WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

L’Oréal v. Dmitry Makukhin

Case No. D2016-0137

1. The Parties

The Complainant is L’Oréal of Paris, France, represented by Dreyfus & Associés, France.

The Respondent is Dmitry Makukhin of Korolev, Russian Federation.

2. The Domain Names and Registrar

The disputed domain names <loreal.moscow>, <kerastase.moscow> and <redken.moscow> are registered with Regional Network Information Center, JSC dba RU-CENTER (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2016. On January 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 26, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Registrar further informed the Center that the language of the Registration Agreement for the disputed domain names was Russian. On February 2, 2016, the Center sent the the language of the proceedings document in both English and Russian, and invited the Complainant to state its position on this issue by February 5, 2016, and the Respondent – by February 7, 2016. On February 2, 2016, the Respondent stated that it did not understand any languages other than Russian. On February 3, 2016, the Complainant filed a statement with which it reiterated its request the proceeding to be held in the English language. On the same date, the Center informed the Parties in both English and Russian that it will accept the Complaint as filed in English and will accept a Response in either English or Russian.

The Center verified that the 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 of the Complaint in both English and Russian, and the proceedings commenced on February 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 3, 2016. Numerous brief emails were received from the Respondent in Russian; however, no formal Response was received from the Respondent. The Respondent denied that it was the registrant of the disputed domain names.

The Complainant requested the suspension of the proceedings on February 16, 2016. On February 19, 2016, the Center suspended the proceedings until March 20, 2016. On March 18, 2016, the Complainant requested an extension to the suspension period. The extension to the suspension period was granted for another 30-day period to April 19, 2016. The Complainant requested the reinstitution of the proceedings on April 18, 2016. The due date of Response was recalculated to May 2, 2016. As no formal Response was received by the due date of response the Center informed the parties of the commencement of panel appointment process in both English and Russian.

The Center appointed Assen Alexiev as the sole panelist in this matter on May 27, 2016. 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.

In respect of the language of the proceeding, the Panel notes the following. According to the information provided by the Registrar, the language of the Registration Agreement for the disputed domain names is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or otherwise specified in the Registration Agreement, the language of the administrative 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. The Complainant has submitted its Complaint in the English language, and requests that the proceeding be held in English on the grounds of fairness and the expeditious resolution of the dispute. The Center has invited the Respondent, in both English and Russian, to state its position on the language of the proceeding, and the Respondent, while insisting that it does not understand languages other than Russian, has made comments on the substance of the Complaint. These statements show that the Respondent has understood the substance of the dispute. In these circumstances, it appears to the Panel that using the English language in this proceeding will be fair and efficient and will not put either of the Parties at a disadvantage, particularly considering that, as communicated to the Respondent in Russian, a Russian language Response would have been considered. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English. At the same time, the Panel will review and take into account all relevant evidence that is available in this case in either Russian or English.

4. Factual Background

The Complainant L’Oréal is a French industrial group specialized in the creation and distribution of products in all sectors of the beauty industry, such as hair color, styling aids, cosmetics, cleansers, and fragrances. It was created in 1909 by a French chemist by the same name. L’Oréal is now one of the world’s leading groups in the cosmetics business. It has over 78,600 employees and is present in 130 countries.

Kérastase 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. Kérastase products are intended for hair professionals and are sold in prestigious hair salons globally. In 2013, Allure’s Best of Beauty Award was given to two products of the Kérastase range of products.

Redken is another brand name used by the Complainant. The products bearing this brand name have developed a strong presence backstage with top designers. Redken products are available in professional beauty salons in over 50 countries.

The Complainant is the holder of the following registration of the trademark L’OREAL (the “L’OREAL trademark”):

- the trademark L’OREAL with registration No.19334, registered on December 28, 1960 in the Russian Federation for goods and services in International Classes 01, 02, 03, 04, 05, 06, 07, 08, 09, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33 and 34;

- the trademark Л’OРЕАЛЬ (Cyrillic transcription of L’OREAL) with registration No.96897, registered on June 27, 1991 in the Russian Federation for goods in International Classes 03 and 05; and

- the trademark L’OREAL with registration No. 0661746, registered on May 13, 1958 in the United States of America for goods in International Class 03.

The Complainant is the holder of the following registrations of the trademark KERASTASE (the “KERASTASE trademark”):

- the trademark KERASTASE with registration No.83792, registered on September 26, 1988 in the Russian Federation for goods in International Class 03; and

- the International trademark KERASTASE with registration No. 522548, registered on April 1, 1988, covering the Russian Federation for services in International Class 42.

The Complainant is the holder of the following registrations of the trademark REDKEN (the “REDKEN trademark”):

- the trademark REDKEN with registration No.81513, registered on July 27, 1987 in the Russian Federation for goods in International Class 03; and

- the European Union trademark REDKEN with registration No. 006156756, registered on July 17, 2008, for goods in International Class 03.

The Complainant and its affiliates own the domain names <loreal.com>, registered on October 24, 1997, <kerastase.com>, registered on October 21, 1996, and <redken.com> registered on February 14, 1996.

The disputed domain names were registered on December 1, 2014. The disputed domain name <loreal.moscow> resolves to a website that imitates an official website of the Complainant and offers for sale products that compete with the products of the Complainant, while the other two disputed domain names resolve to inactive pages.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are confusingly similar to the Complainant’s L’OREAL, KERASTASE and REDKEN trademarks, which are reproduced in their entirety in the disputed domain names. According to the Complainant, the incorporation in a domain name of a well-known trademark in its entirety may be sufficient to establish that the domain name is identical or confusingly similar to the trademark. The Complainant points out that the absence of an apostrophe between the letter “l” and the letter “o” and the absence of the accent on the letter “e” in the disputed domain name <loreal.moscow> do not have any impact on the likelihood of confusion, as the differences are insignificant.

According to the Complainant, the Respondent has no prior rights or legitimate interests in the disputed domain names. The registration of the L’OREAL, KERASTASE and REDKEN trademarks preceded the registration of the disputed domain names for years. The Respondent is not commonly known by the names “L’Oréal”, “Kérastase” or “Redken”; it is not affiliated to the Complainant and is not authorized to use the L’OREAL, KERASTASE and REDKEN trademarks or to seek registration of any domain name incorporating these trademarks. The Respondent does not use the disputed domain names in connection to a bona fide offering of goods or services. The Respondent never answered the Complainant’s cease-and-desist letter.

The Complainant contends that the disputed domain names were registered and are being used in bad faith. The Complainant is wellknown throughout the world, including the Russian Federation where the Respondent is located. In light of the reputation of Complainant’s trademarks, their reproduction in the disputed domain names shows that the Respondent was aware of the existence of these trademarks. If a domain name is obviously connected with a well-known trademark, the use of the domain name by someone with no connection to the trademark suggests opportunistic bad faith.

As the disputed domain names are confusingly similar to the L’OREAL, KERASTASE and REDKEN trademarks, such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s website to the Respondent’s website. Therefore, in the absence of any license or permission from the Complainant to use the L’OREAL, KERASTASE and REDKEN trademarks, no actual or contemplated bona fide or legitimate use of the disputed domain names could reasonably be claimed.

The Complainant points out that the disputed domain name <loreal.moscow> resolves to a website that appears as a website of the Complainant and features competing products. This website creates a likelihood of confusion of consumers who could believe that this website offers authentic services. Therefore, the Respondent is intentionally using the disputed domain name <loreal.moscow> to disrupt the Complainant’s business.

The Complainant further points out that although the disputed domain names <kerastase.moscow> and <redken.moscow> are currently inactive, their passive holding does not preclude a finding of bad faith, given that the KERASTASE and REDKEN trademarks have a strong reputation and are widely known, that the Respondent has provided no evidence of any actual or contemplated good faith use of these two disputed domain names, and that the Respondent has taken steps to conceal its identity. In these circumstances, it is likely that the Respondent has registered these disputed domain names to prevent the Complainant from reflecting its trademarks in them.

The Complainant submits that before starting the present proceeding, it had made efforts to resolve the dispute amicably. On May 22, 2015, the Complainant sent a cease-and-desist letter to the Respondent. However, the Respondent did not reply to this letter.

B. Respondent

The Respondent sent several informal communications to the Center; however, the Respondent did not file a formal Response to the Complaint.

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain names:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the Respondent has registered and is using the disputed domain names in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case, and has chosen not to do so.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…” In the event of a default, under the Rules, paragraph (14)(b): “[…] the Panel shall draw such inferences therefrom as it considers appropriate.”

As stated by the Panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.”

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the L’OREAL, KERASTASE and REDKEN trademarks.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.moscow” part of the disputed domain names.

Therefore, the relevant parts of the disputed domain names that have to be examined are their “loreal”, “kerastase” and “redken” sections. The “loreal” section of the disputed domain name <loreal.moscow> is confusingly similar to the distinctive L’OREAL trademark, the only differences of no practical importance being the absence of an apostrophe between the letter “l” and the letter “o” and the absence of the accent on the letter “e”. The “kerastase” and “redken” sections of the disputed domain names <kerastase.moscow> and <redken.moscow> are identical to the KERASTASE and REDKEN trademarks respectively. Moreover, in the Panel’s view, this makes it likely that Internet users may be confused into believing that the disputed domain names are official online locations of the Complainant.

Taking the above into account, the Panel finds that the disputed domain name <loreal.moscow> is confusingly similar to the L’OREAL trademark, the disputed domain name <kerastase.moscow> is identical to the KERASTASE trademark, and the disputed domain name <redken.moscow> is identical to the REDKEN trademark, in which trademarks the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant is required to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain names. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain names. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain names. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain names, stating that the Respondent is not commonly known by the names “L’Oréal”, “Kérastase” or “Redken”, is not affiliated to the Complainant and is not authorized to use the L’OREAL, KERASTASE and REDKEN trademarks or to seek registration of any domain name incorporating these trademarks. The Complainant has further pointed out that the registration of the L’OREAL, KERASTASE and REDKEN trademarks predates the registration of the disputed domain names for years, and that the Respondent does not use the disputed domain names in connection to a bona fide offering of goods or services. The disputed domain name <loreal.moscow> resolves to a website that imitates an official website of the Complainant and offers for sale products that compete with the products of the Complainant, while the other two disputed domain names resolve to inactive pages. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.

The Respondent has repeatedly stated in its communications to the Center that it is not the owner of the disputed domain names, and that the disputed domain name <loreal.moscow> was approved by the Complainant’s representative office in Moscow. The Respondent further stated that it is not located at the address given for the purposes of the registration of the disputed domain names and that communications to it should be addressed to the representative office of the Complainant in Moscow. Apart from that, the Respondent has not taken any position on the contentions of the Complainant or made any other allegations relevant to the issue of rights or legitimate interests.

The disputed domain names incorporate the distinctive L’OREAL, KERASTASE and REDKEN trademarks entirely without the addition of any other elements. This makes it likely that Internet users may regard the disputed domain names as related to the Complainant. The L’OREAL, KERASTASE and REDKEN trademarks have been registered in the Russian Federation, where the Respondent is located, for many years. The website associated to the disputed domain name <loreal.moscow> offers the Complainant’s products next to products of its competitors. The Panel agrees with the Complainant that such actions could not be regarded as legitimate.

The statements made by the Respondent contradict the information provided by the Registrar who has confirmed that the disputed domain names were registered by the Respondent. The Respondent’s statement that the registration of the disputed domain name <loreal.moscow> was approved by the Complainant’s representative office in Moscow contradicts its own denial of ownership of the same disputed domain name and is not supported by evidence. In view of this, the Panel is not convinced by the Respondent’s statements.

The circumstances of this case lead the Panel to reach a conclusion that the Respondent must be well aware of the business of the Complainant and that it is likely that the Respondent exploits the popularity of the Complainant and of the L’OREAL, KERASTASE and REDKEN trademarks to attract the attention of Internet users and to offer them products that compete with the products of the Complainant. In the Panel’s view, such conduct cannot be regarded as giving rise to rights or legitimate interests of the Respondent. Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain names. The Panel finds with regard to the inactive disputed domain names, as discussed in more detail below, the Respondent cannot be considered as having any rights or legitimate interests in those domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(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 provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.

The facts of this case show that the disputed domain names were registered with knowledge of the reputation and goodwill of the Complainant and of its L’OREAL, KERASTASE and REDKEN trademarks. It cannot be a coincidence that the Respondent registered on the same date all three disputed domain names incorporating the distinctive L’OREAL, KERASTASE and REDKEN trademarks, which at that moment had been registered in the Russian Federation for many years. The Respondent’s website at the disputed domain name <loreal.moscow> makes a clear reference to the Complainant and its products. In this situation, the Respondent is likely to have registered the disputed domain names in view of the goodwill of the L’OREAL, KERASTASE and REDKEN trademarks and their attractiveness to consumers, while at the same time not having obtained an authorization from the Complainant for the registration. This conclusion supports a finding that the Respondent has registered the disputed domain names in bad faith.

The website associated to the disputed domain name <loreal.moscow> offers products of the Complainant and competing products. In the absence of any plausible explanation by the Respondent of its conduct, the Panel is prepared to accept that, by using this disputed domain name, the Respondent has intentionally attempted to exploit the goodwill of the Complainant’s L’OREAL trademark to attract, for commercial gain, Internet users to the website at this disputed domain name.

The disputed domain names <kerastase.moscow> and <redken.moscow> do not resolve to active websites. However, in view of the distinctiveness and popularity of the KERASTASE and REDKEN trademarks and their long-term registration in the Russian Federation, it appears likely to the Panel that the Respondent cannot put them to any legitimate use. In addition, the registration of all three disputed domain names on the same date appears as a pattern of conduct that does not appear as legitimate to the Panel and supports a conclusion that the Respondent has attempted to deny to the Complainant the opportunity to reflect its L’OREAL, KERASTASE and REDKEN trademarks in domain names in the “.moscow” gTLD.

On the basis of all the above the Panel finds that the disputed domain names have been registered and are being used 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 names <loreal.moscow>, <kerastase.moscow> and <redken.moscow> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: June 13, 2016