WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
L’Oréal v. Tina Smith
Case No. D2013-0820
1. The Parties
The Complainant is L’Oréal of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Tina Smith of Bristol, United Kingdom of Great Britain and Northern Ireland (“UK”).
2. The Domain Name and Registrar
The disputed domain name <kerastasehaircare-uk.com> is registered with Webfusion Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2013. On May 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 10, 2013, 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 May 29, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 18, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 19, 2013.
The Center appointed Ana María Pacón as the sole panelist in this matter on July 11, 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.
On July 24, 2013, Mr. Wheeler on behalf of the Respondent sent an email to the Center as an informal response to the Complaint. On July 26, 2013, Mr. Wheeler sent another informal email communication to the Center.
The language of the proceeding is English, as per paragraph 11(a) of the Rules.
4. Factual Background
The Complainant is a French company founded in 1909. It is a market leader in the field of cosmetics and beauty, with operation in 130 countries, including the United Kingdom. The trademark KERASTASE represents the Complainant’s premium, luxury hair care products since 1964. KERASTASE has developed six product lines designed for all different types of hair and is sold in prestigious hair salons on a global basis.
The Complainant has several trademark registrations for the trademark KERASTASE. As an example, reference is made to the UK registration No. 00001034105, registered since 1974. This trademark has been also incorporated in domain names such as <kerastase.com> and <kerastase.co.uk>, registered by the Complainant in 1996 and in 1999, respectively.
According to a printout of the WhoIs database the disputed domain name was registered on June 13, 2012 and will expire on June 13, 2022.
5. Parties’ Contentions
The Complainant contends the following:
- The disputed domain name is identical or at least confusingly similar to the Complainant's trademark KERASTASE:
- Its trademark is very well-known in the field of hair care and hair salons services. Different UDRP cases have stated the notoriety of its trademark.
- The disputed domain name reproduces the Complainant's trademark in its entirety.
- The addition of the descriptive words “hair care” is insufficient to give any distinctiveness to the disputed domain name.
- The addition of the hyphen and of the geographic term “uk” do not sufficiently distinguish the disputed domain name from the Complainant's trademarks. Many UDRP decisions have established that adding a geographic term to a well-known trademark does not serve to distinguish it from the Complainant’s trademarks.
- The mere adjunction of a gTLD such as “.com” is insufficient to avoid a finding of confusing similarity.
- The term KERASTASE is unique and is only known in relation to the Complainant’s products.
- The Respondent has no rights or legitimate interests in respect of the disputed domain name:
- The Respondent is not affiliated with the Complainant in any way nor has he been authorized by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating said mark.
- The Respondent has no prior rights or legitimate interest in the disputed domain name.
- The registration of the numerous KERASTASE trademarks preceded the registration of the disputed domain name.
- The Respondent has never used the term “kerastase” in any way before or after the Complainant registered its trademarks. Indeed, the disputed domain name is inactive.
- The Respondent was never known under this name or any similar term.
- The Respondent has never even claimed to have a legitimate interest in the disputed domain name as he has never replied to the Complainant's messages including a cease-and-desist letter on September 18, 2012, by email and registered letter and several reminders thereafter.
- The disputed domain name was registered and is being used in bad faith:
- By virtue of its business interests in the United Kingdom using the KERASTASE trademark, its trademark registrations and the worldwide reputation of its KERASTASE products, registration of the disputed domain name must have been with knowledge of the longstanding use of the KERASTASE trademark by the Complainant.
- Due to the reputation of the Complainant’s KERASTASE trademark, the reproduction of the trademark in its entirety in the disputed domain name proves that the Respondent was aware of the existence of the Complainant’s trademark.
- The fact that the disputed domain name is inactive is irrelevant for a finding of bad faith use by the Respondent.
- In view of the notoriety of the Complainant’s trademark it is not possible good faith use of the disputed domain name.
- Continuing failure to make any use of the disputed 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 Respondent did not reply on time to the Complainant’s contentions. On July 25, 2013 an informal response was submitted to the Center by a third party on behalf of the Respondent, which has been drawn to the Panel’s attention accordingly. Though it is not necessary for the Panel to accept and consider this filing, the Panel will accept and consider Mr. Wheeler's informal response to the Complaint.
Mr. Wheeler contends the following:
- The disputed domain name has never been activated as a website or used in any way. Therefore there is no abuse free riding or trademark infringement.
- The disputed domain name was bought by the Respondent in good faith, evidenced by its perpetual dormant state.
- The Respondent is the proprietor of a prestigious hair and beauty business which is an approved “Kerastase” hair care practitioner and “Kerastase” re-seller.
- The Respondent is aware of the potential value of the web domain to its business, either as a sales tool, or its ownership as a control to prevent competitive use by others.
- The Respondent is prepared to sell the website to the Complainant, taking into account its commercial value until 2022.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) the domain name registered by the Respondent 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
A complainant must establish two elements under paragraph 4(a)(i) of the Policy: i) the complainant has rights in a trademark or a service mark, and ii) the disputed domain name is identical or confusingly similar to the mark in which the complainant has rights.
The Complainant has provided sufficient evidence of its rights in the trademark KERASTASE in the UK, where the Respondent is located.
The relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common terms typically being regarded as insufficient to present threshold Internet user confusion. This will particularly be the case where the trademark is inherently distinctive and widely-known. (Lilly ICOS LLC v. John Hopking/Neo net Ltd., WIPO Case No. D2005-0694).
In the present case, the disputed domain name <kerastasehaircare-uk.com> contains the trademark KERASTASE in its entirety. UDRP cases agree that incorporating a trademark into a domain name may be sufficient to establish that a domain name is identical or confusingly similar to Complainant’s registered mark (Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150; RapidShare AG, Christian Schmid v. InvisibleRegistration.com, WIPO Case No. D2010-1059, F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).
The addition of the terms “hair” and “care” are common terms in English and describe the area of business of the Complainant’s trademark. Internet users can understand the addition of the suffixes to the Complainant’s trademark in the sense that the Respondent’s website is specific for a Complainant’s product line. So Internet users would likely be confused into thinking that it is owned or associated with the Complainant (L’Oréal v. Vogue, WIPO Case No. D2012-0144).
Concerning the hyphen in the disputed domain name, many UDRP cases have considered
that it is “a non-distinctive element which serves only to represent the natural space between the two words” (Mastercard International Incorporated v. Dolancer Outsourcing Inc., WIPO Case No. D2012-0619).
The term “uk” is generally regarded as an abbreviation of the word “United Kingdom” and consequently is a mere geographic description. The Panel finds that the addition of the suffix “uk” does not serve to distinguish it from the Complainant’s KERASTASE trademark. In the Panel’s opinion this addition increases the level of confusion as Internet users may mistake the Respondent’s website as the Complainant’s official website devoted to its customers in the UK.
The addition of the generic top level domain name “.com” may be disregarded for the purpose of this comparison. It is well established in previous UDRP cases that the added of top-level domains – being a required element of every domain name – is irrelevant when assessing whether or not a mark is identical or confusingly similar.
In the light of the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark KERASTASE.
B. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name.
The following are examples of circumstances where the Respondent may have rights or legitimate interests in a disputed domain name (paragraph 4(c) of the Policy):
(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.
It is the Complainant’s burden to prove that the Respondent lacks rights or a legitimate interest (Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270). Because it is difficult to produce evidence to support a negative statement, the threshold for the Complainant to prove a lack of legitimate interest is low. Once the Complainant makes out a prima facie showing on this element, the burden of production shifts to the Respondent, although the burden of proof always remains on the Complainant (Do The Hustle, LLC v.Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). See also the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.).
Here, the Complainant has made a prima facie showing that the Respondent lacks any rights to or a legitimate interest in the disputed domain name. In particular, the Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the trademark KERASTASE.
The Complainant has prior rights in the trademark KERASTASE which precede the Respondent’s registration of the disputed domain name. There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that the Respondent is using the disputed domain name with a bona fide offering of goods and services. Indeed, the disputed domain name is inactive.
In the absence of any explanation from the Respondent in this respect, 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 English.
Accordingly, the Panel concludes that the Respondent has no rights or legitimate interests, within the meaning of paragraph 4(a)(ii) and (c)(i) to (iii) of the Policy in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Even if the Respondent has not responded to the Complaint, as is the case here (apart from the communication of July 24, 2013), the Complainant has to prove under the Policy that the Respondent has registered and is using the domain name in bad faith.
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the Respondent registered and used the disputed domain name in bad faith. The language of paragraph 4(a)(iii) of the Policy requires that both bad faith registration and bad faith use be established.
Pursuant to paragraph 4(b) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
(i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has 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 registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 registrant’s website or location or of a product or service on the registrant’s website or location.
As to registration in bad faith, in light of the Complainant’s numerous trademark registrations and the fact that KERASTASE is a well-known trademark in the field of cosmetics and beauty, in the Panel’s opinion, it cannot reasonably be argued that the Respondent could have been unaware of the trademark rights vested therein when registering the disputed domain name (Inter-IKEA Systems B.V. v. McLaughlin Mobility, WIPO Case No. 2000-0499). In addition, the Respondent never denied knowledge of the Complainant's trademark and in the informal response of July 25, 2013, Mr. Wheeler submitted that the Respondent is the proprietor of a prestigious hair and beauty business and an approved “Kerastase” hair care practitioner and “Kerastase” re-seller.
As to use in bad faith, at the date of this decision, the disputed domain name is inactive (which presently does not correspond or redirect to any web site). The Panel considers such use falls within the concept of “passive holding”. It has been established in many UDRP cases that passive holding does not as such prevent a finding of bad faith. Indeed the apparent lack of active use under the appropriate circumstances falls within the concept of the domain name being used in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Action S.A. v. Robert Gozdowski, WIPO Case No. D2008-0028). See also the WIPO Overview 2.0, 3.2.
Further, the Panel is of the view that the Respondent’s refusal to voluntarily transfer the disputed domain name and to not respond to a cease and desist letter, or a similar attempt at contact, is relevant in a finding of bad faith (Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598). In addition, in the informal response of July 25, 2013, Mr. Wheeler established that the Respondent would be prepared to sell the disputed domain name to the Complainant, “taking into account it's commercial value until 2022”.
In the absence of more evidence, the Panel comes to the conclusion that the Respondent did not intend to use the disputed domain name for the purpose of a bona fide offering of goods and services but instead, it appears more likely that there were intentions to profit from the transfer of the disputed domain name to either the Complainant or to its competitors.
Thus, the Panel concludes, under the totality of the circumstances, that the Respondent has registered and is using the disputed domain name in bad faith.
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 <kerastasehaircare-uk.com> be transferred to the Complainant.
Ana María Pacón
Date: July 30, 2013