ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION L’Oréal v. Joe Lucas Case No. D2024-2472 1. The Parties The Complainant is L’Oréal, France, represented by Dreyfus & associés, France. The Respondent is Joe Lucas, United Kingdom. 2. The Domain Names and Registrar The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , ,
page 2 , , , , , , , are registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2024. On June 18, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 18, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Not disclosed) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 24, 2024, 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 amended Complaint on June 26, 2024. 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 July 4, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 24, 2024. The Response was filed with the Center on July 4, 2024. The Respondent also sent email communications to the Center on June 25, 26, 28, July 1, July 2, and July 4. Complainant requested the suspension of the proceeding on June 28, 2024. The notification of suspension was sent on June 28, 2024. However, Respondent objected to the suspension of the proceedings, therefore the proceeding was reinstituted on July 2, 2024. On July 5, 2024, the Center received: 1. an unsolicited supplemental filing from the Complainant; and 2. subsequently, an unsolicited supplemental filing from the Respondent. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on July 9, 2024. 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 global cosmetics and beauty company headquartered in France. According to the Complaint, it is the “first cosmetics group worldwide”, although it is not clear what metric that has been measured against. More concretely, the Complainant has a portfolio of 36 brands, employs 86,000 employees and “is present” in 150 countries. One of the brands in its portfolio is KERASTASE. The first product in this line was launched in 1964. According to the Complaint, the KERASTASE range is positioned as premium, luxury hair care at its finest. The products are claimed to be unique, avant-garde formulas with innovative ingredients, designed for both personal and profession use sold in hair and beauty salons through a selective distribution system.
page 3 As the premium hair care line, the Complainant says its KERASTASE range is the first to benefit from the technological advances developed by the Complainant’s research arm. The research arm comprises some 700 scientists and 3,420 staff members dedicated exclusively to hair care and has secured 610 patents since 2010. The Complainant has registered the domain names and ; the former on October 21, 1996 and the latter on September 14, 1999. Both resolve to websites promoting the Complainant’s KERASTASE range of products. The Complaint includes a selection of awards garnered by the Complainant’s KERASTASE products in the cosmetics and beauty fields. The Complaint includes evidence that the Complainant owns: (a) International Registration No 283650, KERASTASE, which was first registered on May 15, 1964, in respect of a wide range of relevant goods in International Classes 1, 2, 3, 5, 9, 10, 11, 16, and 21. The International Registration currently designates 26, mostly European, countries in addition to the basic registration in France; (b) International Registration No. 1686528, KERASTASE, which was registered on July 14, 2022, in respect of a range of goods and services in International Classes 3, 9, 35, and 41. This registration designated the United Kingdom and China; and (c) United States Registration No. 7,161,652, KERASTASE, which was registered in the Principal Register on September 12, 2023, in respect of a range of relevant goods and services in International Classes 3, 9, 35, and 41. All of the disputed domain names were registered on March 10, 2024. Each of the disputed domain names resolves to a website. While each has a separate URL, the resolving websites are the same, or virtually the same. When the Complaint was filed, each website featured a range of goods apparently being offered for sale. Some of these were the Complainant’s products but many were products of third parties, including cosmetics. In addition, there are two links at the foot of the landing page. The first is “Want to Secure This Domain? – Click Here”. This link links through to a page at which the particular disputed domain name is offered for sale at the price of USD 4,999 or rental for USD 999. Rather than transferring the disputed domain name to the purchaser, however, the relevant pages states: “Domain Sale – We cancel the domain at our registrar and you can register it once it becomes available”. The second link states “Domain, website and content is covered by our Trademark and Intellectual Property Policy”. This links through to a two-page document which states “We are committed to conducting our business in a lawful and ethical manner, which includes respecting the intellectual property rights of others”. A number of sub-headings follow. Under the heading “Trademark Use” the website states: “We make every effort to use trademarks correctly and fairly, which includes: - Properly recognizing the trademark ownership of the brands and products featured or referenced on our website. - Using generic terms in conjunction with trademarks to avoid implying an official relationship or endorsement.
page 4 - Adhering to the trademark usage guidelines specified by trademark owners, wherever possible. TRADEMARKS If trademarks are used on our site, it is for identification purposes only and constitutes fair use under trademark law. We do not claim any ownership of third-party trademarks. The content and offerings on this site are provided with the best intentions to serve our customers and community.” After requesting users who might believe the use of their trademark on the site is an infringement to contact the website operator, the website states under the heading “Good Faith Disclaimer”: “This website was registered and is being used in good faith without prior knowledge of any existing trademarks that might appear similar. We are committed to operating this site in a manner that is lawful and respectful to all parties. If you are a trademark owner and believe that your rights are being infringed upon, please contact us so we can address your concerns promptly.” Following detection of the websites, the Complainant sent letters to the Registrar and the hosting company seeking to have access to the URLs blocked. These requests were unsuccessful. 5. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest the respondent of a disputed domain name, the complainant must demonstrate each 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 disputed domain name has been registered and is being used in bad faith. Paragraph 15(a) of the Rules directs the Panel to decide the 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. Consolidation The Respondent contends that the Complainant has not proved the ownership of the disputed domain names and requests that the Complainant be ordered to refile the Complaint separately against each individual disputed domain name. Paragraph 3(c) of the Rules expressly permits a complaint to relate to more than one domain name where all the domain names are registered by the same domain name holder. The Registrar has confirmed that each disputed domain name is registered in the name of the Respondent. Accordingly, the requirements of paragraph 3(c) of the Rules are formally met. Further, despite apparently disputing the ownership of the disputed domain names, the Response proceeds on the basis that the Respondent is the owner, or at least, the person in control of each disputed domain name. For example, in the Response, the Respondent contends that he has registered and is using each disputed domain name legitimately under the Policy. In the supplemental filing, the Respondent describes the websites to which the disputed domain names resolve as “[m]y websites” and refers to “my use of these domains”.
page 5 B. Supplemental Filing As noted above, the Complainant submitted an unsolicited supplemental filing after the suspension of the proceeding was terminated. In broad terms, this supplemental filing includes further screenshots said to be representative of the Respondent’s websites in response to the Respondent’s claims to be a genuine affiliate website and an extract from what the Complainant assumed was the disclaimer on the Respondent’s website. Apart from documents requested by the Panel pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case. The materials in the Complainant’s supplemental filing could well have been included in the Complaint and to an extent were covered in Annex 1 to the Complaint. However, the materials do give the Panel a firmer picture of the Respondent’s websites. In addition, it afforded the Respondent the opportunity in its supplemental filing to more clearly articulate the Respondent’s defence. The Respondent’s supplemental filing does provide some additional links to demonstrate the legitimacy of the Respondent’s use of the disputed domain names and also very strongly presses the Respondent’s rights and legitimate interests under the so-called Oki Data principles (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). In the interests of ensuring that the Respondent’s arguments are properly understood, the Panel is prepared to admit the unsolicited supplemental filings into the record. C. Identical or Confusingly Similar To succeed against a particular disputed domain name, the first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights. 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 proven ownership of numerous registered trademarks for KERASTASE. The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties, the date they were acquired, and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g. WIPO Overview 3.0, section 1.7. In undertaking the comparison between the Complainant’s trademark and each disputed domain name, it is permissible in the present circumstances to disregard the Top-Level Domain (“TLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11. Disregarding the “.shop” TLD, each disputed domain name consists of the Complainant’s registered trademark and what the Respondent describes in his email dated June 26, 2024 as “various generic terms”. In fact, many of the additional terms appear to be the names of various products in the Complainant’s KERASTASE range or otherwise identifying the intended use of the particular product. So, for example, the Complainant’s product line identified in Annex 3 includes products such as “Blond Absolu”.
page 6 The Respondent’s contention that the addition of such terms significantly reduces the likelihood of confusion among consumers cannot be accepted. As this requirement under the Policy is essentially a standing requirement, the addition of these terms does not preclude a finding of confusing similarity. See, e.g., WIPO Overview 3.0, section 1.8. Apart from anything else, the Complainant’s trademark remains visually and aurally recognisable within the disputed domain name. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied. D. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names. Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name[s] or a name corresponding to the [disputed] domain name[s] in connection with a bona fide offering of goods or services; or (ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name[s], even if [the Respondent] has acquired no trademark or service mark rights; or (iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name[s], without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. While 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 often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, therefore, a 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. 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. The Respondent registered the disputed domain names well after the Complainant began using its trademark and also well after the Complainant had first registered its trademark. It is not in dispute between the parties that the Complainant has not authorised the Respondent to use the disputed domain names. Nor is the Respondent affiliated with the Complainant. The disputed domain names are not derived from the Respondent’s name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain names could be derived. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain names. The use of a disputed domain name to offer it for sale and, pending that sale, to generate revenue through PPC links does not qualify as a legitimate non-commercial or fair use for the purposes of paragraph 4(c)(iii) of the Policy.
page 7 In addition, usually it does not qualify as a good faith offering of goods or services for the purposes of paragraph 4(c)(i) especially where KERASTASE is an invented term coined by the Complainant. These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent contends that his websites are affiliate websites, promoting and linking to genuine KERASTASE products offered for sale on Amazon. As noted above, therefore, the Respondent invokes the so-called Oki Data principles. As summarized in WIPO Overview 3.0, section 2.8.1, the Oki Data principles are that: (i) the respondent must actually be offering the goods or services at issue; (ii) the respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) the respondent must not try to “corner the market” in domain names that reflect the trademark. At least when the Complaint was filed, it does appear that the Respondent was offering KERASTASE products for sale. However, requirements (ii), (iii), and (iv) were not satisfied. When the Complaint was filed the websites to which the disputed domain names resolved also included links to numerous products that were not the Complainant’s KERASTASE products. Thus, the second requirement is not satisfied. The Respondent does state that the websites clearly indicate they are affiliate websites. At least in the screenshots of the Respondent’s websites included in the record in this proceeding, the Panel struggles to identify anything which clearly discloses the nature of the relationship between the Respondent and the Complainant. Insofar as the Respondent is relying on the Intellectual Property and Trademarks policy document. First, it is not prominently displayed on the landing page but appears only to be linked by a link (in very small type) at the bottom of the page. Secondly, it is a very confusing document which, on one hand, claims all trademarks on the site are being used lawfully and respecting the rights of trademark owners and, on the other, claims not to have any prior knowledge of “any existing trademarks that might appear similar.” The Panel does not accept that this document could satisfy the requirement of accurately and prominently disclosing the relationship between the Respondent and the Complainant. Moreover, the Panel notes that the Respondent registered 87 disputed domain names on March 10, 2024, all prominently displaying the Complainant’s KERASTASE trademark as the first recognizable element, followed by various descriptive terms related to the Complainant’s products or area of activity. The Oki Data principles are not satisfied. Furthermore, the use of disputed domain names containing the Complainant’s distinctive trademark as vehicles to attract traffic to a website with pay-per-click links to goods not just of the Complainant but third parties while at the same time offering the disputed domain name for sale or rent does not qualify as a good faith offering of goods and services under the Policy. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
page 8 E. Registered and Used in Bad Faith Under the third requirement of the Policy, the Complainant must establish that the disputed domain names have been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Group One Holdings Pte Ltd v. Steven Hafto WIPO Case No. D2017-0183. Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant. The Trademark and Intellectual Property policy document on the Respondent’s websites appears to suggest that the Respondent claims not to be aware that the disputed domain names include existing trademarks. That claim simply cannot be sustained. The Respondent may, or may not, be aware that the Complainant has registered KERASTASE as a trademark. However, the term KERASTASE is a coined word, distinctive of the Complainant without any descriptive significance other than as the brand name of a range of the Complainant’s products. The Respondent must have been aware of that when registering 87 disputed domain names on the same day to operate as “genuine” affiliate sites. For the reasons indicated in section 5D above, the claim that the Respondent’s websites are genuine affiliate websites has not been sustained. Rather, the registration of the 87 disputed domain names and the offering of them for sale or rent at, respectively, USD 4,999 or USD 999 provides a strong basis to infer the Respondent registered and used the disputed domain names to capitalise on their close resemblance to the Complainant’s trademark. This conduct is at least closely analogous to the circumstances identified in paragraph 4(b)(i) or (iv) of the Policy: “(i) circumstances indicating that [the Respondent] has registered or [the Respondent has] acquired the [disputed] domain name primarily for the purpose of selling, renting, or otherwise transferring the [disputed] domain name registration to the Complainant who is 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 [disputed] domain name; or […] (iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site 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 [the Respondent’s] website or location or of a product or service on [the Respondent’s] web site or location.” Accordingly, the Panel finds the Respondent has registered and used the disputed domain names in bad faith. Accordingly, the Complainant has established all three requirements under the Policy. F. Other matters The Panel has already addressed the Respondent’s request for the Complainant to be ordered to refile the Complaints against each disputed domain name as a separate case. The Respondent has also requested removal of Annex 3 to the Complaint. Annex 3 is essentially an extract from the Complainant’s website setting out information about the Complainant’s KERASTASE range of products. The Annex does include information of relevance to the dispute including some identification of the
page 9 various product lines comprising the Complainant’s KERASTASE portfolio and, to an extent, the provenance of at least a number of the disputed domain names. The Annex also includes information about awards garnered by the Complainant’s KERASTASE products which to an extent goes towards supporting the Complainant’s claim that its KERASTASE trademark is well-known and highly regarded. This request is denied. The Respondent also calls for information to be requested from third parties about the Complainant’s attempts to have access to the Respondent’s websites blocked. The Respondent contends this is bullying conduct unfairly prejudicial to the Respondent. There may be cases where such conduct may be improper or unlawful. In some cases, of course, registrars and webhosts have in place procedures and policies relating to allegations of intellectual property infringement. However, on its face, the possibility for such claims does not appear to be something arising under the Policy, which is concerned with issues of the registration and use in bad faith of domain names in conflict with a complainant’s trademarks. In any event, on the findings in this proceeding, the issue does not arise. 6. 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 names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , be transferred to the Complainant. /Warwick A. Rothnie/ Warwick A. Rothnie Sole Panelist Date: July 23, 2024
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