WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sephora v. Arash Mahooti

Case No. DIR2016-0022

1. The Parties

Complainant is Sephora of Boulogne-Billancourt, France, represented De Gaulle Fleurance & Associés, France.

Respondent is Arash Mahooti of Tabriz, Islamic Republic of Iran, self‑represented.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2016. On August 3, 2016, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. Hard copies of the Complaint were received by the Center on August 5, 2016. On August 7, 2016, 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 Respondent of the Complaint, and the proceedings commenced on August 19, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was September 8, 2016. The Center received informal email communications from Respondent on August 30, 2016, and on September 14, 2016.

The Center appointed Roberto Bianchi as the sole panelist in this matter on September 16, 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.

4. Factual Background

Complainant, founded in 1969 in France, is a distributor of cosmetics in Europe. Complainant is owned by the French group LVMH Moët Hennessy Louis Vuitton.

Complainant owns, inter alia, the following marks:

- SEPHORA, International Registration No. 398767, registered on May 3, 1973 in classes 3, 5, 35 and 42.

- SEPHORA, International Registration No. 749589, registered on October 10, 2000 in classes 3, 5, 8, 16, 18, 20, 21, 24, 25, 26, 35 and 42.

- SEPHORA, International Registration No. 1115480, registered on April 11, 2012 in classes 03, 35 and 44, designating, inter alia, the Islamic Republic of Iran.

- SEPHORA, French Trademark Registration No. 1678120, registered on July 10, 1991 in classes 3, 5, 18, 21, 25, 29, 30, 31, 32, 35 and 44.

Complainant operates several websites, including “www.sephora.com”, offering online store services to consumers.

Respondent registered the disputed domain name on November 3, 2015.

Presently, the disputed domain name redirects to “www.nela.ir”, a website in Persian, where, inter alia, beauty care and cosmetic products are offered for sale.¹

5. Parties’ Contentions

A. Complainant

In its Complaint, Complainant contends as follows:

The disputed domain name is identical to a trademark in which Complainant has rights. The disputed domain name redirects to the website “www.nela.ir”, which offers products clearly identical or similar to the products marketed under the SEPHORA trademarks owned by Complainant. The disputed domain name has incorporated the SEPHORA trademark in its entirety. The only difference between the two is the country code Top-Level Domain “.ir”.

Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that to the best of its knowledge, Respondent holds no intellectual property rights over any mark that contains the term “Sephora”. Complainant further contends that it has not given Respondent any license or authorization to use its SEPHORA trademarks. Complainant adds that it has no business relationship with Respondent, and that there is no reason to justify the choice of the word “Sephora” in Respondent’s business operation. Complainant further contends that Respondent has not made fair use of the disputed domain name, since the disputed domain name redirects to a third-party website, created solely to offer the consumers of beauty products, identical or similar to those offered by Complainant, including hair care, beauty, and skin care products. Complainant concludes that the only reason that Respondent uses the disputed domain name is to make commercial gain in the cosmetic market, by diverting Internet users who search for information on the products sold by Complainant under its SEPHORA trademark. This is a further unfair use of the disputed domain name as it can lead consumers to believe that the website “www.sephora.ir” is a genuine website operated by Complainant, or at least that Complainant has authorized Respondent to operate such a website. Thus, Respondent does not make a legitimate noncommercial or fair use of the disputed domain name.

The disputed domain name was registered or used in bad faith. Complainant operates several websites such as “www.sephora.com” dedicated to the sale and promotion of cosmetics. Those websites are globally accessible. Moreover, any search for “Sephora” conducted with a search engine such as Google leads in the first place to websites relating to Complainant and its products. It follows from the above that Complainant has already obtained a global reputation. Considering the recognition of the SEPHORA trademarks, Respondent was fully aware of Complainant’s prior rights and registered the disputed domain name for the sole purpose of attracting Complainant’s customers, thereby misleading them to a third-party website. The strong notoriety and world renown of Complainant’s trademarks attest that Respondent could not ignore that the registration and use of the disputed domain name would violate Complainant’s rights, especially because Respondent’s website offers cosmetics products. It is impossible that Respondent’s choice to register a domain name identical to Complainant’s marks was purely coincidental. Complainant’s marks are well known, especially in the field of cosmetics products, and Respondent deliberately decided to register a domain name composed exclusively of the word “Sephora” which is identical to Complainant’s marks. Such decision is clearly a proof of bad faith registration. Creating such strong likelihood of confusion between Complainant’s activities and the disputed domain name is a clear example of bad faith not only during the registration process of the disputed domain name but also in the use of disputed domain name. Moreover, it results from Policy, paragraph 4(b), that the disputed domain name shall be considered as registered and used in bad faith when Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark. Respondent’s website sells cosmetics and beauty care products and Complainant sells products similar to those offered on Respondent’s website. Furthermore, Complainant has announced that it will be opening up to seven stores in the Islamic Republic of Iran in the course of the current year. Respondent’s action of registering the disputed domain name prior to the opening of Complainant’s stores in the Islamic Republic of Iran can only be seen as either to confuse consumers or to disrupt the legitimate business of Complainant. The website at the disputed domain name redirects to a different website, “www.nela.ir”, which also sells beauty products similar to those sold by Complainant. There is no notification of this redirection, and it would appear to most Internet users that they are still on the website “www.sephora.ir”. Consequently, even if Respondent were to claim that the website “www.nela.ir” is different from the redirecting website, it would seem to the average Internet user that they are still on the initial website, “www.sephora.ir”. This creates the false impression that the disputed domain name is owned by or connected with Complainant. In previous cases under the Policy, panels decided that a domain name identical to a trademark in which the complainant has rights, which redirected to another website, creates the false impression that the disputed domain names are owned by or connected with the complainant. Most reasonable Internet users would be confused as to whether the complainant is sponsored by or affiliated with the respondent. Respondent acted in this way specifically to confuse consumers as to the source, sponsorship, or affiliation of the goods that are sold on Respondent’s website. When Complainant enters the Iranian market, they will be in direct competition for the same or similar consumers. Respondent responded to this upcoming entry in the Iranian market by registering the disputed domain name and thus plausibly disrupting Complainant’s business in the Iranian market.

B. Respondent

On August 30, 2016, Respondent sent an email to the Center, stating the following:

“Dear Sephora company

Greetings and regards

I spoke with company executives laboratory Nela (www.nela.ir)

He was willing to sell the above domain (www.sephora.ir)

Their suggested retail price is $ 10,000

This domain is for sale

Best regards

Arash Mahooti”

On September 14, 2016, Respondent sent a further email to the Center stating:

“DEAR SIRS

Hi

Respectfully, I should inform you that I am not allowed to transfer to panel

The price of $ 10,000 is provided by the domain owner.

If you want to buy a domain, we can confirm your account number.

Otherwise the domain will be assigned to someone else.

If a person familiar with the language of Iran is Persian or Turkish can contact with me.”

Except for these communications, Respondent did not make any contention in this proceeding.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has shown with printouts of the corresponding that it owns trademark rights in the SEPHORA mark. See section 4 above. The Panel notes that the disputed domain name incorporates the SEPHORA mark in its entirety, adding the ccTLD “.ir”. Accordingly, the Panel finds that the disputed domain name is identical to the SEPHORA mark, in which Complainant has rights.

B. Rights or Legitimate Interests

In the opinion of the Panel, the evidence of the case file supports Complainant’s contentions as set out above. In particular, Complainant has shown that the website at the disputed domain name redirects Internet users to a third-party website, “www.nela.ir”, where beauty products in competition with Complainant are being offered, thus misleading Internet users presumably looking for Complainant’s products and services. This is neither a use in connection with a bona fide offering of goods or services under Policy, paragraph 4(c)(1), nor a fair or noncommercial use without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s mark under Policy, paragraph 4(c)(3). See Sephora v. Whois Data Protection Sp. z o.o. / Paul Tchernitsky of Sephoravip / Radoslaw Szulc of Sephoravip, WIPO Case No. D2014-1283 (“The fact that the Respondent sells products which are competing with the Complainant’s products is further evidence of the lack of rights or legitimate interests of the Respondent”).²

The Panel further notes that there is no evidence showing that Respondent Arash Mahooti, as an individual, business, or other organization, is known – commonly or otherwise – by the name “Sephora”, which makes Policy, paragraph 4(c)(2) inapplicable.

In absence of any contention or evidence in favor of Respondent, the Panel concludes that Complainant has made out its case that Respondent lacks any rights or legitimate interests in the disputed domain name.

C. Registered or Used in Bad Faith

By submitting a printout of a press article published on October 30, 2015, Complainant has shown that it had publicly announced its purpose to open Sephora stores in the Islamic Republic of Iran during 2016. In the Panel’s opinion, the circumstance that Respondent registered the disputed domain name on November 3, 2015, i.e., four days after the publication of that article, and the fact that Internet users presumably looking for Complainant’s mark, stores, and products entering the website at the disputed domain name – are being redirected to “www.nela.ir”, a website offering beauty products in competition with Complainant, suggest that Respondent knew of and targeted Complainant when it registered the disputed domain name.

In the Panel’s opinion, Respondent, acting for itself and/or for a third party, moved quickly after Complainant’s announcement to capture Internet traffic presumably intended for Complainant, and redirected it to a third-party website, by making believe that this website was owned and/or operated by Complainant. In this way, Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such website or location or of a product or service this website or location, which is a circumstance of bad faith use of the disputed domain name under Policy, paragraph 4(b)(iv). Since Policy, paragraph 4(a)(iii) requires that the disputed domain name has been registered or is being used in bad faith, the Panel is satisfied that the third requisite of the Policy is met.

In any case, the Panel notes that Complainant also has proved that Respondent registered the disputed domain name in bad faith. As seen in Respondent’s email dated August 30, 2016 (see section 5.B. above), Respondent offered the disputed domain name for sale to Complainant for a “retail price” amounting to “$ 10,000”. This offer clearly shows that Respondent registered the disputed domain name primarily for the purpose of selling the domain name registration to Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name, which is a circumstance of registration in bad faith under Policy, paragraph 4(b)(i). In the Panel’s opinion, the redirection of the disputed domain name to the website of a competing business appears to be an attempt to induce Complainant to pay the “$ 10,000” price for the disputed domain name.

The Panel concludes that Complainant succeeds in proving bad faith use and registration. Thus, the third requisite of the Policy is met.

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 <sephora.ir> be transferred to Complainant.

Roberto Bianchi
Sole Panelist
Date: September 28, 2016

¹ This is apparent from the visual contents of the “www.nela.ir” website. The Panel also used Google Translate to look up the contents of the “www.nela.ir” website.

² The Panel notes the substantive similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and considers it appropriate to make reference to decisions under the UDRP in support of its findings in the present case.