WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kao Brands Company, John Frieda, John Frieda Professional Hair Care Inc. v. Evgeniy Sechin

Case No. D2010-2247

1. The Parties

Complainants are Kao Brands Company of Cincinnati, Ohio, United States of America (“First Complainant”), and John Frieda, John Frieda Professional Hair Care Inc. of Wilton, Connecticut, United States of America (“Second Complainant”); represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.

Respondent is Evgeniy Sechin of Balashika, United States of America.

2. The Domain Name and Registrar

The disputed domain name <john-frieda.com> is registered with SRSplus.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2010. On December 22, 2010, the Center transmitted by email to SRSplus a request for registrar verification in connection with the disputed domain name. On the same day, SRSplus transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 19, 2011.

The Center appointed Daniel Kraus as the sole panelist in this matter on January 26, 2011. 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

First Complainant in the current proceedings is Kao Brands Company, a wholly owned subsidiary of Kao Corporation, a chemical and cosmetics company headquartered in Tokyo, Japan and founded in 1887. First Complainant’s headquarters are based in Cincinnati, United States and founded in 1989. First Complainant is a producer of personal care, household, sanitary, health and beauty care products worldwide.

John Frieda is an English celebrity hair stylist and founder of hair salon and hair product businesses of the same name, born in 1951 in London. He opened his first salon in London in 1976.

John Frieda is the founder and currently the CEO of the John Frieda Professional Hair Care Inc.

John Frieda Professional Hair Care Inc. is a wholly owned subsidiary of First Complainant.

Complainants have rights in the trademarks relating to the brand name JOHN FRIEDA, registered in several countries around the world.

Complainants’ premium beauty brands are primarily targeted at women with the aim to enhance the appearance, health and general well-being of women around the world. Complainants’ brands have become renowned through-out the world and have worldwide operations in North America, Europe, the Middle East and Australia, and serve 54 markets around the world.

Respondent registered the disputed domain name on August 17, 2010.

5. Parties’ Contentions

A. Complainant

Complainants assert that the disputed domain name <john-frieda.com> is identical or confusingly similar to a trademark or service mark in which Complainants have rights.

First Complainant, Kao Brands Company, based in Cincinnati, United States, is a wholly owned subsidiary of Kao Corporation, a chemical and cosmetics company headquartered in Tokyo, Japan. Complainant John Frieda is an English celebrity hair stylist and founder of hair salon and hair product businesses of the same name, born in 1951 in London. Their relation as set out by Complainants is that in 2002 First Complainant acquired “John Frieda Hair Care companies” while Mr. Frieda has remained part of the John Frieda business as CEO of the “John Frieda Hair Care companies”.

Complainants specify that they base their Complaint on the following trademarks:

According to Complainants, JOHN FRIEDA is a household name synonymous with the hair care industry, a fact which Complainants substantiate with signature products with which the brand is used, hair and beauty awards obtained and press features.

Complainants believe that the existence of their trademarks satisfies any contentions of having registered rights to the mark JOHN FRIEDA. They assert that these trademarks are currently used by Complainants in relation to their branded products, including in advertising, as well as through their online retail store at their official site, “www.johnfrieda.com”.

Complainants, their affiliates, branches, subsidiaries and associated companies also own and operate other domain names incorporating the mark JOHN FRIEDA. All of these domain names have been registered before the disputed domain name. Lastly, Complainants also claim that consistent and extensive commercial use of the term “John Frieda” for over 34 years should be considered to give rise to common law rights in the name.

Furthermore, Complainants assert that Respondent is currently passively holding the disputed domain name, that its previous commercial use was not a bona fide offering of goods or services and that Respondent therefore has no rights or legitimate interests in respect of the disputed domain name. Since the disputed domain name was registered without license or authorization from Complainants in relation to the use of its trademark JOHN FRIEDA and Respondent is neither an authorized dealer nor reseller of Complainants, they argue that Respondent’s use of the disputed domain name cannot be legitimate. Complainants also assert that the disputed domain name <john-frieda.com> not only incorporates Complainant’s trademark but had even in design and images been made to appear to be the official John Frieda web page, thereby suggesting a broader relationship with Complainants than in fact is the case, which was deceptive and misleading to consumers.

Complainants argue that no plausible explanation exists as to the incorporation of JOHN FRIEDA trademark into the disputed domain name by Respondent other than to trade on the reputation and goodwill of the JOHN FRIEDA mark, which may be an indication of bad faith. Complainants assert that by using the disputed domain name, Respondent intentionally attempted to attract Internet users on his web page for commercial gain, by creating a likelihood of confusion built upon the registration of a well-known trademark. Respondent had constructive knowledge of Complainants’ mark as they did not only register a domain name which incorporates the mark in its entirety but also sold Complainants’ products from the web site to which the domain name resolved.

B. Respondent

Respondent did not reply to Complainants’ contentions.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, Complainants must prove each of the following in order to obtain the transfer of the disputed domain name:

i. The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights;

ii. Respondent has no rights or legitimate interests in respect of the disputed domain name, and

iii. The disputed domain name has been registered and is being used in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate Respondent’s rights or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) above.

Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of the registration and use of a domain name in bad faith but are not limitative.

A. Identical or Confusingly Similar

As the wholly owned subsidiary of its parent company, Kao Kabushiki Kaisha (also t/a Kao Corporation), First Complainant is considered to have rights in the trademarks owned by such parent company. As clearly stated in Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington, WIPO Case No. D2003-0796. Paragraph 4(a)(i) of the Policy requires, as one element to be proved, that the disputed domain name be identical or confusingly similar to a trademark or service mark in which Complainants have rights. These words do not require that Complainants be the owner of the mark and would include, for example, a licensee of the mark.

It has been accepted in several decisions that a company related as subsidiary or parent to the registered holder of a mark may be considered to have rights in the mark. See for example Miele, Inc. v. Absolute Air Cleaners and Purifiers, WIPO Case No. D2000-0756, where complainant’s grand-parent corporation had a long established U.S. trademark registration for the mark for vacuum cleaners. The decision reads in part: “[t]he Panel finds that Complainant, through its affiliation with its grandparent corporation which owns the trademark registration, has rights in and duties concerning the mark MIELE”.

The Policy does not require that Complainants have exclusive rights in the trademark or service mark, see SMART DESIGN LLC v. CAROLYN HUGHES, WIPO Case No. D2000-0993, in which the panel stated: “It is also abundantly clear from the evidence filed by Respondent that there are literally dozens of other entities trading under and by reference to precisely the same name”. It concluded that:

“In this Panel’s view the test under paragraph 4(a)(i) of the Policy, which makes no mention of ‘exclusive rights’ is or ought to be a relatively easy test for a Complainant to satisfy, its purpose simply being to ensure that Complainant has a bona fide basis for making the Complaint in the first place”.

The existence of such trademark registrations satisfies any contentions of having rights to the JOHN FRIEDA mark. As the wholly owned subsidiary of its parent company, Kao Kabushiki Kaisha (also t/a Kao Corporation), First Complainant should be considered to have rights in the trademarks owned by such parent company due to their close affiliation and the fact that they are part of the same corporate group. And as a wholly owned subsidiary of First Complainant, Second Complainant should also be considered to have rights in the trademarks for purposes of the Policy.

Complainants’ trademarks are currently used by Complainants in relation to their branded products and advertising, as well as through their online retail store at their official site, “www.johnfrieda.com”.

It is clear from the above that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights.

B. Rights or Legitimate Interests

Currently the disputed domain name resolves to an inactive web page. Prior to this, the disputed domain name resolved to a web page which sold John Frieda products. There is no evidence of Respondent’s use of, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Respondent has used the domain name to offer goods and services but, according to Complainants, the offering of such goods or services has not and should not be considered bona fide.

The disputed domain name was registered without license or authorization from Complainants in relation to the use of their trademark JOHN FRIEDA. Respondent is not an authorized dealer or reseller of Complainants’ products and services and has no connection or affiliation with Complainants whatsoever.

In Pitney Bowes Inc. v. Mike Ostanik, WIPO Case No. D2000–1611, the panel ruled that:

“Given that Respondent (a) has never been an authorized sales representative of Pitney Bowes; (b) has never been licensed to use the PITNEY BOWES mark; (c) has never received any approval, expressed or implied, to use the mark in or as part of a domain name; (d) has never received any approval, expressed or implied, to resell Pitney Bowes equipment on its website; and (e) is using Complainant’s trademark as a domain name to bring people to a website that offers goods and services not authorized by Pitney Bowes and competitive to those of Pitney Bowes, Respondent’s use of the domain name cannot be legitimate.”

Similar facts are present in this case.

In Easy Heat Inc. v. Shelter Products, WIPO Case No. D2001-0344, the panel ruled that even if respondent distributes the complainant’s products, this in itself does not give the respondent an “unfettered right to register a domain name incorporating the trademark of the licensor.” In The Stanley Works and Stanley Logistics Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113, the panel held that without authorization or licensing from the trademark owner, the seller of the complainant’s goods does not have a sufficient legitimate interest in complainant’s trademark to “confer the right to use these trademarks as a domain name.” This rule has been upheld in other UDRP cases.

Noting that this case involves an unauthorized reseller (and that some UDRP cases have found the absence of complainant’s authorization sufficient to preclude a finding of rights or legitimate interests), the Panel will nevertheless analyze the present case in light of Oki Data principles, see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. In the current proceedings however, Respondent has failed to satisfy these requirements and does not fulfill the criteria necessary to prove that he has a right or a legitimate interest in the disputed domain name.

In Oki Data Americas, Inc. v. ASD, Inc., supra, the panel concluded that in order to prove that the respondent made a bona fide offering, four minimal elements had to be satisfied. If there is a finding that one of the four elements has not been satisfied, then the respondent may be held to have no rights or legitimate interests in the domain name. In the present case, not all elements are satisfied by Respondent, which consequently has no rights or legitimate interest in the domain name.

The third element requires that the site must accurately disclose the relationship between the Respondent and the trademark owner. However, the relationship between both parties in this case has not been disclosed on the web site. The domain name <john-frieda.com> suggests a broader relationship with Complainants than in fact is the case. The disputed domain name entirely incorporates Complainants’ trademark, and the web page at the disputed domain name was made to appear to be the official John Frieda web page. These are deceptive and misleading to consumers who would otherwise expect to be diverted to Complainants’ official web site (see R.T. Quaife Engineering Ltd. and Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton, WIPO Case No. D2000-1201; Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774).

In addition, Respondent does not seem to have put a disclaimer on the website which would alleviate any confusion by consumers to believe that the Respondent is affiliated with Complainants (Frederick M. Nicholas, Administrator, The Sam Francis Estate v. Magidson Fine Art, Inc., WIPO Case No. D2000-0673). This, to the least, could deceive consumers to believe that Respondent’s website is actually the official website for John Frieda. Such a confusing commercial use is not considered as “legitimate” under the Policy. Respondent has therefore not satisfied all the elements in the Oki Data test and cannot be found to be providing a bona fide offering of goods and services.

In Houghton Mifflin Co. v. The Weatherman, Inc., WIPO Case No. D2001-0211, the panel also decided that “a licensee or reseller using a domain name that consists solely of a trademark owner’s mark must take steps to prevent confusion by making clear in its use of the domain name that it is not the mark owner, even if it offers legitimate goods.” This is ever more so true for a reseller which has no such contractual relationship with the trademark owner. In this case, however, Respondent has failed to do this and on the contrary the examination of the website operated at the disputed domain name reveals that prior to the dispute Respondent used Complainants’ mark, emulated the website in appearance and design, and incorporated images and text from Complainants’ official website. Furthermore the email address that Respondent used on the website ([. . . ] @john-frieda.com) is deceptive in that it suggests to consumers that the website is a place where they can go to have all their questions in relation to John Frieda products answered.

Besides, pursuant to paragraph 4(c)(ii) of the Policy, Respondent has not been commonly known by the name John Frieda. Respondent is known as Evgeniy Sechin, searches by Complainants of International, USPTO and European Community Trademark databases for the name JOHN FRIEDA have yielded no results that associate the name with Respondent.

Respondent is not making a legitimate noncommercial or fair use of the disputed domain name pursuant to paragraph 4(c)(iii) of the Policy. Respondent is using the domain name purely for commercial gain as the use of the disputed domain name previously resolved to a web page which sold John Frieda products. Where the use of a domain name creates confusion as to the source of a product, it cannot be said to be a legitimate interest. As the web page currently resolves to an inactive page, Respondent is currently not making a legitimate noncommercial or fair use of the domain name. Respondent is currently passively holding the domain name and its previous use was not a bona fide offering of goods or services.

Under these circumstances, the Panel takes the view that Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph (4)(a)(ii) of the Policy is also satisfied.

C. Registered and Used in Bad Faith

The proof that the disputed domain name was registered and used in bad faith may be based, in particular but without limitation, on circumstances described in paragraphs 4b(i), (ii), (iii) and (iv) of the Policy. In the present case, the Panel finds the following:

Pursuant to paragraph 4(a)(iii) of the Policy, Respondent registered the domain name in bad faith and also used the domain name in bad faith.

Pursuant to paragraph 4(b)(iv) of the Policy, Respondent, by using the domain name, attempted to attract for commercial gain, Internet users to Respondent’s web page, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site of a product or service on Respondent’s web site.

Use of a trademark as a domain name can cause a high likelihood of consumer confusion. Reasonably prudent consumers could believe the web site at the disputed domain name is the trademark owner’s official site. Respondent has illegitimately traded on Complainants’ goodwill and achieved commercial gain by creating this confusion by diverting Internet users to his own website as a source of products and services.

Respondent has registered a domain name which incorporates Complainants’ entire mark. No plausible explanation exists on the record as to why Respondent selected the name John Frieda as part of the disputed domain name other than to trade on the goodwill of the JOHN FRIEDA mark. Complainants submitted evidence of their presence on the Internet as early as 1998 through the operation of websites and registration of domain names and contend that Complainants’ worldwide reputation and presence on the Internet, indicate that Respondent was or should have been aware of the marks prior to registering the disputed domain name.

From the facts and evidence provided, it would appear that at the time that Respondent registered the disputed domain name, he had actual knowledge of Complainants’ rights to the mark JOHN FRIEDA and the domain name <johnfrieda.com>, and registered the disputed domain name in bad faith to take advantage of the reputation and goodwill of the JOHN FRIEDA mark and name.

As suggested by Complainants, there is no conceivable way Respondent can deny having knowledge of the Complainants’ rights in the term. Respondent used a well-known commercial name. This knowledge may be sufficient to infer bad faith under the Policy, even if Respondent may assert that he did not think he was technically infringing any rights (but did intend to take advantage thereof).

The panel in Stralfors AB v P D S AB, WIPO Case No. D2000-0112, held that where the complainant had registered trademarks prior to the registration of the domain name, where there is “a high probability of individuality and distinctiveness”, and where “it is highly improbable that the Respondent has selected the name without first having noticed the Complainant’s numerous trademark registrations and its wide reputation” in the word used in the domain name, it may in itself be evidence that the domain name was registered in bad faith. In the present case, it is evident that Respondent had knowledge of Complainants’ mark as he did not only register a domain name which incorporates the mark in its entirety but also sold the Complainants’ products from the web site to which the disputed domain name resolved.

Complainants have not authorized or licensed Respondent to register the disputed domain name. Registering a domain name, which contains a well-known trademark belonging to another entity, without any authorization, is indicative of bad faith registration.

The disputed domain name attracted Internet users to the web site. Respondent has used the disputed domain name to sell Complainants’ products but in doing so attempted to trick and confuse the minds of Internet users that Respondent’s site was an official site of Complainants. Internet users who were looking to use the goods and services of Complainants would be misled and deceived by Respondent’s web page. They might have been deceived into believing that they were accessing Complainants’ official web page. Respondent has used the domain name for commercial gain by selling Complainants’ products and has caused a likelihood of confusion by passing off the site as if it were Complainants’ official site. Respondent’s webpage featured Complainants’ products, logos and brands. This indicates Respondent’s apparent intention to suggest an authorization by, or an affiliation with Complainants by creating a likelihood of confusion with Complainants’ mark.

Taking all the circumstances into account, surrounding Respondent’s actions with the domain name registration, including the disputed domain name’s current inactiveness, there is a strong indication of bad faith registration and use.

The Panel therefore concludes that Complainants have satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <john-frieda.com> be transferred to Kao Brands Company (First Complainant).

Prof. Daniel Kraus
Sole Panelist
Dated: February 9, 2011