WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
L’Oréal v. Arfah Husaifah
Case No. D2012-2255
1. The Parties
The Complainant is L’Oréal of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Arfah Husaifah of Aceh, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <kerastaseprodukte.info> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on November 15, 2012. On November 15, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 16, 2012, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 9, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 10, 2012.
The Center appointed William P. Knight as the sole panelist in this matter on December 13, 2012. 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 well-known and substantial industrial group in the business of manufacture of cosmetics, including hair shampoo under the brand KERASTASE. The mark KERASTASE is very well known around the world. The Complainant has trademark registrations for the mark KERASTASE in many countries, including in Indonesia, in respect of hair care products, dating from 2004 and before. The Complainant has a significant presence in Indonesia, with a manufacturing subsidiary, and distribution of its products, including KERASTASE, to hair care salons in that country.
The Domain Name was registered on February 3, 2012 but has never been used.
5. Parties’ Contentions
In accordance with paragraph 4(a) of the Policy, the Complainant asserts:
(i) that the Domain Name is confusingly similar to its KERASTASE trademark;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name;
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant says that the addition of the word “produkte” in the Domain Name does nothing to distinguish the dominant element of the Domain Name, namely the word “kerastase”.
The Complainant says that a conclusion may be drawn that the Respondent has no rights or legitimate interests in respect of the Domain Name from the Respondent’s failure to use, or to show any genuine preparations to use, the Domain Name for a legitimate purpose. The Complainant says, further, that its attorneys wrote to the Respondent by letter and email dated June 19, 2012, with follow-up emails on June 29, July 10, August 6 and September 19, 2012, to none of which communications did the attorneys receive any reply.
The Complainant says that, by virtue of its business interests in Indonesia using the KERASTASE trademark, its trademark registrations and the worldwide reputation of its KERASTASE product, registration of the Domain Name by the Respondent without the permission of the Complainant must have been with knowledge of the longstanding use of the KERASTASE trademark by the Complainant and hence in bad faith. The Complainant says that the continuing failure to make any use of the Domain Name at all, in conjunction with the Respondent’s failure to respond to its attorneys’ correspondence is evidence of use in bad faith. The Complainant further points to the registration by the Respondent of an unrelated domain name “jackwolfskinoutletonline.info” which has been used as a parked website with links to a number of websites, including those said by the Complainant to be offering competing goods or services to those in respect offered by the owner of the JACKWOLFSKIN trademark, is an indication a “pattern of conduct of registering domain names including third parties’ trademarks.”
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy. However, the Respondent has had ample opportunity to respond to the allegations of the Complainant and has not done so. The Respondent cannot be in a better position by failing to respond than if he had chosen to take advantage of the opportunities afforded to him, expressly, by paragraph 4(c) of the Policy.
Paragraph 15(a) of the Rules instructs the Panel to decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. In the absence of any response from the Respondent, the onus upon the Complainant will be satisfied if a conclusion which is capable of being drawn from the evidence provided by the Complainant is not contradicted by the Respondent; see Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011 among numerous other UDRP decisions. The Panel may, also, supplement the submissions of the Complainant with matters of public record that are readily available to it, even when the Complainant has not made the minimal effort required to bring such matters expressly to the attention of the Panel; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 4.5.
A. Identical or Confusingly Similar
As to element (i) of paragraph 4(a) of the Policy, the Panel notes that the determination of confusing similarity is a factual one which must be satisfied by making a side-by-side comparison of the Complainant’s well known trademark KERASTASE and the Domain Name, taking into account the degree of aural, visual, or conceptual similarity between the two, the similarity of the goods and services for which they are used and the inherent or acquired distinctiveness of the trademark, as well as issues relevant to language; see Tchibo Frisch-Röst-Kaffee GmbH v. Hans Reischl, WIPO Case No. D2001-0079.
Placed side-by-side, the similarity of the KERASTASE trademark and the Domain Name is self-evident. Why the Respondent has added the word “produkte”, which in the Panel’s opinion would most likely be the German plural of the word “product” remains a mystery. The principal languages spoken in Indonesia are the official language, Bahasa Indonesia, and English. Historically, Dutch was spoken in Indonesia (and German in West Papua) and, of course, Acehnese is also spoken in the Aceh region. Whatever the origin of the word “produkte,” it remains strongly suggestive of the word for “product” in all of them. The word “kerastase” appears to be a made-up word, a portmanteau word suggesting both the fibrous protein making up human (and other) hair and nails, keratin, and some form of equilibrium, or stasis. The word “kerastase” is distinctive, the word “produkte” is not, doing nothing to distinguish the Domain Name.
The Panel therefore finds that the Complainant has sufficient trademark rights and that the Domain Name is confusingly similar to the Complainant’s KERASTASE trademark.
B. Rights or Legitimate Interests
In the absence of any explanation from the Respondent, it is impossible to know how the Respondent happened upon so similar a word to the Complainant’s KERASTASE trademark. The trademark is a made up word, which does not appear to have any meaning in Bahasa Indonesia or in English, the principal languages spoken in Indonesia, as mentioned.
In such circumstances, by virtue of the Respondent’s failure to give any explanation to justify his selection of the Domain Name, combined with the well known status of the KERASTASE mark, and considering that the apparently German word “produkte” in the Domain Name is not a distinguishing element, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registration and Use in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that may indicate registration and use in bad faith. None of the specific examples given in paragraph 4(b) of the Policy may be found here, but previous decisions under the Policy have given some guidance regarding the conduct which might be regarded as evidencing the required bad faith outside the examples given in paragraph 4(b); see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423; Club Méditerranée S.A. v. Clubmedical, WIPO Case No. D2000-1428; Time Inc v Chip Cooper, WIPO Case No. D2000-1342. None of these support the argument of the Complainant that “passive holding of a domain name, following a bad faith registration of it, satisfies the requirement .. that the domain name ‘is being used in bad faith’”.
What these authorities establish is that a combination of circumstances and behaviors on the part of a respondent who has made no use of a disputed domain name may give rise to a finding of registration and use of that domain name in bad faith. In the Nuclear Marshmallows decision referred to above, and cited by the Complainant, the panel found the required bad faith in:
“(i) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries,
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,
(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,
(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and
(v) 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 the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.”
In Red Nacional De Los Ferrocarriles Espanoles v. Ox90, WIPO Case No. D2001-0981, a majority of the panel observed:
“Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances, which, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith. Those circumstances involve the Respondent registering the Domain Name with intent to damage the Complainant in some way or to take unfair advantage of the Complainant or the Complainant’s goodwill. We believe that in this situation Respondent deliberately registered the Domain Name knowing, or at least strongly suspecting, that the Domain Name was a trademark of another, which is not good faith under the UDRP. Whether Respondent actually offered to sell the Domain Name, or was just waiting for an offer to buy it back, is not relevant under the unique facts of this case.
The Panel holds that where there is an intentional registration of a domain name by one with obvious reason to believe that it might be the trademarked name of another, combined with an intentional or reckless failure to verify whether that is the case and without making even the most basic inquiry, constitutes registration of that domain name in bad faith.”
Considering these criteria in this case:
(i) the Panel is satisfied that the Complainant’s trademark KERASTASE is a well-known mark, and must have been known by the Respondent at the time of acquiring the Domain Name; and
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by him of the Domain Name.
In these circumstances, the Panel is prepared to conclude, in the absence of the Respondent’s reply, and on the balance of probabilities, that the Domain Name was registered in bad faith.
It is a much more difficult decision to make as to whether the Domain is being used in bad faith. The other criteria suggested in the Nuclear Marshmallows decision are not preset here: the information given by the Respondent regarding his name, address and contact details appear to be complete and correct, and the Respondent has done nothing to conceal his true identity. The failure of a person residing in Banda Aceh in Indonesia to reply to a letter from a foreign law firm could hardly be regarded as any form of misconduct in itself on the part of the Respondent or in the least surprising.
However, the Complainant’s attorneys made repeated attempts by email to contact the Respondent. This was no desultory effort made in order to comply with some perceived legal hurdle, and the communications were in very plain English, not at all complex legalese or referring to irrelevant foreign legal rights. It must be regarded as the responsibility of every domain name registrant, given the promises made in the registration agreement to the relevant registrar not to misuse the intellectual property rights of others, in this case the GoDaddy Domain Name Registration Agreement (under “A. GENERAL TERMS AND CONDITIONS”), to respond to serious allegations from a trademark owner of such misuse.
The Panel also takes into account the registration of the domain name “jackwolfskinoutletonline.info” proved by the Complainant. Whilst hardly evidence of a “pattern of conduct” as alleged, it does indicate that the Respondent has on at least one other occasion sought to take advantage of another’s trademark with which he has no connection.
On these slender threads, the Panel finds that the Domain Name is being used in bad faith.
In the light of the findings above, the Panel accordingly determines in accordance with paragraphs 4(i) of the Policy and 15 of the Rules that the Domain Name <kerastaseprodukte.info> be transferred to the Complainant.
William P. Knight
Date: December 16, 2012