WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
L'Oréal v. Transure Enterprise Ltd /Above.com Domain Privacy/Peter Smith
Case No. D2013-1352
1. The Parties
Complainant is L'Oréal of Paris, France, represented by Dreyfus & associés, France.
Respondent (collectively) is Transure Enterprise Ltd. of Tortola City, Virgin Islands, Overseas Territory of The United Kingdom of Great Britain and Northern Ireland (“United Kingdom”); Above.com Domain Privacy of Beaumaris, Australia; and Peter Smith.
2. The Domain Name and Registrar
The disputed domain name <wwwkerastase.com> (the “Domain Name”) is registered with Above.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2013. On July 29, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 30, 2013 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 July 31, 2013 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 August 1, 2013.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 25, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2013.
The Center appointed Thomas D. Halket as the sole panelist in this matter on September 20, 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.
4. Factual Background
The undisputed allegations in the Complaint establish the following factual background.
Complainant markets numerous beauty products and brands, one of which is Kerastase. Kerasrase products are intended for hair professionals and, since 1964, have been sold in prestigious hair salons around the world. Complainant owns a number of trademark registrations in relation to hair care for KERASTASE across the world, including several in Australia. Some of these trademarks date from as early as 1974. Those in Australia date from 1988. Complainant and its affiliates own and use on the Internet at least two websites displaying and describing their products and services under the Kerastase name: <kerastase.com> and <kerastase.com.au>. These were registered as early as 1996.
The Domain Name currently resolves to a parking page displaying commercial links, most of which are related to the field of hair care products and services of Complainant and its competitors. Complainant sent Respondent a “cease-and desist” letter (as characterized by Complainant) and received this reply:
“I am still willing to resolve this amicably with a realistic reimbursement of administrative and registration costs. The equivalent in my country is US$900.”
A second letter to Respondent engendered this reply:
“I am still willing to resolve this amicably with a realistic reimbursement of administrative and registration costs.
The equivalent in my country is US$500.
This proposal was apparently unacceptable to Complainant and it filed its complaint in this proceeding.
5. Parties’ Contentions
(a) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(b) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(c) The Domain Name was registered and is being used by Respondent in bad faith.
The Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following: “(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith.”
A. Identical or Confusingly Similar
The Domain Name consists solely of “kerastase” preceded by “www”. The Complaint contains more than a sufficient basis for this Panel to conclude that Complainant has rights in the trademark KERASTASE which long predates the filing of the Domain Name by Respondent. With respect to the second element of paragraph 4(a), this Panel is not prepared to conclude that any domain name which happened to include the trademark of another along with other letters violates paragraph 4(a)(i) of the Policy. However, in this case the trademark in question is a coined or made-up word, having no meaning, and the additional letters are “www”. As “www.” (www with a period) is the common prefix for domain names, this Panel agrees with the Complainant that such use is clearly on its face an attempt by Respondent to create a domain name which is confusingly similar to the trademark KERASTASE. Accordingly, this Panel finds that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has alleged that (i) Respondent is not affiliated with Complainant in any way, (ii) Respondent has not been authorized by Complainant to use and register the trademark KERASTASE, or to seek registration of any domain name incorporating that mark and (iii) Respondent is not commonly known by the name Kerastase. Further it is alleged that Respondent’s only use of the Domain Name is that its use for a parked site displaying commercial links related to the field of hair care products and services of Complainant and its competitors. These allegations have not been disputed by Respondent and this Panel accordingly accepts them. The mere use of the Domain Name as a parked site by itself alone cannot be the basis of a finding that Respondent has any rights or legitimate interests in the disputed domain name. Otherwise, anyone could frustrate the Policy by just setting up a parked site. Under these circumstances, this Panel finds Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith: “(i) circumstances indicating that you [Respondent] have registered or you 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 documented out-of-pocket costs directly related to the domain name; … or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
It is reasonable to conclude that, since Kerastase is a coined word, Respondent must have intentionally included it in the Domain Name with knowledge of its status as Complainant’s trademark. As such Respondent can be presumed to have known at the time it registered the Domain Name that the only entity with a legitimate interest in the use of the Domain Name was and is the Complainant. It is also undisputed that Respondent has already asked Complainant for $900 and then $500 for the rights to the Domain Name. Respondent in its replies to Complainant’s “cease and desist” letters claimed that each such amount was “a realistic reimbursement ofadministrative and registration costs” it incurred for the Domain Name. Complainant disputes that claim and alleges that such amounts are greater than the “out-of-pocket costs directly related to the domain name.” This Panel notes that Respondent did not formally in these proceedings dispute that allegation of Complainant. While the amounts requested by Respondent are not themselves very large, the Panel concludes that the facts alleged by Complainant and not disputed by Respondent do provide a reasonable basis for concluding that the amounts requested by Respondent are in excess of Respondent’s documented out-of-pocket costs directly related to the Domain Name. First, Respondent has simply provided no documentation of any kind to demonstrate it costs, whatever they may be. And second, because the two amounts characterized by Respondent as those costs are different by almost 100%, it is highly likely that they cannot both be Respondent’s costs. Indeed, Respondent’s replies are indicative that neither amount represents Respondent’s actual costs. This Panel accordingly finds that these are circumstances which can be reasonably viewed to indicate that Respondent “registered or … acquired the [Domain Name] primarily for the purpose of selling, renting, or otherwise transferring the [Domain Name] to the [Complainant] … for valuable consideration in excess of [its] documented out-of-pocket costs directly related to the [Domain Name].” This Panel thus concludes that there is sufficient evidence to find under paragraph 4(b)(i) that Respondent used and registered the Domain Name in bad faith.
Turning to paragraph 4(b)(iv), it is also undisputed that Respondent’s only use of the Domain Name is as a parked page with commercial links. Complainant, in a summary fashion, alleges that this use must be for commercial gain, but provides no further basis for such allegation. But, of course, Respondent has not disputed this allegation. While not all sites that are similar to Respondent’s generate commercial gain for their owners, this Panel believes that Complainant’s position is prima facie reasonable and, in the absence of any response from Respondent, accepts it. But even if it has not been conclusively established whether the Respondent is actually deriving revenue from the page, that is not relevant to a determination of bad faith use. See, e.g., Villeroy&Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912 andLego Juris A/S v. Whois Privacy Services Pty Ltd, WIPO Case No. D2012-2442. Respondent is thereby using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to websites, by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its websites. This Panel thus also concludes that there is sufficient evidence to find under Paragraph 4(b)(iv) that Respondent used and registered the Domain Name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name<wwwkerastase.com> be transferred to the Complainant.
Thomas D. Halket
Date: October 4, 2013