The Complainant is L’Oréal, France, represented by Dreyfus & associés, France.
The Respondent is Andrey Osipov, Russian Federation. 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 19, 2021. On February 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 22, 2021, 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 24, 2021providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 25, 2021. 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 the Respondent of the Complaint, and the proceedings commenced on February 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 19, 2021. The Center received an informal communication from the Respondent on March 21, 2021, stating: The Center acknowledged receipt of the Respondent’s communication on March 22, 2021. The Center appointed William R. Towns as the sole panelist in this matter on March 25, 2021. 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 cosmetics and beauty company with an international presence in 150 countries. The Complainant is the owner of the Redken brand, which was coined in 1960 from the last names of American actress and entrepreneur Paula Kent and hairdresser Jehri Redding. In 1993 the Complainant purchased Redken and moved its company to New York City, New York, on 5th Avenue. The Complainant is the holder of a number of trademark registrations for its REDKEN mark, including the following: - European Union Trade Mark (EUTM) Registration No. 006156756, applied for August 1, 2007, and registered July 17, 2008; The Complainant represents it has held Russian Federation and European Union’s trademark registrations for REDKEN since 1987 and 2008, respectively, as well as Community trademark registrations for REDKEN 5th AVENUE since 1999. The Complainant registered the domain name The Respondent registered the disputed domain name The Complainant submits that the disputed domain name The Complainant observes that a top-level-domain (“TLD”) such as <.shop> typically is disregarded when assessing the similarity of the disputed domain name to the complainant’s mark, but also notes that a likelihood of confusion could arise due to the common or ordinary meaning of the word “shop”. The Complainant submits that Internet users encountering the disputed domain name The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant avers that the Respondent is not affiliated with the Complainant and has not been authorized by the Complainant to license or use the Complainant’s REDKEN mark, nor otherwise authorized to register other domain names incorporating the Complainant’s mark. The Complainant asserts that the Respondent cannot claim prior rights or legitimate interests in the disputed domain name as the Complainant’s REDKEN marks precede the Respondent’s registration of the disputed domain name by many years. The Complainant adds that the Respondent has not been commonly known by the disputed domain name. The Complainant submits the Respondent prior to any notice of this dispute neither had used nor made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Rather, according to the Complainant, the Respondent has used the disputed domain name to attract Internet users to a website reproducing graphic elements from the Complainant’s website, and displaying either the Complainant’s products or else fake products passed off as such by the Respondent. The Complainant asserts that the Respondent intentionally has sought to take unfair advantage of the Complainant’s goodwill and reputation in order to exploit and profit financially from the Complainant’s well-known REDKEN mark. The Complainant observes that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and has instead intentionally sought for commercial gain to misleadingly divert consumers to the Respondent’s website. The Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that the Respondent in all likelihood was aware of the Complainant’s mark when registering the disputed domain name, and has appropriated the Complainant’s well-known REDKEN mark in its entirety. The Complainant posits that bad faith can be found when a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the mark suggests opportunistic bad faith. The Complainant emphasizes that its registrations of the REDKEN mark substantially predate the Respondent’s registration of the disputed domain name. The Complainant reiterates that the disputed domain name is virtually identical to the Complainant’s REDKEN mark, and asserts that a likelihood of confusion would result in the diversion of Internet traffic from the Complainant’s website to the Respondent’s website. The Complainant opines that the products displayed on the Respondent’s website most likely are imitations of the Complainant’s products. To the extent that the disputed domain name now is being passively held by the Respondent, the Complainant concludes it is not possible to conceive of any plausible circumstance in which the Respondent could legitimately use the disputed domain name, which invariably would result in misdirection and take unfair advantage of the Complainant’s rights. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademark or service mark. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable. Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred: (i) the 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 with respect to the domain name; and (iii) the domain name has been registered and is being used in bad faith. Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i). Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations. Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with relevant evidence of rights or legitimate interests in the domain name, once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar The Panel finds that the disputed domain name In this case, the Complainant’s REDKEN mark is clearly recognizable in the disputed domain name.2 The inclusion of the word “shop” as the TLD in the disputed domain name does not serve to dispel the confusing similarity of the disputed domain name to the Complainant’s REDKEN mark. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under paragraph 4(a)(i) of the Policy.3 Top-Level Domains (“TLDs”), in this case “.shop”, generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy.4 Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. The Respondent has registered the disputed domain name, which is confusingly similar and virtually identical to the Complainant’s well-known REDKEN mark. It is undisputed that the Respondent has not been authorized by the Complainant to register or use the REDKEN mark. The Respondent notwithstanding has directed the disputed domain name to a website displaying either REDKEN products or colorable imitations thereof, which the Respondent appears to have offered for sale. The Respondent upon learning of the filing of the Complaint sought to sell the disputed domain name for EUR 1,000. Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the 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. The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy. The Panel concludes from the record that the Respondent was aware of the Complainant and had the Complainant’s REDKEN mark firmly in mind when registering the disputed domain name. The Panel finds that the Respondent has neither used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services within the contemplation of paragraph 4(c)(i) of the Policy. As previously noted the Respondent has not been authorized to use the Complainant’s mark. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain names within the meaning of paragraph 4(c)(iii) of the Policy, and the Panel concludes that the Respondent has not been commonly known by the disputed domain name within the contemplation of paragraph 4(c)(ii) of the Policy. The Panel further concludes from the record that the Respondent registered the disputed domain name with the sole aim of exploiting and profiting from the Complainant’s REDKEN mark. Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location. The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel finds that the Respondent was aware of the Complainant and had the Complainant’s REDKEN mark firmly in mind when registering the disputed domain name. The Panel concludes from the totality of circumstances in the record that the Respondent registered the disputed domain name in order to exploit or otherwise profit from the Complainant’s trademark rights, including selling the disputed domain name to the Complainant or other potential buyers for an amount in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name. Finally, the fact that the disputed domain name currently does not resolve to an active website does not prevent a finding of bad faith. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 William R. Towns 1 See WIPO Overview 3.0, section 1.7. 2 Id. 3 See WIPO Overview 3.0, section 1.8 and cases cited therein. 4 See WIPO Overview 3.0, section 1.11.2 and cases cited therein.
“[T]he domain name is for sale. 1000 Euro. Write if you are interested” (English translation).
- Canadian Trademark Registration No. TMA173935, applied for February 12, 1970, and registered January 15, 1971;
- International Trademark Registration No. 1340168, date of registration January 10, 2017 (designating contracting parties under the Madrid Protocol); and
- Russian Federation Registration No.81513, applied for February 10, 1987, and registered July 27, 1987.
Sole Panelist
Date: April 8, 2021
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