WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NAOS v. Privacy Protection, Hosting Ukraine LLC / Самураев Константин Николаевич (Samuraev Konstantin)
Case No. D2020-0415
1. The Parties
The Complainant is NAOS, France, represented by Nameshield, France.
The Respondent is Privacy Protection, Hosting Ukraine LLC, Ukraine / Самураев Константин Николаевич (Samuraev Konstantin), Ukraine.
2. The Domain Name and Registrar
The disputed domain name <esthederm.net> is registered with Hosting Ukraine LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2020. On February 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 24, 2020, 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 February 28, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center sent the language of the proceeding document to the Parties in English and Russian. The Complainant filed an amended Complaint on March 2, 2020. On the same date, the Complainant requested that the language of the proceeding be English. The Respondent did not submit any comments on the language of the proceeding.
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 in English and Russian of the Complaint, and the proceedings commenced on March 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 2, 2020.
The Center appointed Assen Alexiev as the sole panelist in this matter on April 17, 2020. 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 was founded in France 40 years ago by the pharmacist-biologist Jean-Noël Thorel. It is a major player in skincare thanks to its three brands: Bioderma, Institut Esthederm and Etat Pur, and is ranked among the top 10 independent beauty companies. The Complainant has more than 2,900 employees and 46 subsidiaries and long-term partnerships with local distributors.
The Complainant is the owner of the following trademark registrations for the brand Institut Esthederm (the “INSTITUT ESTHEDERM trademark”):
- the International trademark INSTITUT ESTHEDERM with registration No. 561670, registered on October 15, 1990 for goods and services in International Classes 3, 5, 21 and 42;
- the International trademark INSTITUT ESTHEDERM PARIS with registration No. 815392, registered on October 16, 2003 for goods and services in International Classes 3, 5 and 44; and
- the European Union trademark INSTITUT ESTHEDERM PARIS with registration No. 003440451, registered
on March 14, 2005 for goods and services in International Classes 3 and 44.
The Complainant is also the registrant of the domain name <esthederm.com>, registered on June 19, 1996.
The disputed domain name was registered on November 18, 2019. It is currently inactive. At the time of filing of the Complaint, it resolved to a parking page offering the disputed domain name for sale.
5. Parties’ Contentions
A. Complainant
The Complainant states that the disputed domain name is confusingly similar to its INSTITUT ESTHEDERM trademark, because the deletion of the non-distinctive term “institut” does not sufficiently distinguish the disputed domain name from the trademark to prevent a finding of confusingly similarity under the Policy.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name, as the Respondent is not commonly known by it and is not related to the Complainant, and the latter has not licensed or authorized the Respondent to use the INSTITUT ESTHEDERM trademark or to register the disputed domain name. The Complainant notes that the disputed domain name resolves to a parking page where it is offered for sale.
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. It points out that the term “Esthederm” has no meaning except in relation with the Complainant and its products, and given the distinctiveness of the Complainant’s trademarks and reputation, it is reasonable to infer that the Respondent has registered the disputed domain name with knowledge of the Complainant’s trademarks. The Complainant submits that the disputed domain name resolves to a parking page displaying a general offer to sell it, and the Respondent has not actively used the disputed domain name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Procedural issue - the language of the proceeding
According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The Complainant has submitted its Complaint in the English language, and requests the proceeding to be held in English. It argues that the translation of the Complaint into Russian would unreasonably burden the Complainant, and points out that the website at the disputed domain name is in English. The Center has sent all its messages to the Respondent in both English and Russian, and has invited the Respondent to express his views on the language of the proceeding. The Respondent has not submitted any observations on the issue and has thus not objected to the Complainant’s request that the proceedings be held in English.
The Complainant has submitted evidence that in February 2020 the disputed domain name resolved to a parking webpage which contained an offer for sale of the disputed domain name. The evidence shows that this webpage and the contact form on it were in English. This shows that the Respondent is ready to communicate in English with parties interested in purchasing the disputed domain name, so it is more likely than not having sufficient command of the English language.
Taking the above into account, the Panel accepts that the Respondent would not be disadvantaged if the language of the proceeding is English, and is satisfied that using the English language in this proceeding would be fair and efficient.
Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English.
6.2. Substantive issues
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify 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 the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the INSTITUT ESTHEDERM trademark.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.net” gTLD of the disputed domain name.
The relevant part of the disputed domain name is therefore the element “esthederm”, which is identical to the distinctive dominant part of the INSTITUT ESTHEDERM trademark, so this trademark is clearly recognizable in the disputed domain name. Where a dominant feature of the relevant trademark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. See section 1.7 of the WIPO Overview 3.0.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the INSTITUT ESTHEDERM trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names, stating that the Respondent is not commonly known by it and is not related to the Complainant, and the latter has not licensed or authorized the Respondent to use the INSTITUT ESTHEDERM trademark or to register the disputed domain name. According to the Complainant, the disputed domain name resolves to a parking page where it is offered for sale. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not submitted a Response. It has not disputed the Complainant’s contentions and has not provided any arguments or evidence in rebuttal of the prima facie case made by the Complainant.
The disputed domain name is confusingly similar to the Complainant’s INSTITUT ESTHEDERM trademark, and Internet users searching for the Complainant’s products under this trademark may be attracted by it. This gives value to the disputed domain name, and this value stems entirely from the goodwill of the Complainant’s trademark, as “esthederm” does not appear to have any meaning unrelated to the Complainant. The Respondent has not used the disputed domain name and has only offered it for sale.
In view of the above, the Panel accepts that it is more likely than not that the Respondent, being aware of the goodwill of the Complainant’s INSTITUT ESTHEDERM trademark, has registered the disputed domain name in an attempt to obtain a commercial gain by exploiting the goodwill of the Complainant’s trademark and selling the disputed domain name for a price that exceeds the cost of registration of the disputed domain name. To the Panel, such conduct is not fair and does not give rise to rights or legitimate interests of the Respondent in the disputed domain name.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(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 a 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.”
The disputed domain name is confusingly similar to the Complainant’s INSTITUT ESTHEDERM trademark, and was registered 19 years after the Complainant registered the trademark. This confusing similarity gives value to the disputed domain name, because it may attract Internet users looking for the Complainant’s Institut Esthederm products, and this value comes from the goodwill of the Complainant and its trademark. Soon after its registration, the Respondent started offering it for sale to the general public. The Respondent has not provided to the Panel any explanation why he has registered the disputed domain name and how he intends to use it.
All the above satisfies the Panel that it is more likely than not that the Respondent had knowledge of the Complainant when he registered the disputed domain name, and that its registration was made targeting the INSTITUT ESTHEDERM trademark primarily for the purpose of selling the disputed domain name to the Complainant or to a third party for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name.
Therefore, the Panel finds that the disputed domain name was registered and is being used in bad faith.
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 <esthederm.net> be transferred to the Complainant.
Assen Alexiev
Sole Panelist
Date: May 1, 2020
