WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
L'Oréal v. Privacy Protection Service Inc d/b/a PrivacyProtect.org / Kadir Tekdoğan
Case No. D2014-1049
1. The Parties
The Complainant is L'Oréal of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Privacy Protection Service Inc d/b/a PrivacyProtect.org of Queensland, Australia / Kadir Tekdoğan of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain names <kerastaseşampuan.com> [xn--kerastaseampuan-h6c.com], <kerastasesacbakim.com> and <kerastasesampuan.com> are registered with FBS Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 18, 2014. On June 18, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 19, 2014, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on June 27, 2014, 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 July 2, 2014.
On June 27, 2014, the Center transmitted the language of the proceedings document to the parties in both English and Turkish. On July 2, 2014, the Complainant requested English to be the language of the proceedings. The Respondent did not submit its comments.
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 in both English and Turkish, and the proceedings commenced on July 3, 2014. On July 4, 2014, the Center received an informal email communication in Turkish from the Respondent offering to transfer the disputed domain names to the Complainant. In accordance with the Rules, paragraph 5(a), the due date for Response was July 23, 2014. The Respondent did not submit any response. Accordingly, the Center notified the parties about the commencement of panel appointment process on July 24, 2014.
On July 24, 2014, the Complainant requested the suspension of the proceedings. The Center notified the suspension of the proceeding on July 25, 2014. On September 19, 2014, the Complainant requested the reinstitution of the proceeding. The Center re-instituted the proceeding on September 23, 2014.
The Center appointed Ugur G. Yalçiner as the sole panelist in this matter on October 1, 2014. 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 French company which specializes in the manufacture and sale of cosmetics, beauty preparations, fragrances and related products. It was founded over a century ago. It has now a worldwide presence with representation in virtually every country. It is one of the world's largest cosmetics and beauty company.
The Complainant is mentioned in the Fortune Global 500 and is represented in more than 130 countries and employs over 77,400 people worldwide.
The Complainant markets over 500 trademark including 28 international trademarks for professional products, consumer products, luxury products and active cosmetics under a wide portfolio of brands.
The Kérastase brand is used to denote hair care products, a brand that has existed for almost 50 years. It is regarded as a premium product sold only in top end salons. The products in the Kérastase range are used in over 840 luxury salons across the United States of America ("US").
The corporate name L'Oréal qualifies as a famous name or mark. The brand Kérastase would also qualify as very well known worldwide. The brand is widely promoted.
The Complainant has relevant trademark registrations including the US registration No. 3194138 of January 2, 2007, for the word mark KERASTASE. It is constantly reviewed and commented upon by leading fashion and beauty commentators and in magazines.
Whilst the Complainant has a general website "www.loreal.com" there are also product-specific websites dedicated to the individual beauty or grooming products of the Complainant's group. These include the websites "www.kerastase.com" registered in October 1996, "www.kerastase.fr" registered in April 2003 and "www.kerastase-usa.com" registered in April 2005. These specific websites offer general information, one the products and online shopping.
The disputed domain names were registered on January 4, 2013.
The disputed domain names redirected to the website "www.bizceolur.com" which was offering the Complainant's products and third party products.
The Complainant sent a cease-and-desist letter to the Respondent on July 9, 2013 and received a reply from an email address "[…]@bizceolur.com", in French asking for USD 600 for each disputed domain name in exchange for the transfer of the domain names. At the end of this correspondence, the Complainant and the Respondent could not solve this dispute amicably.
5. Parties' Contentions
The Complainant contends that the trademark KERASTASE is well known and would be known and understood to be a product originating with the Complainant. KERASTASE belongs to the Professional Products division and represents the Complainant's premium luxury hair care products since 1964.
The Complainant contends that the disputed domain names are confusingly similar to the trademark KERASTASE, the registration and use of which by the Complainant long precedes the registration of the disputed domain names.
The disputed domain names associate the Complainant's trademark KERASTASE with the generic terms "sac bakim", "şampuan" and "sampuan" which are the Turkish words for "haircare" and "shampoo" respectively. It has been held by previous UDRP panels that the addition of a generic term does not heighten the risk of confusion between the Complainant's trademark and the disputed domain names.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainant contends that the disputed domain names were registered and are being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. However, the Panel has discretion to determine different language.
According to information received from the Registrar of the disputed domain names, the language of the registration agreement for the disputed domain names is Turkish. The Complainant has submitted the Complaint in English and requested that the language of the administrative proceeding be English. The Respondent has not submitted any objection to the Complainant's request that the language of the administrative proceeding be English, despite the Center's invitation, done both in English and Turkish, to comment on the language of proceedings. The Panel also notes that the notification of this Complaint to the Respondent has been done both in English and Turkish by the Center. In view of the above, the Panel agrees to hold the proceeding in English as requested by the Complainant.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three elements is present:
(i) The disputed domain names registered by the Respondent are 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 names; and
(iii) The disputed domain names were registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel agrees that the disputed domain names are confusingly similar to the Complainant's KERASTASE trademark since the term "kerastase" is the most distinctive element in the disputed domain names. The Panel also notes that the mere addition of Turkish generic words "sampuan", "şampuan" and "sacbakim" do not avoid the risk of confusion with the Complainant's trademark. See Farouk Systems, Inc. v. Cheng Qiang, WIPO Case No. D2009-1557.
The Panel concurs with the opinion of several prior UDRP panels, which have held that when a domain name wholly incorporates a complainant's registered mark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615. In this Panel's view, the addition of the terms "sampuan/şampuan" (meaning "shampoo") and "sacbakim" (meaning "hair care") do not sufficiently distinguish the disputed domain names from the Complainant's trademark.
As a conclusion, the Panel finds that the disputed domain names are confusingly similar to the Complainant's registered trademark and that the requirements in paragraph 4(a)(i) of the Policy are fulfilled.
B. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the Policy, the second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has made out, to the Panel's satisfaction, the prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.
The Panel notes that the Respondent does not appear to have any relevant registered trademarks or trade names corresponding to the disputed domain names and no license or authorization of any other kind has been given by the Complainant to use its registered trademark. The Panel also notes that the Respondent has not replied to any of the Center's correspondences and has not provided any evidence of rights or legitimate interests in the disputed domain names, such as set out in paragraph 4(c) of the Policy.
The Complainant has provided evidence that the disputed domain names were used to redirect Internet users to a Turkish online cosmetics store offering for sale the Complainant's products and its competitors. This cannot be a bona fide offering of goods and services.
Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain names as it has not rebutted the Complainant's prima facie case.
C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the Complainant may show one of the following circumstances, in particular but without limitation, in order to demonstrate the Respondent's bad faith in registration and use of the disputed domain names:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations 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 domain names; or
(ii) the Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain names, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent'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 Respondent's website or location or of a product or service on the Respondent's website or location.
The Panel recognizes the reputation of the Complainant's trademark KERASTASE and is convinced that the Respondent must have known of this trademark when it registered the disputed domain names.
Several UDRP panels have held that registering and using domain names which correspond to well-known trademarks suggests bad faith (LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494 and Sanofi-aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303).
As noted above under Section 7.B, the use of the disputed domain names to redirect Internet users to the website "www.bizceolur.com" selling the Complainant's competitor's products is a further evidence of bad faith use as per paragraph 4(b)(iv) of the Policy.
Furthermore, the Panel finds that the Respondent's offer to sell the disputed domain names to the Complainant for USD 600 for each disputed domain name falls clearly within the definition of bad faith under the Policy, paragraph 4(b)(i) (see Vakko Holding Anonim Sti. v. Esat Ist, WIPO Case No. D2001-1173).
As such, taking into account all the circumstances of this case, the Panel finds that the disputed domain names were registered and are being used 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 names <kerastaseşampuan.com> [xn--kerastaseampuan-h6c.com], <kerastasesacbakim.com> and <kerastasesampuan.com> be transferred to the Complainant.
Ugur G. Yalçiner
Date: October 19, 2014