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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NAOS v. Arash Ebrahimpour

Case No. DIR2021-0013

1. The Parties

The Complainant is NAOS, France, represented by Nameshield, France.

The Respondent is Arash Ebrahimpour, Islamic Republic of Iran.

2. The Domain Name and Registrar

The disputed domain name <esthederm.ir> is registered with IRNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2021. On June 10, 2021, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On June 12, 2021, IRNIC 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 .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir 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 June 15, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2021. On July 13, 2021, the Center notified the Respondent’s default.

The Center appointed Antony Gold as the sole panelist in this matter on July 16, 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 is a beauty company with its headquarters in Angers, France. It was founded approximately 40 years ago and now has 3,100 employees and sells its products in many countries worldwide.

The Complainant has three brands, namely BIODERMA, INSTITUT ESTHEDERM and ETAT PUR. INSTITUTE ESTHEDERM-branded products are sold in over 130 countries and the Complainant has registered many trade marks to protect this brand. These include, by way of example only, French trade mark, registration number 1590412 for INSTITUTE ESTHEDERM (combined), in classes 3, 5, and 44, filed on April 27, 1990. The Complainant also owns a number of domain names which consist of the term “Esthederm”, including <esthederm.com>.

The disputed domain name was registered on May 13, 2021. It resolves to a parked page entitled “Mr Domain”, which refers to the disputed domain name and states “This domain is for sale”.

5. Parties’ Contentions

A. Complainant

The Complainant says that the disputed domain name is confusingly similar to its INSTITUTE ESTHEDERM trade mark. The deletion of the non-distinctive term “Institute” and the addition of the country-code Top-Level Domain (“ccTLD”) “.ir” is insufficient to escape a finding that the disputed domain name is confusingly similar to the Complainant’s mark. The overall impression created by the disputed domain name is that it is connected to the Complainant’s trade mark.

The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the disputed domain name as the WhoIs information identifies the Respondent as Arash Ebrahimpour. Nor has the Respondent acquired any trade mark rights in ESTHEDERM. Moreover, the Respondent is not affiliated with the Complainant nor does he have any business with it, nor is he authorized by it to use the trade mark INSTITUTE ESTHEDERM. The only use made by the Respondent of the disputed domain name is to point it to a parked page where it is offered for sale, which evidences the Respondent’s lack of rights or legitimate interests.

Once a complainant has made out a prima facie case in relation to the second element, the burden of demonstrating rights or a legitimate interest shifts to the respondent; see, for example, Shutterstock, Inc. v. Rahele Mahdavi, WIPO Case No. DIR2014-0004. If the respondent fails to do so, the complainant is deemed to have satisfied the second element.

Finally, the Complainant says that the disputed domain name was registered or is being used in bad faith. The Complainant is present in more than 100 countries and its INSTITUTE ESTHEDERM trade mark is used worldwide. The term ESTHEDERM has no meaning except in relation to the Complainant and its products. Given the distinctiveness of the Complainant’s trade mark and its reputation, it is reasonable to infer that the Respondent has registered the disputed domain name with full knowledge of the Complainant’s trade mark; see Ferrari S.p.A. v. American, Entertainment Group, Inc, WIPO Case No. D2004-0673. Moreover, the Respondent does not make any use of the disputed domain name. Resolving the disputed domain name to a parked page where it is offered for sale does not amount to active use of it. The Respondent has registered the disputed domain name only in order to sell it to the Complainant, which evidences bad faith registration and use; see Pirelli & C. S.p.a. v. Pedram Givehchy, WIPO Case No. DIR2014-0006.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission, as it considers appropriate.

Paragraph 4(a) of the Policy provides that the Complainant prove each of the following three elements in order to succeed in its Complaint:

(i) the disputed domain name is identical or confusingly similar to a trade mark 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 has been registered or is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence of its trade mark registrations for INSTITUTE ESTHEDERM, full details of one of these marks having been set out above, and has thereby established its rights in this mark.

For the purpose of considering whether the disputed domain name is identical or confusingly similar to the Complainant’s mark, the ccTLD “.ir” is disregarded as this is a technical requirement of registration. The disputed domain name omits the first word of the Complainant’s mark (that is, “institute”), and comprises the entirety of the second, and most distinctive, portion of the Complainant’s mark namely ESTHEDERM.

Although there are some differences between the Policy and the Uniform Dispute Resolution Policy, where the provisions of each policy are the same, as is the case in respect of the first element, it can be helpful to have regard to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). This gives helpful guidance on the question of confusing similarity and section 1.7 explains that; “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. See also SEW-Eurodrive GmbH & Co. KG v. Manzoomeh Negaran, WIPO Case No. DIR2021-0007.

Accordingly, the omission of the word “institute” does not prevent the disputed domain name from being found confusingly similar to the Complainant’s mark as the disputed domain name comprises the dominant component of the Complainant’s mark. The Panel therefore finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides, without limitation examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods or services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.

Doing no more than offering the disputed domain name for sale does not amount to use in connection with a bona fide offering of goods or services. Simply using a domain name to advertise that it is for sale does not support a respondent’s legitimate interest; see, by way of example, Ruby’s Diner, Inc. v. Joseph W. Popow, WIPOCase No. D2001-0868 and Merz Pharma GmbH & Co. KgaA v. Izak Sedighpour, WIPO Case No. DIR2020-0013.

There is no evidence that the Respondent has been commonly known by the disputed domain name and the second circumstance under paragraph 4(c) of the Policy is therefore inapplicable. The third circumstance is also inapplicable; the Respondent is making a commercial use of the disputed domain name and its composition is such that it carries a risk of implied affiliation with the Complainant, which prevents its use from being considered fair.

Once a complainant has made out a prima facie case that a respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it does have such rights or legitimate interests; see by way of example, PRADA S.A. v. AliReza Khansoltani, WIPO Case No. DIR2012-0002. In the absence of any response from the Respondent to the Complaint, it has failed to satisfy that burden. The Panel therefore finds that the Respondent lacks rights or a legitimate interests in the disputed domain name.

C. Registered or Used in Bad Faith

Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance set out at paragraph 4(b)(i) of the Policy, in summary, is that the respondent has registered or acquired the domain name in issue primarily for the purpose of selling, renting, or otherwise transferring it to the complainant for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name.

Given that the ESTHEDERM component of the Complainant’s mark is inherently distinctive and has no known meaning and that the Complainant’s INSTITUTE ESTHEDERM-branded products are sold in over 100 countries and its brand therefore has an international profile, it is highly improbable that the Respondent registered the disputed domain name without an awareness of the Complainant and its trade mark. Moreover it is not possible to conceive of a good faith use to which the Respondent could put the disputed domain name. As explained by the panel in Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765; “the registration of a domain name with the knowledge of the complainant’s trade mark registration amounts to bad faith”. The Panel therefore finds the registration of the disputed domain name to have been in bad faith.

Whilst the website to which the disputed domain name resolves to a parked page offering the disputed domain name for sale to the public, realistically, the only potentially interested purchasers are likely to be the Complainant or one of its competitors. The Respondent has not invited a fixed offer for the sale of the disputed domain name, but it is reasonable to infer that the Respondent is seeking to benefit financially from the intended sale and to be seeking a price in excess of its costs of registration. Such use of the disputed domain name brings it within the circumstance set out at paragraph 4(b)(i) of the Policy. See also, by way of example, Merz Pharma GmbH & Co. KgaA v. Izak Sedighpour (supra) as well as ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425, in which the panel concluded that “[i]n the absence of contrary evidence, awareness of the Complainant’s mark coupled with an offer made to the general public to sell the domain name is evidence of registration and use in bad faith”.

The Panel accordingly finds the disputed domain name was both registered and is being used by the Respondent in bad faith.

7. Decision

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 <esthederm.ir> be transferred to the Complainant.

Antony Gold
Sole Panelist
Date: July 30, 2021

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