WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

L’Oreal v. Vogue

Case No. D2012-0144

1. The Parties

The Complainant is L’Oreal, Paris, France, represented by Dreyfus & associés, France.

The Respondent is Vogue, Brooklyn, New York, United States of America (the “US”).

2. The Domain Name and Registrar

The disputed domain name <kerastaseonline.com> is registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2012. On January 27, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On January 27, 2012, GoDaddy.com, LLC 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 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 the Respondent of the Complaint, and the proceedings commenced on February 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 27, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 29, 2012.

The Center appointed John Katz QC as the sole panelist in this matter on March 12, 2012. 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 French company which specializes in the manufacture and sale of cosmetics, beauty preparations, fragrances and related products. It was founded over a century ago. It has now a worldwide presence with representation in virtually every country. It is the world’s largest cosmetics and beauty company.

Although L’Oreal has its headquarters in Paris, its US operations are headed from offices on Fifth Avenue, New York. It is mentioned in the Fortune Global 500. The group itself is represented in more than 130 countries and employs over 66,000 people worldwide.

The brands which belong to L’Oreal include L’Oreal (usually spelled L’Oréal), Garnier, Kérastase, Roger & Gallet, Cacharel, Giorgio Armani, Lancôme, Ralph Lauren, YSL and The Body Shop. It is well known as utilizing the famous Spanish actress Penelope Cruz on many of its posters seen around the world.

The Kérastase brand is used to denote hair care products, a brand that has existed for almost 50 years. It is regarded as a premium product sold only in top end salons. The products in the Kérastase range are used in over 840 luxury salons across the United States.

The group corporate name L’Oreal would undoubtedly qualify as a famous name or mark. The brand Kérastase would also qualify as very well known worldwide including in the US. The brand is widely promoted.

The group has relevant trade mark registrations including the US for the word mark KÉRASTASE. It is constantly reviewed and commented upon by leading fashion and beauty commentators and in magazines.

Whilst the group has its own website there are also product-specific websites dedicated to the individual beauty or grooming products of the group. These include the websites “www.kerastase.com” registered in October 2006, “www.kerastase.fr” registered in April 2003 and “www.kerastase-usa.com” registered in April 2005. These brand specific websites allow a visitor to the site to browse for information, products and to shop on line. All were registered prior to the disputed domain name being registered.

The website associated with the disputed domain name <kerastaseonline.com> is a live website offering what would appear to be genuine Kérastase products for sale. The website shows photographs of the available products displaying them by photographs of the products and using the various trade marks. The front page shows the name “Kérastase Paris” prominently featured, including the acute accent in the spelling. The website also features the usual drop down menus for online shopping including account, shopping cart and checkout.

Significantly the website contains no indication of where it is located, nor does it give any business address, and contact details require an email message to be sent. Indications would suggest that the website is probably located or hosted in the US.

The disputed domain name was registered on May 25, 2008 and is set to expire on May 25, 2013.

Little is known of the Respondent as it did not reply to the Complaint. All that can be gleaned about it and its activities is to be taken from the website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has a strong domain name defence policy and each of its registered trade marks has an associated dedicated website as is clear from the discussion in Section 4 above.

The Complainant further contends that the trade mark KÉRASTASE is extremely well known and would be known and understood to be a product originating with the Complainant. Thus the two trade marks or brands L’OREAL and KÉRASTASE are generally to be seen as linked, the one benefiting from the goodwill of the other.

As the disputed domain name and the associated website utilize the trade mark KÉRASTASE, that use reproduces the registered trade mark and brand in full. The addition of the descriptor “online” is merely a generic addition describing the method of shopping on line via the Internet.

The website with its look and feel and reproduction of the replicas of the products, the brand names and a copyright proclamation deceive visitors to the site into thinking it is a L’Oreal/Kérastase genuine or official site, contrary to the fact.

B. Respondent

Because the Respondent has defaulted it has not put before the Panel any evidence.

It is however a simple enough exercise to access the Respondent’s website and see for oneself the images, drop down menu and screens, products on offer and services available. To that extent some insight can be gained into the activities of the Respondent.

The assumption can reasonably be made that what the Respondent is doing is offering an online shopping service whereby visitors to the site can view and order online genuine Kérastase products. There is nothing to suggest that the products offered for sale are other than genuine products.

6. Discussion and Findings

The Policy adopted by ICANN is directed towards resolving disputes concerning allegations of abuse of domain name registrations.

As part of the process, a complainant must provide evidence and submissions in support of its complaint. The expectation is that the complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the Policy. A respondent is given full opportunity to respond. In this instance, the Respondent has defaulted.

Paragraph 4(a) of the Policy sets out three elements that must be established by a complainant to merit a finding that a respondent has engaged in abuse of domain name registration and to obtain relief. These elements are that:

(i) The respondent’s 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 domain name; and

(iii) The respondent’s domain name has been registered and is being used in bad faith.

Each of three elements must be established by a complainant to warrant relief.

A. Identical or Confusingly Similar

As to the first ground, the disputed domain name must be shown to be identical or confusingly similar to trade marks in which the Complainant has rights.

The Complainant must establish that it has such rights either to common law or registered trade marks or service marks and that the disputed domain name is confusingly similar or identical to those rights.

The Complainant has a number of trade mark registrations and domain name registrations, including in the US, where the Respondent is located. The name or brand KÉRASTASE is sometimes spelled with an “É” and sometimes without.

The disputed domain name reproduce’s the trade mark KERASTASE in full. The suffix “online” is no more than a generic descriptor which accurately and neatly describes the primary function of the website which is to enable visitors to view the KERASTASE products online and if interested to purchase them. The suffix “.com” has consistently been held to add nothing by way of distinction. As it is no more than a gTLD, it is incorporated by reason of functional necessity to enable the domain name and website to operate.

The disputed domain name reproduces the trade mark KERASTASE in full and without alteration. The differences which have been addressed are of no consequence whatever.

Even although not directly applicable under the UDRP, the Panel notes that there is a considerable body of case law in relation to what constitutes the same or identical mark in trade mark jurisprudence.

In the European Court decision of LTJ Diffusion SA v Sardas Vertdaubet SR [2003] FSR 34 the Court considered what constituted use of an identical mark. It held that a mark used by a Respondent is identical with a Complainant’s mark if the former “reproduced without any modification or addition all the elements constituting the trade mark or, where, viewed as a whole, it contains differences so insignificant that they go unnoticed by an average consumer”.

The Panel considers this statement equally applicable to the facts of the present Complaint filed under the UDRP. If one looks at the disputed domain name from the viewpoint of whether or not when viewed as a whole it contains differences so insignificant that they go unnoticed by the average consumer, it must follow that the disputed domain name incorporates the identical mark to that for which the Complainant has protection.

However, even if that was not so there can be absolutely no quarrel with the argument that the disputed domain name is confusingly similar. This must especially be so where the difference is of such a minor nature that to most people it would go unnoticed or at best would simply, if noticed, be dismissed as inconsequential.

The Panel accordingly finds that paragraph 4(a)(i) of the Policy is made out.

B. Rights or Legitimate Interests

As to the second ground, that there are no rights or legitimate interests possessed by the Respondent, the Respondent does not put forward in evidence any business or trading operation known as or by reference to any of the trade marks in suit thereby justifying a right or legitimate interest in the disputed domain name.

Under paragraph 4(a)(ii) a Respondent can justify its registration of the disputed domain name on certain grounds some of which are set out in paragraph 4(c) of the Policy. Such grounds resolve broadly to own name use, bona fide use, or legitimate noncommercial or fair use.

Even though the Respondent has defaulted, it is not sufficient simply to assume from that that the Respondent has no rights or legitimate interests or can claim none.

The Complainant has stated that it has not licensed or authorized the use of its marks by the Respondent.

This section however is the most difficult. There is no reason to doubt that the Respondent is offering for sale online genuine Kérastase products. There is no disclaimer that this is a website not authorized by or associated with the Complainant. The copyright proclamation © might suggest the contrary, as also would the display on the various screens of the Kérastase products.

As the Respondent is registered as Vogue there is perhaps a slight hint of some similar association with the famous fashion magazine known by that name. The contact address of the Respondent registered with GoDaddy.com, LLC is in Brooklyn, New York. That address is in terms of image a far cry from the Fifth Avenue business address of Vogue magazine and also the business address of L’Oreal, US, which is similarly on Fifth Avenue, New York.

The Complainant contends that the Respondent does not and cannot demonstrate any use of the disputed domain name or associated website with any bona fide offering of goods or services. Indeed, the Complainant alleges the Respondent is an opportunist using the trade marks of the Complainant for commercial gain, thereby diverting customers from the Complainant’s legitimate website.

On the assumption that the products offered by the Respondent are genuine Kérastase products they must have been acquired from the Complainant or one of its legitimate or authorized outlets.

The Complainant does not suggest that these are counterfeit products. Nor is there any evidence of competing third party products being offered on the Respondent’s website. Nor is there any evidence of product switching or substitution. In short, the Respondent is not bait advertising.

In the leading decision of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 relating to the disputed domain name <okidataparts.com> the panel there discussed in admiral detail what in a context such as the present constitutes legitimate use. The Panel there began:

“Paragraph 4(c)(i) of the Policy provides that a use is legitimate if, prior to commencement of the dispute, Respondent used the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services.”

The Panel in the Oki Data decision continued by saying that as, in that case, the threshold was crossed, the decision then resolved to a four stage analysis as follows:

“The only issue before the Panel, then, is whether Respondent’s offerings may be characterized as “bona fide”.

To be “bona fide”, the offering must meet several requirements. Those include, at the minimum, the following:

- Respondent must actually be offering the goods or services at issue.

- Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods.

- The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents.

- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.”

In the present case each of these requirements need to be considered. If the Respondent satisfies all four then its conduct, in meeting all these factors, does not constitute a lack of legitimate interest.

(a) Actual offering of the goods at issue. It is apparent that the Respondent does in fact offer to sell and ship the goods, being genuine KÉRASTASE products, advertised and offered for sale on the associated website.

(b) The site is used to sell only trade marked goods. There must be no bait advertising to enable switching of goods. There is no evidence at all that the site offers anything other than the genuine trade marked KÉRASTASE products and no competing products are shown or offered for sale on the website.

(c) The site must accurately disclose the registrant’s relationship with the trade mark owner and must not falsely suggest any link or association with the owner.

The following factors, both individually and in combination, satisfy the Panel that this requirement is not met by the Respondent:

(i) There is no disclaimer clearly stating that the site is not an official site.

(ii) The use of the genuine trade marks including the identical sans serif fonts is suggestive of a link.

(iii) Photographic reproductions on the website screens of the KÉRASTASE products are suggestive of a link.

(iv) The copyright proclamation on the footer of the screen is suggestive of a link.

(v) The use of French words to describe products and product range is suggestive of a link.

(vi) Fairly elaborate displays and drop down menus including a returns policy is suggestive of a link.

As against the above are the following factors in favour of the Respondent:

(i) There are misspellings or typographical errors which would not be expected in a genuine site.

(ii) Some of the product photographs look amateurish as does the site generally. It lacks the sophistication of the L’Oreal and Kérastase genuine sites.

(iii) On the screen “customer service” is a statement under the heading “authenticity and pricing” that the products are 100% authentic and genuine and that “we buy only from direct and authorized distributors”.

(iv) Some statements on the customer service screen (e.g. relating to electrical appliances) would appear to be inapplicable for a beauty products website.

On balance, but by a very fine margin, the Panel finds that ground (c) as set out above from the Oki Data decision is not satisfied in favour of the Respondent. Visitors to the Respondent’s website would likely think that this was a genuine or official Kérastase website or at the very least be in some doubt.

(d) The Respondent must not try to corner the market in all domain names, thus denying the Complainant the opportunity to use its trade mark in its own domain name.

Here there is only one domain name in issue but it is probably the most likely choice for a domain name and website used to offer for sale and purchase online genuine Kérastase products. Thus this requirement is not met by the Respondent even although there is only one domain name in issue. Without doubt the disputed domain name effectively blocks the Complainant from registering as its own domain name one of the most likely name contenders for an online shopping site for genuine L’Oreal sourced products.

As the Respondent has not responded at all to the Complaint, it can be difficult to form any concluded views about its behavior or motives. Nevertheless, as it has chosen not to place any material in argument before the Panel, the inference may properly be drawn that there are no particular defences under the Policy that it would seek to rely upon. It has its opportunity to put such matters before the Panel. If it elects not to do so it cannot be heard to complain if adverse inferences are drawn against it. It is noted that in the Oki Data decision, where the Complaint was denied, the Respondent had put before the Panel a detailed response in defence of its activities. Here there is nothing.

The Panel accordingly finds that paragraph 4(a)(ii) of the Policy is made out.

C. Registered and Used in Bad Faith

As to the third ground, this requires that the disputed domain name be registered and used in bad faith. As has previously been said in other UDRP panel decisions together with earlier decisions of this Panel, both elements must be made out. Accordingly, both registration and use in bad faith have to be established by the Complainant.

Any person who came across the Respondent’s disputed domain name would immediately assume that it was a domain name owned and operated by the Complainant, contrary to the fact.

The disputed domain name was registered in May 2008, almost four years ago. It is not apparent for how long the associated website has been active or live. Accordingly no assumption can be made as to the length of time that the website has been active or live. Nor can any assumptions be made as to when the existence of the website became known to the Complainant as this point has not been addressed in the Complaint.

At the time of registration the Complainant had its own domain name <kerastase-usa.com>. Given that the Respondent likely offers for sale and sells genuine kérastase products it likely also registered the disputed domain name for the purposes of encroaching on the enormous goodwill of the Complainant and its product Kérastase to achieve sales of those products by online shopping.

Whilst that, of itself and without more, is not objectionable under the Policy, there is more in this case. That is the assumption a visitor and purchaser online would assume, but contrary to the fact, that this is indeed a genuine or official L’Oreal/Kérastase website selling first quality goods, backed by L’Oreal’s guarantees of quality and concomitant warranties regarding replacement of faulty product. Clearly a purchaser using the Respondent’s website might but could not return any faulty or deficient product to Kérastase USA or L’Oreal USA. Therein lies the damage to the Complainant. Thus, the disputed domain name was registered in bad faith. It therefore necessarily follows, as the site is active, that there is also use in bad faith, which must also be established.

It must be emphasized that this decision is a very finely balanced one. Further it must not be understood as commenting on the legality of the Respondent offering for sale online genuine Kérastase products. That is not a proper issue for resolution under the Policy. This decision concerns itself solely with the disputed domain name registration and nothing more.

The Panel accordingly finds that paragraph 4(a)(iii) of the Policy is made out.

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 <kerastaseonline.com> be transferred to the Complainant.

John Katz QC
Sole Panelist
Dated: March 23, 2012