WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
L’Oréal v. Balticsea, LLC
Case No. D2012-2460
1. The Parties
The Complainant is L’Oréal of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Balticsea, LLC of Kaliningrad, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <redken5thave.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2012. On December 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing its 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 December 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 15, 2013.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on January 23, 2013. 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.
The proceedings are conducted in English as this is the language of the registration agreement for the disputed domain name.
4. Factual Background
The Complainant is a leading cosmetics and beauty company with presence in over 130 countries, 68,900 employees, and 2011 sales in excess of EUR 20,3 billion.
The Complainant markets over 500 brands and more than 2,000 beauty products including make-up, hair color, permanents, styling aids, skincare, cleansers and fragrances.
The Complainant holds Russian Federation’s and European Union’s trademark registrations for REDKEN since 1987 and 2008, respectively, as well as International and Community trademark registrations for REDKEN 5th AVENUE since 1999, all registered in connection with hair care products.
The term REDKEN was coined in 1960 from the last names of American actress and entrepreneur Paula Kent, and her hairdresser Jehri Redding.
The Respondent registered the disputed domain name on June 20, 2011.
The disputed domain name resolves to a parking page with sponsored links relating to cosmetics, hair care, and other products and services.
5. Parties’ Contentions
The Complainant’s submissions can be summarized as follows:
i. The disputed domain name is identical or at least confusingly similar to the Complainant’s trademarks as it incorporates the mark REDKEN in its entirety;
ii. The omission of “nue” in <redken5thave.com> is only a minor difference that cannot negate the confusing similarity existing between the disputed domain name and the Complainant’s REDKEN 5th AVENUE trademark;
iii. In the absence of any license or permission from the Complainant to use its widely-known REDKEN trademarks, the Respondent cannot reasonably assert an actual or contemplated bona fide or legitimate use of the disputed domain name;
iv. The Respondent is making a commercial use of the disputed domain name insofar as the latter directs Internet users to a parking page displaying pay-per-click (“PPC”) links to websites of Complainant’s competitors and other entities in the cosmetics market;
v. Given the notoriety of the REDKEN trademark, it seems impossible that Respondent could have ignored the Complainant’s trademarks when registering the disputed domain name;
vi. The Respondent knew or should have known of the Complainant’s trademark rights as the REDKEN mark is highly distinctive and well-known throughout the world, including the Russian Federation, where the Respondent is located;
vii. A quick trademark search or a simple Internet search would have revealed the existence of the Complainant’s REDKEN trademarks;
viii. The Respondent used the disputed domain name to redirect Internet users toward a parking page displaying commercial sponsored links related to hair care including links to competitive products;
ix. The Respondent’s purpose when registering the disputed domain name was to make profits by taking advantage of Complainant’s reputation and goodwill;
x. There is little doubt that many Internet users attempting to go to Complainant’s website have ended up at Respondent’s website;
xi. It is likely that Respondent registered the domain name to prevent Complainant from reflecting its trademark in the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
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.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the 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.
A. Identical or Confusingly Similar
The question under paragraph 4(a)(i) of the Policy is whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark, not whether the website to which the disputed domain name resolve will confuse Internet users(see The Vanguard Group, Inc. v. John Zuccarini, WIPO Case No. D2002-0834 where the Panel concluded that a complainant need not to establish actual confusion because the test is objective, not subjective).
The Complainant holds Russian Federation’s and European Union’s trademark registrations for REDKEN, as well as international and Community trademark registrations for REDKEN 5th AVENUE. The Complainant has also built substantial goodwill around its REDKEN and REDKEN 5th AVENUE trademarks.
The Complainant argues that the disputed domain name is confusingly similar to its registered trademarks because the Respondent’s disputed domain name incorporates the Complainant’s REDKEN and REDKEN 5th AVENUE trademarks in their entirety. The Complainant further alleges that the omission of “nue” in <redken5thave.com> is only a minor difference that does not negate confusing similarity between the disputed domain name and the Complainant’s REDKEN 5th AVENUE trademark.
According to paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) the test for confusing similarity under the Policy typically involves a straightforward visual or aural comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion and in order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent Internet user confusion.
In taking this approach, the Panel observes that the term REDKEN is highly distinctive. As such, it is immediately recognizable as a trademark within the disputed domain name to this Panel’s eye. Conversely, the suffix “5thave” is not self-explanatory and can only be understood by reference to the Complainant’s REDKEN 5th AVENUE trademark.
As “5thave” represents an abbreviation of 5th AVENUE, which is part of Complainant’s REDKEN 5th AVENUE trademark, the Panel finds the disputed domain name <redken5thave.com> to be confusingly similar to Complainant’s trademarks REDKEN and REDKEN 5th AVENUE.
The Complainant has thus met the first threshold of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the Respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that: “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the Respondent’s rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
i. before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
ii. you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
iii. you are 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.”
As noted in paragraph 2.1 of the WIPO Overview 2.0, the burden is on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of evidence production then shifts to the Respondent to rebut that prima facie case (see also, e.g. World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).
The Complainant avers not to be affiliated with Respondent in any way, nor to have authorized the incorporation of its REDKEN marks in the disputed domain name. The Complainant cites authority in support of its contention that, in the absence of a license to use Complainant’s REDKEN trademarks, no actual or contemplated bona fide or legitimate use of the disputed domain name can be reasonably claimed by the Respondent.
Since the Respondent chose not to participate in this administrative proceedings to defend its rights or legitimate interests, if any, in the disputed domain name, the Panel deems appropriate to draw adverse inferences from the Respondent’s default (see Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221, finding that the respondent's failure to respond can be construed as an admission that it has no rights or legitimate interests in the disputed domain name; and Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., eResolution Case No. AF-0336, finding no rights or legitimate interests where no such rights or interests were immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed).
Furthermore, the Panel finds that the Respondent’s use of the disputed domain is not bona fide as it baits Internet users searching for the Complainant, who are then redirected to third party websites either related or unrelated to the professional haircare market with which the Complainant’s REDKEN trademarks are associated.
Nor can Respondent’s parking page be characterized as noncommercial or fair use of the disputed domain name as it displays nothing but sponsored links from which the Respondent profit on a PPC basis (see paragraph 2.6 of the WIPO Overview 2.0, which states that PPC links do not confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” of the domain name, where resulting in a connection to goods or services competitive with those of the rights holder).
Consequently, the Complainant has demonstrated the second limb of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires a complainant to prove that the disputed domain name has been registered and is being used in bad faith in order to be successful in its complaint. Paragraph 4(b) of the Policy sets forth a number of non-exclusive grounds of bad faith registration and use:
“(i) circumstances indicating that you [the respondent] have registered or have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the 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 your [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) you [the respondent] have 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 you [the respondent] have engaged in a pattern of such conduct; or
(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [the respondent’s] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your [the respondent’s] web site or location or of a product or service on your [the respondent’s] web site or location.”
As described in section 4 supra, “redken” is an invented word. As such, it does not seem to be a term that others would legitimately choose using unless seeking to create the impression of being associated with the Complainant (see Expedia Inc. v. Venta, Leonard Bogucki, WIPO Case No. D2001-1222).
Because the disputed domain name has no meaning other than as a trademark of the Complainant, the Panel infers that the Respondent registered the disputed domain name with a view to profiting from the goodwill associated with the Complainant and its REDKEN trademarks.
Further, the Complainant’s REDKEN trademark has been registered in the Russian Federation, where the Respondent is domiciled, since 1987. In light of the longstanding registration and use of the trademark REDKEN in the Russian Federation, and the worldwide use to which the REDKEN trademarks have been subjected, the Panel finds it improbable that as recently as June 20, 2011, the date of registration of the disputed domain name, the Respondent could have been unaware of the Complainant’s trademark rights in the term REDKEN (see Red Nacional De Los Ferrocarriles Espanoles v. 0x90, WIPO Case No. D2001-0981, where the panel found that the deliberate 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).
Lastly, the Panel holds that by deceiving Internet users seeking an unequivocal trademarked name like REDKEN, and drawing them instead to a parking site displaying PPC links to websites not affiliated with or endorsed by the Complainant, the Respondent has been using the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy as it presumably receives click-through fees from such links (see Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462, where the panel found that the respondent is deriving a financial benefit from web traffic diverted through the domain name to linked websites on the domain parking page).
In sum, the Complainant has sustained its burden of proving paragraph 4(a)(iii) of the Policy.
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 <redken5thave.com> be transferred to the Complainant.
Reynaldo Urtiaga Escobar
Date: February 8, 2013