WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
L’Oréal v. “Brilliant Smile” SRL, Alexandru Belinschi
Case No. DMD2019-0001
1. The Parties
The Complainant is L’Oréal, France, represented by Dreyfus & associés, France.
The Respondent is “Brilliant Smile” SRL, Alexandru Belinschi, Republic of Moldova, self-represented.
2. The Domain Name and Registrar
The disputed domain name <kerastase.md> is registered with IT CONCEPT SRL (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2019. On August 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 17 and September 25, 2019 respectively, the Registrar transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on October 9, 2019.
On October 7, 2019, the Center transmitted an email in Romanian and in English to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on October 8, 2019. The Respondent requested that Russian/English be the language of the proceeding on October 7, 2019.
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 of the Complaint, and the proceedings commenced on October 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 30, 2019. The Respondent did not submit a formal Response. The Respondent sent email communications on October 7, a company named Pharmacom LTD sent email communications on October 7 and October 16, 2019 regarding the dispute. The Center sent an email regarding Commencement of Panel Appointment on November 8, 2019 to the Parties.
The Center appointed Mihaela Maravela as the sole panelist in this matter on November 13, 2019. 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. Language of proceedings
The Registrar informed the Center that the language of the Registration Agreement is Romanian.
According to the Rules, paragraph 11(a) and (b), based on the circumstances of this case, the Panel finds that the language of the proceeding should be English for the following reasons:
- the Complainant requested English to be the language of the administrative proceedings arguing, inter alia, that it is located in France and has no knowledge of Romanian. To proceed in this language, the Complainant argues it would have to retain specialized translation services at a cost that are likely to be high. Consequently, the Complainant argues that the use of another language other than English in the proceeding would impose a burden on the Complainant which must be deemed significant in view of the cost for the present proceedings.
- the Respondent Alexandru Belinschi responded in English to the communication from the Center on the language of the proceedings and asked if he could choose Russian or English language;
- it should also be noted that the spirit of paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full consideration to the Parties’ level of comfort with each language. In the present case, although the Registration Agreement for the disputed domain name is in Romanian, the Complainant is not able to communicate in Romanian, while the Respondent appears to understand English, as he specifically requested English and he has submitted an email to the Center in English.
5. Factual Background
The Complainant is a French industrial group specialized in the field of cosmetics and beauty. Created in 1909 by a French chemist, the Complainant is today one of the leading companies and one of the world’s largest groups in the cosmetic industry. The Complainant is present in 150 countries. The Complainant markets 36 global beauty brands including L’OREAL PARIS, L’OREAL PROFESSIONNEL, KERASTASE and thousands of products in all sectors of the beauty business: fragrances, cosmetics, hair care, hair color, skin and body care, men care and skincare devices.
KERASTASE is a brand name used by the Complainant for a range of premium luxury hair care products. This brand name was created by the Complainant in 1964.
The Complainant is the exclusive owner of a number of registered trademarks consisting of the word KERASTASE in various jurisdictions throughout the world, including the following:
- the Moldovan trademark for the word KERASTASE with registration number R 1081, registered on January 23, 1995, renewed, covering goods in class 3;
- the International trademark for the word KERASTASE with registration number 283650, registered on May 15, 1964, renewed, covering goods in classes 1, 2, 3, 5, 9, 10, 11, 16, and 21; and
- the European Union trademark for the word KERASTASE with registration number 013148291, registered on December 29, 2014, covering goods and services in classes 3 and 44.
The Complainant operates, among others, domain names reflecting its trademarks in order to promote its services: <kerastase.com> registered on October 20, 1996, <kerastase.fr> registered on April 1, 2003.
The disputed domain name was registered on August 23, 2018, and is currently inactive because it appears that Registrar disabled the DNS for the disputed domain name after the receipt of the Request for Registrar Verification from the Center (even if it was requested by the Center only to provide confirmation that a “Lock” has been applied to the disputed domain name, in accordance with paragraph 4(b) of the UDRP Rules).
The Complainant sent a cease-and-desist letter to the Respondent in February 2019; Pharmacom LTD responded: “I am very sorry that your client did not purchase this domain when it was free, but we can offer it for sale as it is our main business direction. We have succesfully sold a lot of world known domains to their presentatives as Adidas.md, Orange.md and other.” After few exchanges, the parties were unable to reach agreement.
6. Parties’ Contentions
The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s trademarks, as it reproduces the Complainant’s trademark KERASTASE in its entirety and the country-code Top Level Domain (“ccTLD”) “.md” should be disregarded, as it is viewed as a standard registration requirement.
Further, the Complainant argues that the Respondent is neither 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 trademark. Furthermore, the Respondent has no prior rights or legitimate interests in the disputed domain name. The registration of the trademark KERASTASE preceded the registration of the disputed domain name for years.
In addition, the Complainant argues that the Respondent cannot assert that, before any notice of this dispute, he was using, or had made 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, as the disputed domain name was pointing towards an online retail website in Russian reproducing the Complainant’s KERASTASE logo and offering for sale the Complainant’s KERASTASE and REDKEN products along with competitive products (PAUL MITCHELL, MOROCCANOIL among others). Even if the Respondent was offering genuine KERASTASE and REDKEN products on its website, such use would not automatically grant it rights and legitimate interests, as the Respondent does not appear to comply with the Oki Data test. Specifically, the Complainant argues that the Respondent is using the disputed domain name to sell not only the Complainant’s products but competitors’ products as well, and also that the Respondent’s website has not accurately disclosed the registrant’s relationship with the Complainant. On the contrary, the litigious website was set up in such a way that it created a false affiliation with the Complainant, due to the prominent display of the Complainant’s KERASTASE logo on the website and the sale of the Complainant’s products. The Complainant also argues that there cannot be a legitimate and fair use of the disputed domain name as further to correspondence with the Respondent, and with a company which had been presented by the Respondent as being the holder of the disputed domain name proposed to sell it to the Complainant for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name.
The Complainant also argues that the disputed domain name was registered in bad faith because the disputed domain name entirely reproduces the Complainant’s trademark KERASTASE, which is well known in relation to hair care, and the direction of the domain name towards an online retail website selling the Complainant’s products along with competitive products, clearly demonstrate that the Respondent registered the disputed domain name based on the attractiveness of the Complainant’s trademark and in order to divert Internet traffic to its website. The Complainant contends that the Respondent is using the disputed domain name in bad faith to intentionally attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the goods offered on the Respondent’s website, as the disputed domain name was pointing towards an online retail website in Russian reproducing the Complainant’s KERASTASE logo and offering for sale the Complainant’s KERASTASE and REDKEN products along with competitive products (TIGI COSMETICS, MOROCCANOIL among others).
Apart from the correspondence on the language of the proceedings, the Respondent Alexander Bellinschi has not replied to the Complainant’s contentious.
A company Pharmacom LTD1 , that did not disclose any relationship, if any, with the registrant, submitted a correspondence to the Center saying that it had studied the registered trademark in Moldova named Kerastase and they do not find reasons for violation as “Kerastase”, is the main element of the hair, its natural component, a type of protein that is responsible for the structure of the hair. It refers to the trademark of the Complainant that has a certain font, color and state they see no reason for a free of charge transfer of the disputed domain name. No evidence was submitted with regard to the capacity of this company in relation to the disputed domain name. According to the Rules, the respondent is the holder of a domain-name registration against which a complaint is initiated. In this case, the Registrar confirmed that “Brilliant Smile SRL”, Alexander Bellinschi is the registrant of the disputed domain name and the Respondent did not deny being the beneficial owner of the disputed domain name.
7. Discussion and Findings
Notwithstanding the fact that no formal Response has been filed by the Respondent, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant and informal response from the Respondent.
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”, paragraph 15(a) of the Rules.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:
(i) that the disputed 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 disputed domain name; and
(iii) that the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.
Given the evidence put forward by the Complainant, the Panel is satisfied that the Complainant has proved its rights over the KERASTASE trademark.
As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name with the trademarks in which the Complainant holds rights. According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “this test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”.
Also, according to section 1.7 of the WIPO Overview 3.0, “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”.
Here the disputed domain name incorporates in its entirety the Complainant’s KERASTASE trademarks. This Panel agrees with prior UDRP decisions that have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See, Aldermore Bank Plc v. Hildegard Gruener, WIPO Case No. D2016-1617.
It is well accepted by UDRP panels that a ccTLD, such as “.md”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark.
This Panel concludes that the disputed domain name is identical to the Complainant’s trademarks and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:
(i) before any notice to it of the dispute, the respondent’s use of, 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; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
In the present case the Complainant has established a prima facie case that it holds rights over the trademark KERASTASE and claims that the Respondent has no legitimate reason to acquire and use the disputed domain name.
There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Rather, according to the unrebutted evidence put forward by the Complainant, the disputed domain name resolved to an online retail website reproducing the Complainant’s KERASTASE logo and offering for sale the Complainant’s various products along with competitive products. Such use does not confer in the Panel’s view rights or legitimate interests in the disputed domain name. See e.g. L’Oréal v. Dmitry Makukhin, WIPO Case No. D2016-0137.
Given that the Complainant does not suggest that these are counterfeit products, the Oki Data criteria should be cumulatively met (see WIPO Overview 3.0, section 2.8.1). The Panel considers that these criteria are not met in this case in order for the Respondent to prove that the resale of products was bona fide in the meaning of the Policy.
As such, normally a distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use complies with certain conditions. Such requirements normally include the respondent actually be offering the goods or services at issue, the respondent using the site to sell only the trademarked goods or services, the website accurately and prominently disclosing the registrant’s relationship with the trademark holder. (See WIPO Overview 3.0, paragraph 2.8.1). In this case the website to which the disputed domain name resolved did not disclose the relationship or lack of relationship with the trademark owner and included competitive products such as Tigi Cosmetics and Moroccanoil.
Moreover, even if the Respondent were a distributor of the Complainant, which the Respondent did not allege, in cases where a distributor registers a domain name identical to the complainant’s trademark and in the absence of an authorisation with regard to the use of the trademark in the domain name UDRP panels are of the view that the respondent has no rights or legitimate interests given the risk of initial interest confusion with the trademark owner. See for example General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi, WIPO Case No. D2007-0645. Generally, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation (see WIPO Overview 3.0, section 2.5.1).
Also, there is no evidence indicating that the Respondent is commonly known by the disputed domain name, or the name “kerastase”. See for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei, WIPO Case No. D2014-0957.
Given the evidence in the record, the Panel gives prevalence to the Complainant’s affirmation that no license or authorization was ever given for the use of the trademark KERASTASE in the disputed domain name.
With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
According to the unrebutted assertions of the Complainant, its KERASTASE trademark is widely used in commerce well before the registration of the disputed domain name and had acquired a well-known character. Previous panels have established the well-known character of the trademark KERASTASE in the field of cosmetics and beauty. See L'Oréal v. Haya Manami, WIPO Case No. D2015-0924; L’Oréal v. Tina Smith, WIPO Case No. D2013-0820. The website associated the disputed domain name contained links related to the good offered by the Complainant. Under these circumstances, the Panel considers that the Respondent has registered the disputed domain name with knowledge of the Complainant’s trademark KERASTASE. See MasterCard International Incorporated v. Capital Conservator Group LLC, WIPO Case No. D2009-1051.
The fact that the disputed domain name is identical to the Complainant’s trademarks indicates not only that the Respondent was aware of the Complainant’s business and trademark at the time of registration, but also that it registered the disputed domain name to mislead Internet users into thinking it is in some way connected, sponsored, endorsed by or affiliated with the Complainant’s services. As held in a similar case, “[t]he disputed domain name differs from the Complainant’s trademark only in the selection of the Top-Level extension, indicating that the Respondent was likely aware of the potential for Internet user confusion” (Guinness World Records Limited v. Solution Studio, WIPO Case No. D2016-0186).
In addition, as held by other panels as well, the word “kerastase” appears to be a made-up word, a portmanteau word suggesting both the fibrous protein making up human (and other) hair and nails, keratin, and some form of equilibrium, or stasis. See L’Oréal v. Arfah Husaifah, WIPO Case No. D2012-2255. The word “kerastase” is distinctive and has no meaning in Romanian.
As regards the use of the disputed domain name, given that the Respondent has registered the disputed domain name identical to the trademark of the Complainant, an intention of the Respondent to attract Internet users and consumers for commercial gain by creating a likelihood of confusion with the Complainant and its business can be inferred. See Virgin Enterprises Limited v. On behalf of virgnimedia.com Owner, c/o whoisproxy.com / Tulip Trading Company, WIPO Case No. D2018-1135.
Further, from the evidence put forward by the Complainant and not rebutted by the Respondent, the disputed domain name redirected Internet traffic to an online retail website reproducing the Complainant’s KERASTASE logo and offering for sale the Complainant’s various products along with competitive products. Given the identity between the KERASTASE trademark and the disputed domain name, Internet users would likely be confused into believing that the Complainant is affiliated with the website to which the disputed domain name resolves. This Panel considers it is an indication of bad faith. See also L'Oréal v. Privacy Protection Service Inc d/b/a PrivacyProtect.org / Kadir Tekdoğan, WIPO Case No. D2014-1049.
In the Panel’s view, these circumstances represent evidence of registration and use in bad faith of the disputed domain name. The Respondent failed to bring evidence as to the contrary. Consequently, the Panel concludes that the condition of paragraph 4(a)(iii) of the Policy is fulfilled.
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 <kerastase.md> be transferred to the Complainant.
Date: November 27, 2019
1 The Panel notes in Annex 5 to the Complaint that the Respondent had communicated to the Complainant the email address of the company “Pharmacom LTD” to resolve this dispute before the UDRP Complaint.