The Complainant is Laboratoires Lierac SA of Paris, France, represented by SafeBrands, France.
The Respondent is Domain ID Shield Service CO., Limited of Hong Kong, China / Dermo Grup, DERMO GRUP Internet Magazacilik San.Tic.A.S. of Alapli, Zonguldak, Turkey.
The disputed domain name <lieracphytolastil.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 17, 2016. On May 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 19, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 20, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center also requested the Complainant to amend the Complaint regarding the Registrar's information. The Complainant filed an amended Complaint on May 24, 2016.
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 of the Complaint, and the proceeding commenced on May 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 14, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 15, 2016.
The Center appointed Steven A. Maier as the sole panelist in this matter on June 23, 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.
The Complainant is a company registered in France and is a specialist in aesthetic medicine. It has been a subsidiary since 1979 of the Alès Group, also located in France, which is a worldwide supplier of cosmetic and related products. The Complainant distributes to the Turkish market via a subsidiary company, Alès Groupe Istanbul Ltd.
The Complainant (or its associated companies referred to above) is the owner of registrations in various jurisdictions for trademarks comprising or including LIERAC, PHYTOLASTIL and LIERAC-PHYTOLASTIL. Those registrations include, for example:
- International trademark number 407865 for PHYTOLASTIL dated May 29, 1974 in Classes 3 and 5 and designating a total of 13 countries (including Turkey);
- International trademark number 1082426 for LIERAC PARIS dated May 16, 2011 in Classes 3, 5 and 35 and designating a total of 26 countries (including Turkey);
- Turkish trademark number 2013 15005 for LIERAC-PHYTOLASTIL registered on February 11, 2014 in Classes 3 and 35.
The disputed domain name was registered on January 24, 2012. At the time of the filing of the Complaint, the disputed domain name resolved to an error page.
The Complainant states that it is the manufacturer of a cosmetic product named "Lierac Phytolastil" which was created in 1975. The product is used for the prevention and correction of stretch marks. The Complainant states that the product is widely known and provides information concerning its corporate activities. It refers to its domain name <lierac.com> which it states it has owned since 2003 and which resolves to an active website promoting its products.
The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant submits that the disputed domain name comprises the terms "lierac" and "phytolastil" without any addition and is therefore identical or confusingly similar to its trademarks LIERAC, PHYTOLASTIL and LIERAC-PHYTOLASTIL.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that the Respondent is not its authorized distributor and has no trademark rights or corporate name that correspond to the disputed domain name. The Complainant denies that the Respondent has used the disputed domain name in connection with any bona fide offering of goods or services. The Complainant submits that, until December 21, 2014, the Respondent used the disputed domain name for the purposes of a website which misleadingly gave the impression that it was the Complainant's own website. The Complainant produces screen prints of the website in question as at October 21, 2014, which prominently features the name "Lierac Phytolastil" and appears to offer the Complainant's product for sale. However, the Complainant contends that there was nothing on the Respondent's website to make clear that the Respondent was unconnected with the Complainant or to distinguish itself from the Complainant's own website. Furthermore, the Respondent used a company name "Ales Group Türkiye Limited" in connection with the website, which misleadingly suggested that it was the Complainant's Turkish subsidiary. In addition, the Complainant submits that the Respondent's website contained a link to a website at "www.dermomarket.com" which offered cosmetic products emanating from the Complainant but also from its competitors. Again the Complainant produces relevant screen shots.
The Complainant contends that the disputed domain name has been registered and is being used in bad faith. The Complainant produces invoices evidencing substantial sales of products including "Phytolastil" through its Turkish distributor in the years from 2012 to 2016 and submits that, based on the Respondent's choice of the disputed domain name and its use of that name, it is obvious that the Respondent was aware of the Complainant's trademarks at the date of registration of the disputed domain name. The Complainant points again to the Respondent's use of the Complainant's trademark for the purposes of a deliberately confusing website and to its use for the sale not only of the Complainant's products but also the Complainant's competitors' products. The Complainant submits that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy).
The Complainant provides evidence of a "cease and desist" communication which it sent to the Respondent on December 4, 2015 and of further follow-up communications. The Complainant states that the disputed domain name was redirected to an "Error" page on December 21, 2014 and that the ownership of the disputed domain name was modified and anonymized in April 20151.
The Complainant requests a transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Even in a case such as this where the Respondent has not contested the Complaint, it is still necessary for the Complainant to establish that all of the three above elements are present.
The Complainant has established that it is the owner of registered trademark rights in the marks LIERAC, PHYTOLASTIL and LIERAC-PHYTOLASTIL. The Panel also finds that the Complainant's trademarks are widely known in the cosmetics sector, in territories including Turkey, to refer to the Complainant and its products. The disputed domain name is comprised exclusively of the Complainant's trademarks (ignoring the generic Top Level Domain ("gTLD") ".com" which is typically to be disregarded for the purposes of paragraph 4(a)(i) of the Policy). Furthermore the disputed domain name is virtually identical to the Complainant's trademark LIERAC-PHYTOLASTIL (it being irrelevant for the purpose of paragraph 4(a)(i) of the Policy that the trademark was registered after the date of registration the disputed domain name). In all the circumstances, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
In the view of the Panel, the contentions advanced by the Complainant as set out above give rise to a prima facie case for the Respondent to answer that it has no rights or legitimate interests in respect of the disputed domain name. While it was open to the Respondent to answer that case, the Respondent has not participated in this administrative proceeding and has not provided any explanation for its registration or its use of the disputed domain name, whether in accordance with any of the criteria set out in paragraph 4(c) of the Policy or otherwise.
Under certain conditions, a respondent who sells trademarked goods under a domain name reflecting that trademark may have rights or legitimate interests in the domain name, even where such sales may be unauthorized by the trademark owner (see, e.g.,paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")). One such condition, however, is that the respondent makes clear its relationship (or lack thereof) with the trademark owner and in the view of the Panel, that condition has not been met in this case. Based on the Panel's review of the evidence submitted by the Complainant, the Panel finds that the Respondent's website used the Complainant's trademarks and was designed to resemble an official or authorized website of the Complainant. The Panel has seen no material on the website which sufficiently identified the Respondent as an independent operator and the Panel concludes, on the contrary, that the Respondent's website passed itself off as being operated or authorized by the Complainant.
A further condition of legitimate use is that the respondent uses the domain name in question to sell only the trademark owner's products. In this case, however, the Panel accepts the Complainant's evidence that the Respondent included a link on its website to another website where it offered products including both the Complainant's and those of the Complainant's competitors.
The Panel concludes in all the circumstances that Respondent's actions did not amount to any bona fide offering of goods or services for the purposes of the Policy and that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The disputed domain name comprises exclusively the Complainant's trademarks and has been used by the Respondent to refer to the Complainant's products. The Panel therefore readily infers that the Respondent was aware of the Complainant's trademarks at the date it registered the disputed domain name and did so with the intention of taking advantage of the Complainant's goodwill in those trademarks.
The Panel also finds that the Respondent has used the disputed domain name for the purpose of a website which gives the misleading impression that it is operated or approved by the Complainant and which links to another website which is used to offer goods including those competitive with those of the Complainant. The Panel therefore finds that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of its website or of products or service on its website (paragraph 4(b)(iv) of the Policy).
It makes no difference to the Panel's assessment that the Respondent ceased to use the disputed domain name for the purpose of the misleading website once it had been notified of this dispute by the Complainant. The Panel is unable to identify any use that the Respondent could legitimately make of the disputed domain name, which remains an instrument of deception in the hands of the Respondent.
The Panel therefore concludes that the disputed domain name has been registered and is being used in bad faith.
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, <lieracphytolastil.com>, be transferred to the Complainant.
Steven A. Maier
Sole Panelist
Date: July 5, 2016
1 The Registrar confirmed in its Registrar Verification to the Center that the Respondent registered the disputed domain name in 2012.