the Domain Name, even if Respondent has acquired no trademark or service mark rights; or
(iii) 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.
Complainant can make out a prima facie case by negating such circumstances, see Paris Hilton v. Deepak Kumar,WIPO Case No. D2010-1364, which Complainant has done in this case.
The Domain Name points to an inactive page. Consequently, Respondent is not using the Domain Name in connection with a bona fide offering of goods or services, and, further, has not come forward to demonstrate preparations to use the Domain Name in connection with a bona fide offering of goods or services. Policy, paragraph 4(c)(i). Similarly, Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Policy, paragraph 4(c)(iii).
There is nothing in the record suggesting that Respondent has ever been commonly known by the Domain Name. Complainant, moreover, has not granted Respondent authority or license to use Complainant's name or trademark in the Domain Name. Policy, paragraph 4(c)(ii).
Respondent has not come forward with facts or arguments to rebut Complainant's prima facie case. The prima facie case is supported on and consistent with the record, and the Panel accepts it. Complainant has established the second element of the Policy. C. Registered and Used in Bad Faith
Complainant must show that the Domain Name was registered and is being used in bad faith.
There is sufficient evidence of record to establish that Complainant's KERASTASE trademark is well-known internationally in the field of hair care products, and prior UDRP panels have so found. L'Oreal v. Privacy Protection Service, Inc. d/b/a Privacy P / Kadir Tekdogan,WIPO Case No. D2014-1049; L'Oreal v. Arfah Husaifah,WIPO Case No. D2012-0144; L'Oreal v. VOGUE,WIPO Case No. D2012-0144; L'Oreal, Laboratoire Garnier et Compagnie, Lancome Parfums et Baute et Compagnie v. Zhao Ke, Zeng Wei, Zhu Tao, Yang Yong, Ma Yun, Ye Genrong, Ye Li, ChinaDNS Inc., DomainJet, Inc., Hao Domain Services,WIPO Case No. D2011-1608; L'Oreal v. Ana Ring,WIPO Case No. D2013-1826; L'Oreal v. Tina Smith,WIPO Case No. D2013-0820. With a well-known, and in this case widely registered, trademark, Respondent was highly likely to have been fully aware of the trademark and of Complainant's rights in that trademark. Respondent would not otherwise have chosen to register a domain name based obviously on that mark. Respondent's intentional use of that mark in its entirety in registering the Domain Name is evidence of bad faith registration. See Lego Juris A/S v. Reiner Stotte,WIPO Case No. D2010-0494; Playboy Enterprises International, Inc. v. Pitts,WIPO Case No. D2006-0675; Ford Motor Co. v. Knuhtsen,WIPO Case No. DBIZ2002-00183.
It is true that the Domain Name resolves to an inactive webpage. However, such passive holding of the Domain Name may still constitute bad faith use depending upon the attendant circumstances. WIPO Overview 2.0, paragraph 3.2. See Lego Juris A/S v. Reiner Stotte, supra ; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Here, the Panel considers the following factors to be indicative of bad faith use of the Domain Name:
(i) Complainant's trademark was and is well-known in the field of hair care products based on long term use, promotion, Internet presence and sales around the world, including Japan;
(ii) Complainant's trademark is internationally and nationally registered, including in Japan;
(iii) Respondent did not reply to Complainant's cease-and-desist communications;
(iv) Respondent did not respond to the Complaint in this proceeding to show actual use or demonstrable preparations for use of the Domain Name in connection with a bona fide offering of goods or services;
(v) Respondent has apparently provided inaccurate contact information to the Registrar thus obstructing Complainant's ability to try to resolve the dispute short of this proceeding;
(vi) "Taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the [Domain Name] by Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of Complainant's rights under trademark law." Telstra Corporation Limited v. Nuclear Marshmallows, supra.
The Panel considers the evidence of record sufficient to establish that Respondent both registered and is using the Domain Name in bad faith in this case. Complainant, therefore, has established the third and final 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 Domain Name be transferred to Complainant.
John R. Keys, Jr.
Sole Panelist
Date: July 28, 2015
Full & Egal Universal Law Academy