Complainant is L’Oréal of Paris, France, represented by Dreyfus & associés, France.
Respondent is Aghta Shampoos e Produtos para Cabelos – Ltda – ME, Arthur Pablo Boranelli of Sao Paulo, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with 1API GmbH (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2018. On February 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 7, 2018, 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 Respondent of the Complaint, and the proceedings commenced on February 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 13, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 14, 2018.
The Center appointed Timothy D. Casey as the sole panelist in this matter on March 22, 2018. 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 is a French industrial group and one of the world’s largest groups in the cosmetic industry. Complainant operates in over 130 countries, has more than 30 global brands, including KERASTASE and other hair care, hair color, and related products. Complainant has operated under the L’Oréal name and brand since 1964. The KERASTASE products include hair care products sold for consumer and professional use through salons, including in Brazil. KERASTASE products have won a number of beauty magazine awards, including in each of 2014, 2015, 2016 and 2017.
Complainant has a significant presence in the Brazilian market where it has operated since 1994. L’Oréal Brazil is the leading cosmetics company in the country. As of 2013, Complainant had almost USD 1 billion in sales in Brazil, with 95% of the products produced by two factories located in the country, where it employs 2,700 people.
Complainant owns rights in trademark registrations for KERASTASE in a number of countries, including at least International Trademark Registration No. 522548 registered on April 1, 1988 and Brazilian Trademark Registration No. 800080319 registered on July 6, 1982 (the “KERASTASE Trademarks”). Complainant also has a number of domain names that include the KERASTASE Trademarks as part of the domain names.
The disputed domain name was registered on August 17, 2016. Between December 23, 2015 and April 25, 2016, Respondent registered five other domain names including either KERASTASE or L’OREAL as part of the domain name (the “additional domain names”). Some of the additional domain names directed visitors to websites linked to Complainant’s activities and products. Complainant requested the hosting provider on May 20, 2016 to block the redirection of three of the additional domain names, which were suspended and were subsequently not renewed. A fourth additional domain name was also not renewed. The fifth additional domain name was voluntarily transferred to Complainant.
The disputed domain name previously redirected visitors to a parking page with pay-per-click links. The disputed domain name currently resolves to an inactive page. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name, which reproduces KERASTASE in its entirety, is confusingly similar to the KERASTASE Trademarks, and that the addition of the generic Top-Level Domain (“gTLD”) “.link” is irrelevant in terms of differentiating or distinguishing the disputed domain name from the KERASTASE Trademarks. Complainant contends that the public has learned to perceive the goods and services associated with the KERASTASE Trademarks as being those of Complainant and would therefore assume the disputed domain name was owned by or related to Complainant.
Complainant further contends that Respondent is not affiliated with Complainant and has not been authorized or licensed to use the KERASTASE Trademarks, nor does Respondent have any right or legitimate interest in the disputed domain name, which was registered many years after the KERASTASE Trademarks were registered. The similarity between the disputed domain name and the KERASTASE Trademarks, according to Complainant, makes it impossible for Respondent to pretend that the disputed domain name was intended for use in the development of legitimate activities. Complainant further contends that Respondent has not demonstrated use of or preparations to use the disputed domain name in connection with a bona fide offering of goods or services, as evidenced by websites associated with the disputed domain name directing Internet users to a parking page including pay-per-click links, some of them related to hair care and beauty care products and/or services and notably those of Complainant and its competitors, or to an inactive page. Complainant asserts that Respondent’s failure to answer any of Complainant’s letters means it can be assumed that Respondent has no rights or legitimate interest in the disputed domain name. Finally, Complainant notes that Respondent’s use of the additional domain names constitutes proof of Respondent’s illegitimate effort to bait Internet users.
As for evidence of registration in bad faith, Complainant contends that Complainant is well-known throughout the world, that many prior panels have considered the KERASTASE Trademarks to be widely known, and that the disputed domain name and the additional domain names are too obviously connected to the KERASTASE Trademarks. As a result, Complainant asserts there can be no doubt concerning Respondent’s knowledge of Complainant and the KERASTASE Trademarks at the time of registration of the disputed domain name.
With regard to Respondent’s bad faith use of the disputed domain name, Complainant contends that Respondent has no license or permission to use the KERASTASE Trademarks and is making no actual or contemplated bona fide or legitimate use of the disputed domain name. In addition, Complainant notes that the disputed domain name previously routed traffic to a website displaying pay-per-click links to hair care and beauty care products and/or services, including those of Complainant, and that such a diversion of Internet users, which enabled Respondent to profit from association with Complainant and its trademarks, was a use in bad faith. Complainant further contends that even the current passive holding of the disputed domain name does not precluded a bad faith finding, for example at least because it prevents Complainant from using the KERASTASE Trademarks in the same manner. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant’s use of the KERASTASE Trademarks since at least 1982, 34 years prior to registration of the disputed domain name, and Complainant’s registration of the KERASTASE Trademarks in 1982 and 1988, are more than sufficient to establish that Complainant has trademark rights in the KERASTASE Trademarks.
Complainant contends that the disputed domain name incorporates the entirety of the KERASTASE Trademarks and is confusingly similar to the KERASTASE Trademarks. Complainant contends that the addition of the gTLD is not sufficient to change the overall impression of the disputed domain name as being confusingly similar to Complainant’s KERASTASE Trademarks.
The Panel agrees and finds that the disputed domain name is confusingly similar to the KERASTASE Trademarks. B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Respondent does not appear to be commonly known by the disputed domain name. Complainant has not licensed or authorized Respondent to use or register the disputed domain name. The Panel also agrees that operation of a website including pay-for-click links some of them associated with Complainant’s own products and of its competitors, apparently in an effort to obtain click-through revenue, does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Likewise, Respondent’s current use of the disputed domain name in association with an inactive page does nothing to change Respondent’s prior illegitimate usage and does not constitute a legitimate use on its own.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Given the timing of Complainant’s first use and first registration of the KERASTASE Trademarks and Complainant’s use of the KERASTASE Trademarks in association with the noted goods/services, the subsequent timing of the registration of the disputed domain name, and Respondent’s subsequent usage, the Panel finds that Respondent clearly knew of the KERASTASE Trademarks at the time of registration of the disputed domain name. Respondent’s registration of the disputed domain name was therefore in bad faith.
In addition, the Panel finds the subsequent usage of the disputed domain name, as previously described, to constitute use in bad faith consistent with paragraph 4(b)(iv) of the Policy. The current passive holding of the disputed domain name also constitutes evidence of bad faith.
The Panel concludes that the disputed domain name was registered and is being used in bad faith. 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 be transferred to Complainant.
Timothy D. Casey
Sole Panelist
Date: April 6, 2018
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