WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

L’Oréal v. Privacy Service Provided by Withheld for Privacy ehf / KHALID Ajan

Case No. D2021-1636

1. The Parties

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

The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / KHALID Ajan, France.

2. The Domain Name and Registrar

The disputed domain name <kiehls.boutique> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2021. On May 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 26, 2021, 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 27, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 28, 2021.

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 proceedings commenced on June 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 22, 2021.

The Center appointed Emmanuelle Ragot as the sole panelist in this matter on June 28, 2021. 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, L’Oréal, is a French industrial group specialized in the field of cosmetics and beauty and is the first cosmetics group worldwide with a portfolio of 36 brands among which several for “Kielhl’s”, 86,000 employees, and is present in 150 countries.

Its trademark KIEHL'S is a well-known trademark for skin care from natural ingredients and started in the United States of America (“US”) at the end of the XIX century. Kiehl’s unique and extensive background represents a blend of cosmetic, pharmaceutical, herbal, and medicinal knowledge developed and advanced through the generations.

The Complainant is the owner of the following KIEHL’S Trademark Registrations:

- European Union Trademark KIEHL’S No. 001505767, filed on February 14, 2000, registered on March 23, 2001 and duly renewed, covering goods and services in classes 3, 41, 42;

- French Trademark KIEHL’S No. 99811207, registered on September 8, 1999 and duly renewed, covering goods in class 3;

- International Trademark Registration KIEHL’S No. 752476 registered on January 18, 2001, duly renewed, designating inter alia Iceland, Norway, Poland, Switzerland, Turkey and covering goods in class 3;

In addition, the Complainant operates (through its US subsidiary), among others, the following domain name reflecting its trademark in order to promote its services:

- <kiehls.com> registered on April 28, 1998.

The disputed the domain name <kiehls.boutique> is misleading Internet users into believing that the disputed domain name will direct them to the official website of the Complainant promoting and selling the Complainant’s products.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it owns and have used trademarks, that include the trademark KIEHL'S in many territories around the world.

The Respondent has registered the disputed domain name <kiehls.boutique> which, according to the Complainant, is confusingly similar or identical to the KIEHL'S trademark.

The KIEHL'S trademark, is fully reproduced in the disputed domain name <kiehls.boutique>, with the additional word “boutique”.

After examination of the file, no evidence is provided that the Respondent holds any license or any other type of authorization given by the legitimate holders of said trademark and corporate name to use the marks.

The Complainant also alleges that the disputed domain name containing the identical KIEHL'S trademark, is confusingly similar to the KIEHL'S trademark.

The Complainant points out that not only the Respondent’s disputed domain name contains the identical KIEHL'S trademark, but also the additional word “boutique” does not prevent a finding of confusing similarity.

The Complainant states that the Respondent must have been aware of the Complainant and its trademark at the time of registration of the disputed domain name, particularly because of its reputation in cosmetic and beauty. The Complainant claims that the registration of the disputed domain name has been made in bad faith with the apparent intention to obtain a commercial gain by fraud or otherwise through confusion with the Complainant’s trademark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15 (a) of the Rules instructs the Panel to: “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy states that the Complainant must prove that each of the three following elements are present:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respects of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has proven ownership of the registered trademarks for KIEHL'S referred to in section 4 above.

The disputed domain name <kiehls.boutique> is virtually identical or at least confusingly similar to the Complainant’s prior trademarks KIEHL’S.

Indeed, the disputed domain name reproduces in its entirety the Complainant’s trademark KIEHL’S, which previous panels have considered to be “well-known” or “famous” (L’Oréal SA v. Yoyo.email, Giovanni Laporta, WIPO Case No. D2014-1172; Lancôme Parfums Beauté et compagnie and L’Oréal v. Din Mont and Yunleng Mercyk, WIPO Case No. D2016-1721).

In many WIPO UDRP decisions, panels considered that the incorporation of a well-known trademark in its entirety may be sufficient to establish that the domain name is identical or confusingly similar to a complainant’s trademark (L’Oréal, Lancôme Parfums et Beauté & Cie v. Jack Yang, WIPO Case No. D2011‑1627; Rapidshare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059and, The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113).

Additionally, in many WIPO UDRP decisions, it is well established that “where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark” (L’Oréal, Lancôme Parfums et Beauté & Cie v. Jack Yang, see supra; Rapidshare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, see supra and The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., see supra). See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The mere deletion of the apostrophe after the letter “l” does not significantly affect the appearance of the said disputed domain name. In fact, the lack of apostrophe does not change the trademark pronunciation, and is linked to technical constraints in registering a domain name.

Previous UDRP panels have held that the omission of the apostrophe after the letter “l” in the trademark is insignificant. Typographic differences such as the inclusion or omission of grammatical marks such as hyphens and apostrophes are inadequate to avoid a finding of confusing similarity (L’Oreal v. Tracey Johnson, WIPO Case No. D2008-1721and L’Oreal SA v. 张容容, LinChaoJie, Guangxi NanNing IDEA Business Planning Co., Ltd, WIPO Case No. D2010-1318).

The new generic Top-Level-Domain (“gTLD”) <.boutique> is not to be taken into consideration when examining the identity or similarity between the Complainant’s trademarks and the disputed domain name (Red Bull GmbH v. Eric Heyne, WIPO Case No. D2015-0578). The mere adjunction of a gTLD is irrelevant as it is well established that the gTLD is insufficient to avoid a finding of confusing similarity (Haw Par Corporation Limited v. Christophe Fischer, Cedric Sevestre, WIPO Case No. D2019-2475 and Axis AB v. Pierre Vial, Trinum and Alpium SARL, WIPO Case No. D2018-1311).

For all of the above-mentioned reasons, the disputed domain name is confusingly similar to the trademark KIEHL'S in which the Complainant has rights, and therefore the condition of paragraph 4(a)(i) is fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, it found by the Panel to be proved based on is evaluation of all evidence presented, shall demonstrate the Respondent’s rights or legitimate interests to the domain name for purpose of paragraph 4(a)(ii):

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without the intent for commercial gain to misleading divert consumers or to tarnish the trademark or service mark at issue.”

It is well established from previous UDRP panel decisions (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455) that the burden of production shifts to the Respondent where the Complainant establishes a prima facie case showing the lack of rights and legitimate interests of the respondent to the disputed domain name. If the respondent fails to rebut the complainant’s case, a complaint is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

In the present case, the Complainant states that the Respondent has no rights or legitimate interests with respect to its use of the disputed domain name. Furthermore, there is no evidence in the file showing any of the three circumstances under paragraph 4(c) of the Policy, or any other circumstance that would establish rights or legitimate interests of the Respondent.

The Respondent has not submitted any Response and thus failed to demonstrate that he has rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.

The Respondent is not listed as an owner of any trademark containing any “Kiehls” formatives. Nor is there any evidence that the Respondent owns any or has applied for any trademark registrations. There is no evidence that the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name.

The Panel finds, that the second element of the Policy has been established.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

“(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 the 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.”

In the case at hand, the disputed domain name has been registered by the Respondent despite the fact that” KIEHL'S is a well-known trademark.

Furthermore, the nature of the disputed domain name <kiehls.boutique> enhances the false impression that this disputed domain name is somehow officially related to the Complainant, as it may be perceived as one of the Complainant’s official websites.

Accordingly, by registering said domain name, the Respondent has created a likelihood of confusion with the Complainant’s trademark. It is likely that the disputed domain name could mislead Internet users into thinking that it is, in some way, associated with Complainant.

The Panel notes that the disputed domain name <kiehls.boutique> resolves to a website that reproduces the Complainant’s trademark and its visuals, pretending to offer for sale cosmetic products under the Complainant’s trademark. Accordingly, the disputed domain name is used in bad faith.

The Panel finds, that the third element of the Policy has been established.

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 <kiehls.boutique> be transferred to the Complainant.

Emmanuelle Ragot
Sole Panelist
Date: July 12, 2021