WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
L’Oréal v. Phan Thanh Tung
Case No. D2021-1511
1. The Parties
The Complainant is L’Oréal, France, represented by Dreyfus & Associés, France.
The Respondent is Phan Thanh Tung, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <skinceuticals.asia> (the “Disputed Domain Name”) is registered with P.A. Viet Nam Company Limited (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2021. On May 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 18, 2021, and July 15, 2021, the Registrar transmitted by email to the Center its verification responses confirming that the Respondent is listed as the registrant and providing the contact details for the Disputed Domain Name, which differed from the Respondent’s contact information in the Complaint. The Center sent an email communication to the Complainant on July 16, 2021, 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 in English on July 20, 2021.
On July 23, 2021, the Center notified the Parties in both English and Vietnamese that the language of the registration agreement for the Disputed Domain Name is Vietnamese. On July 26, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 and 4, the Center formally notified the Respondent in English and Vietnamese of the Complaint, and the proceedings commenced on August 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2021.
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on September 5, 2021. 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, L’Oréal, is a French industrial group specialized in the field of cosmetics and beauty. Created in 1909, L’Oréal is one of the world’s largest cosmetic group. It has a portfolio of 36 brands, employs 86,000 employees, and is present in 150 countries.
SKINCEUTICALS is a brand of the Complainant, aiming at preventing skin from aging and correct premature signs of aging with antioxidants. According to the Complainant, the professional skincare brand SKINCEUTICALS is offered for sale in various countries of Asia.
The Complainant holds many trademark registrations for SKINCEUTICALS covering goods in class 03 in multiple jurisdictions worldwide, including, but not limited to the Singaporean trademark registration No. T9901111Z registered on February 9, 1999; the Malaysian trademark registration No. 01009664 registered on July 26, 2001; the International registration No. 1415977 registered on June 1, 2018, designating China and Japan.
In addition, the Complainant is the registrant of domain names featuring the SKINCEUTICALS Trademark, notably <skinceuticals.com> registered on March 25, 1997, and <skinceuticals.fr> registered on May 24, 2007.
The Respondent registered the Disputed Domain Name <skinceuticals.asia> on February 17, 2020. As of the date of this Decision, the Disputed Domain Name does not resolve to an active website. However, the Disputed Domain Name used to resolve to a website offering cosmetic products under the brand SKINCEUTICALS.
As indicated in the case file, the Complainant’s attorneys sent to the Respondent, via the Registrar, a cease-and-desist letter with regard to the Disputed Domain Name on February 24, 2021, and several reminders, in which the Complainant asked for, amongst others, a voluntary transfer of such Disputed Domain Name. However, the Respondent did not reply to such cease-and-desist letter. On February 3, 2021, the Complainant’s attorneys also sent a deactivation request, for which the hosting service provider deactivated the website associated with the Disputed Domain Name.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(i) The Disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights.
First, the Complainant contends that the Complainant is the registered owner of numerous SKINCEUTICALS trademark registrations covering goods in class 03 worldwide, including Asia and countries bordering Vietnam for many years. The Complainant is also the registrant of several domain names reflecting its SKINCEUTICALS Trademark.
Second, the Complainant asserts that the Disputed Domain Name is virtually identical to the SKINCEUTICALS Trademark owned by the Complainant, since the Disputed Domain Name reproduces in its entirety SKINCEUTICALS Trademark and the mere addition of the extension “.asia” could not dispel any likelihood of confusion. On the contrary, this extension misleads the Internet users into thinking that the Disputed Domain Name is registered by the Complainant for the purposes of promoting its products in the Asian market.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
First, the Complainant asserts that the Respondent has no affiliation with the Complainant nor has been authorized by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating the SKINCEUTICALS Trademark. In addition, the Respondent cannot claim prior rights or legitimate interest in the Disputed Domain Name because the SKINCEUTICALS Trademark precedes the Disputed Domain Name registration for years.
Second, the Complainant asserts that the Respondent is not commonly known by the Disputed Domain Name or the name “skinceuticals”.
Third, the Respondent fails to show the use, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services, since the Disputed Domain Name initially used to resolve towards a fake website in Vietnamese reproducing the Complainant’s trademark and visuals and offering cosmetics products for sale under the name of the Complainant. Consequently, the Respondent also fails to show any intention of noncommercial or fair use of the Disputed Domain Name.
Further, the Complainant submits that there might be a risk that the Respondent is engaged in a phishing scheme since an email server has been configured on the Disputed Domain Name.
Finally, the Complainant argues that the Respondent has ignored the Complainant’s attempt to amicable settlement by not replying to the Complainant’s cease-and-desist letter despite several reminders. This may indicate that the Respondent does not have legitimate interest with respect to the Disputed Domain Name.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
Registration in bad faith
First, the Complainant contends that the Complainant is well-known throughout the world, including Vietnam where the Respondent resides, which has also been recognized by the panels in previous UDRP decisions. Since the Disputed Domain Name entirely reproduces the SKINCEUTICALS trademark and previously redirected towards a website that reproduced the Complainant’s SKINCEUTICALS logo, the Complainant argues that the Respondent was aware of the Complainant and its trademark, at the time of registration of the Disputed Domain Name.
Second, the Complainant alleges that the Respondent neither tried to defend his rights nor stated any valid arguments to justify the registration of the Disputed Domain Name in response to the Complainant’s cease-and-desist letter, thereby showing no explanation for the Respondent’s choice of the Disputed Domain Name, which is a significant factor in assessing bad faith. In addition, a simple search via Google or any other search engine using the keyword “skinceuticals” would have shown up results which relate to the Complainant and its product.
Finally, the Complainant argues that the Respondent is a notorious cybersquatter that has been the subject of previous UDRP proceedings, which provides further evidence of the Respondent’s bad faith behavior.
Use in bad faith
First, the Complainant argues that the Respondent used the Disputed Domain Name to direct Internet users to a webpage offering cosmetics products and misusing the Complainant’s trademark. Thus, the Respondent intended to create a likelihood of confusion with the SKINCEUTICALS trademark for taking undue advantage thereof.
Second, the Complainant contends that although the Disputed Domain Name is now pointing to an inactive page, a passive holding does not preclude a finding of the use in bad faith.
Moreover, the Complainant submits that there might be a risk that the Respondent is engaged in a phishing scheme since an email server has been configured on the Disputed Domain Name.
Based on the above assertions, the Complainant requests transfer of the Disputed Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Procedural Issues
(i) Language of the Proceeding
The Complaint was filed in English. However, the Registrar confirmed that the language of the Registration Agreement was Vietnamese.
As the Complaint was filed in English, the Center, in its notification dated July 23, 2021, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or (ii) the Complaint translated into Vietnamese, or (iii) a request for English to be the language of the administrative proceedings by July 26, 2021.
On July 26, 2021, the Complainant submitted a request that English be the language of the proceeding. The Respondent submitted neither request nor comment on the language of the proceeding.
According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the Parties’ level of comfortability with each language, the expenses to be incurred, and the possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679).
In the present case, the Panel takes into account the circumstances of the proceeding, including, but not limited to:
(i) the fact that the Complainant, a French business entity, does not appear to be able to communicate in Vietnamese, and therefore, if the Complainant was required to have the documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation;
(ii) the English language is quite popular in Vietnam, where the Respondent is located, and it is also evidenced to the Panel that the website under the Disputed Domain Name used to contain some English contents; these suggest that the Respondent has ample knowledge of the English language and be able to communicate in English; and
(iii) the Respondent had the opportunity to raise objections concerning the language of the proceeding or make known its preference, but it did not provide any response in this regard.
Therefore, for easy comprehension of the Complainant (the party majorly taking part in the proceeding) of the Panel’s decision without any necessity of translations, and in the interest of fairness to both Parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides, under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and shall render its decision in English.
(ii) The Respondent’s Failure to Respond
The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413, and M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default.
B. Identical or Confusingly Similar
The Complainant is required to establish the two following elements: (i) that it has trademark rights, and, if so, (ii) that the Disputed Domain Name is identical or confusingly similar to its trademark.
First, the Panel finds that the Complainant has clearly evidenced that it has registered trademark rights over the SKINCEUTICALS in class 03 in numerous jurisdictions, well before the Disputed Domain Name was registered.
Second, the Disputed Domain Name incorporates the entirety of the SKINCEUTICALS Trademark, in which the Complainant has exclusive rights. The Panel finds, similarly to other UDRP panels, that the addition of the Top-Level Domain suffix “.asia” to the Disputed Domain Name does not prevent a finding of confusing similarity with the SKINCEUTICALS Trademark for the purposes of the Policy (see, e.g., Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012 2066; The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Based on the foregoing findings, the Panel finds that the Disputed Domain Name is confusingly similar to the SKINCEUTICALS Trademark, and paragraph 4(a)(i) of the Policy is established.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists circumstances, in particular, but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy, including:
“(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.”
The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent did not reply to the Complainant’s contentions and, therefore, did not refute the Complainant’s contentions.
The consensus of previous decisions is that while the overall burden of proof in UDRP proceedings is on the complainant, once a prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating its rights or legitimate interests in the Disputed Domain Name (See e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Julian Barnes v. Old Barn Studios, WIPO Case No. D2001-0121).
Regarding paragraph 4(c)(i) of the Policy, the Panel finds that no license, permission, or authorization in any kind to use the SKINCEUTICALS trademark in light of the Complainant’s asserted facts has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any jurisdiction. Thus, the Panel finds that the Respondent has no rights in the trademarks SKINCEUTICALS.
A reseller or distributor may be making a bona fide offering of goods and services and thus have rights or legitimate interests in a domain name if its use meets certain requirements, which are described in the decision Oki Data Americas, Inc. v. ASD, Inc, WIPO Case No. D2001-0903 (“Oki Data”), including:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
According to prior UDRP panels, the Oki Data criteria is appropriate even when the respondent is not an authorized reseller.
In this case at hand, it is well proven and evidenced by the Complainant that the Disputed Domain Name used to resolve towards a website offering cosmetics products for sale, as shown in Annex 1 of the Complaint. On such website, the Panel finds that the Respondent did not place any statement or disclaimer disclosing its relationship with the Complainant accurately. Further, the website under the Disputed Domain Name contained the Complainant’s registered “SKINCEUTICALS ADVANCED PROFESSIONAL SKINCARE” device mark, product images, together with the indication of “Skinceuticals Việt Nam” (in English: “Skinceuticals Viet Nam”), which may mislead consumers into believing in a connection or association between the Respondent and the Complainant, where such connection or association does not exist in reality.
With such a view, the Panel finds that the unauthorized use of the Disputed Domain Name does not meet the Oki Data criteria and thus, does not constitute a bona fide use within paragraph 4(c)(i) of the Policy.
Regarding paragraph 4(c)(ii) and 4(c)(iii) of the Policy, the Panel finds that no evidence would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Name, or that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, as it appears following the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name, the Respondent had full knowledge of the SKINCEUTICALS trademark and had an intention to take unfair advantage of the Complainant’s goodwill and renown worldwide.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element, paragraph 4(a)(ii) of the Policy is established.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, including:
“(i) circumstances indicating that you 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
(ii) you 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 have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The above four circumstances are not exhaustive and bad faith may be found by the Panel alternatively.
The Panel finds that the Complainant has put forth evidence that the Respondent has registered and used the Disputed Domain Names in bad faith. The Respondent did not reply to the Complainant’s contentions and, therefore, did not refute the Complainant’s contentions.
The Panel has considered the Complainant’s assertions concerning the Respondent’s registration of the Disputed Domain Name. In this regard, it is clearly evidenced that the SKINCEUTICALS trademark has been registered worldwide for decades. These trademark registrations well predate the registration of the Disputed Domain Name.
The Panel finds that the SKINCEUTICALS trademark, which is a coined word, without any dictionary meaning, is not descriptive of anything and devoid of meaning other than the products of the Complainant, thus it is very unlikely that the Respondent would have registered the Disputed Domain Name incorporating the trademark in a fortuity. Also, in consideration of the use of the Disputed Domain Name and the contents of the website thereunder, the Panel is of the view that the Respondent obviously knew of the Complainant and its SKINCEUTICALS trademark when it registered the Disputed Domain Name, and the Panel considers the registration is an attempt by the Respondent as to take advantage of the Complainant’s goodwill.
On the date of this Decision, the Disputed Domain Name resolves to an inactive website. However, it is a well-established fact under the UDRP that the passive holding of a domain name does not prevent a finding of bad faith in certain circumstances. See section 3.3, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Rather, in these circumstances, the change in use further supports an inference that the Respondent lacked any good faith explanation for the previous webstore hosted at the disputed domain name.
With such facts, the Panel opines that by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. The diversion of Internet traffic from the Complainant’s site to the Respondent’s site supports a finding of bad faith under paragraph 4(b)(iv) of the Policy.
Further, the Panel notes that the Respondent was involved in a UDRP dispute in 2014, namely Obagi Medical Products, Inc. a/k/a OMP, Inc. v. obagivietnam.com and Phan Thanh Tung, WIPO Case No. D2014-1733. The previous UDRP panel in such case found that the Respondent registered a domain name identical or confusingly similar to another entity’s trademark, and ordered that the disputed domain name be transferred to the concerned the Complainant. The Panel finds this pattern of conduct is clearly a further indication of bad faith.
Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Name was registered and is being used by the Respondent in bad faith, and the third element under paragraph 4(a)(iii) of the Policy is established.
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 <skinceuticals.asia> be transferred to the Complainant.
Pham Nghiem Xuan Bac
Date: September 20, 2021