The Complainant is Dexpo Intelectual Properties Services Ltd., Cyprus, represented by Amouyal Tax & Law, France.
The Respondent is 1&1 Internet Limited, United Kingdom / Aysun Okudan, France. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2020. On February 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 27, 2020, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on February 27, 2020, 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 amendment to the Complaint on February 28, 2020. The Center verified that the Complaint, together with the amendment to 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 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 23, 2020. The Center received an email communication in French from the Respondent on March 4, 2020, in which he requested a French translation of the whole file. On March 5, 2020, the Center replied that the proceedings will be conducted in English, subject to the authority of the Panel, as the Registration Agreement was provided in English. It reminded Respondent that the due date for the submission of the Response was March 23, 2020. As the Center had not received a Response by March 23, 2020, and pursuant to paragraph 6 of the Rules, the Center notified the Parties on March 24, 2020, that it would proceed with panel appointment. The Center appointed Thomas Legler as the sole panelist in this matter on March 30, 2020. 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 The Complainant is a worldwide operator in the area of hair transplantation with franchisees in various countries. It is the holder of the European Union figurative marks DHI DIRECT HAIR IMPLANTATION and DHI DIRECT HAIR RESTORATION, filed on August 8, 2011, in the classes 10, 16, 35, and 44 (Registration Nos. 010183788 and 010183796, respectively). In addition, it is the holder of the international figurative mark DHI INTERNATIONAL MEDICAL GROUP, filed on July 31, 2007, in the classes 10 and 44 (Registration No. 981333). The Respondent runs a hair transplantation clinic in Istanbul (Turkey) and is the holder of the disputed domain name According to the Complainant, the confusion created by the disputed domain name With regard to the second criteria, the Complainant sets out that it consented to the use of the trademark for domain names to several of its franchisees, for example, In relation to the third criteria, the Complainant indicates that the trademarks filed by the Complainant are pre-existing in relation to the disputed domain name. The Respondent cannot deny that he was aware of the marks since the website only offers hair transplants using the “DHI method”, a registered trademark and patented technology. Because of the reputation of the trademarks and their exploitation by the global network of franchises, the Respondent necessarily had in mind the latter when he registered the disputed domain name, with the aim of making an undue profit or reputation attached to the marks. A previous UDRP panel found that the Complainant’s trademark awareness creates a presumption of bad faith (prima facie), thus the burden of proof shall be to the Respondent. As a result, the Respondent violated paragraphs 4(iii) and 4(b) of the Policy. In view of all these facts and arguments, the Complainant requests that the disputed domain name be cancelled. B. Respondent The Respondent did not submit a Response. 6. Discussion and Findings As regards the language of the proceedings, the Panel sees no reason to deviate from the rule provided in paragraph 11 of the Rules, according to which the language of the administrative proceeding shall be the language of the Registration Agreement. The Respondent, who requested on March 4, 2020, a French translation of the whole file, was informed accordingly on March 5, 2020. Subsequently, the Respondent did not react further and omitted to submit its Response by March 23, 2020, although he would have had sufficient time to seek assistance from a translation service. According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant must prove that: (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 disputed domain name was registered and is being used in bad faith. Paragraph 15(a) of the Rules instructs the Panel to 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”. These elements are discussed in turn below. A. Identical or Confusingly Similar The Complainant is the holder of the figurative marks DHI DIRECT HAIR IMPLANTATION, DHI DIRECT HAIR RESTORATION, and DHI INTERNATIONAL MEDICAL GROUP. In all these figurative trademarks (logos), the element DHI is clearly and prominently identifiable. In addition, the Complainant holds since December 17, 2002, the domain name The disputed domain name consists of combining the dictionary term “clinique” (French term for “clinic”) with DHI, which identifies the Complainant’ marks, domain name, and its products. The distinctive part in the disputed domain name Therefore, the disputed domain name registered by the Respondent has to be considered as confusingly similar to the Complainant’s trademarks. B. Rights or Legitimate Interests In order to assess rights or legitimate interests in a domain name, the panel must look for the following elements; (i) that the respondent uses or plans to use the domain name in connection with a bona fide offering of goods or services; (ii) the respondent has been commonly known by the domain name; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name. The Complainant must establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of proof to the Respondent to come forward with evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. The Panel first notes that the Respondent has not filed a Response and did not take the opportunity to explain its approach and to argue for the possible legitimacy of its website. With regard to the second element of the Policy, the Complainant indicates that the parties are unrelated to each other, and that the Complainant has neither licensed nor otherwise consented to the Respondent’s use of the trademark. The Complainant states that the Respondent is not one of its 75 franchised clinics performing hair transplants using the “DHI method”. Its franchisees use the trademark of the Complainant with the latter’s express consent, like In addition, there is no evidence in the file (like an excerpt from the Turkish trade register) showing that the Respondent is commonly known by that name. Quite to the contrary, the WhoIs information shows that the Respondent’s name is Aysun Okudan (domiciled in France). Furthermore, there is no indication let alone an allegation of the Respondent that it is making a legitimate noncommercial or fair use of the disputed domain name. Finally, the Panel wishes to examine whether the Respondent’s use of the disputed domain name can be considered as a bona fide offering. The Complainant’s argument that the Respondent is a competitor and offers prices ranging from EUR 2,150 to EUR 3,950, which would be far below the prices practiced in the DHI clinics in London, Athens, Dubai, and Paris, are in themselves not evidence of a bad faith offer. However, the Respondent’s website shows that it is openly referring to the “technique DHI” and the DHI trademark, obviously without authorization from the Complainant. The same result is achieved when applying the “Oki Data test”, where panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or provide services related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Indeed, the following requirements under the “Oki Data test” are lacking: (i) the respondent must actually be offering the goods or services at issue; in the present case, there is no evidence that the Respondent Aysun Okudan (domiciled in France) is offering the Complainant’s services of the hair transplant clinic in Turkey; and (ii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; this is obviously not the case as there is no link between the parties, let alone an authorization from the Complainant to the Respondent to use the disputed domain name or the Complainant’s trademarks. Accordingly, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith. One of these circumstances is that the respondent by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy). Again, the Respondent did not submit any response to explain to the Panel his view regarding the third element of the Policy. In addition, the Panel finds that by registering the disputed domain name incorporating the Complainant’s trademark and by running the underlying website for services identical to those offered by the Complainant and under express reference to the latter’s trademark (but without authorization), the Respondent has demonstrated his attempt to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website and of a product/service on his website (paragraph 4(b)(iv) of the Policy). Consequently, the Panel is of the opinion that the disputed domain name has been 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 Thomas Legler
Sole Panelist
Date: April 2, 2020
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