Olaplex, Inc. v. Jean Philippe Wincker / WINCKER Compagny
Claim Number: FA2003001889072
Complainant is Olaplex, Inc. (“Complainant”), represented by Jaime Rich Vining of Friedland Vining, P.A., Florida, United States. Respondent is Jean Philippe Wincker / WINCKER Compagny (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <olaplexfrance.com>, registered with Gandi SAS.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 20, 2020; the Forum received payment on March 20, 2020.
On March 25, 2020, Gandi SAS confirmed by e-mail to the Forum that the <olaplexfrance.com> domain name is registered with Gandi SAS and that Respondent is the current registrant of the name. Gandi SAS has verified that Respondent is bound by the Gandi SAS registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 26, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 15, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@olaplexfrance.com. Also on March 26, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 17, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Preliminary Issue: Language of ProceedingS
The Panel notes Complainant’s request that English be the language of this administrative proceeding pursuant to UDRP Rule 11(a). Complainant makes this request in light of the French language Registration Agreement for the disputed domain name. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Evidence exhibiting Respondent’s understanding of the English language should be considered and the parties must not be unduly prejudiced by the use of a language other than that appearing in the registration agreement of the disputed domain name. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the French language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”) In support of its request Complainant points to the facts that its International Distributorship Agreement with Respondent is in the English language and that certain English words appear on the website which resolves from the disputed domain name. Further, it argues that requiring the proceedings to be conducted in French would unduly burden the Complainant which would be forced to bear significant additional burden, expense, and delay by translating the Complaint and other documents. Therefore, pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to indicate the fact that the Respondent is proficient in the English language. Further, Respondent has not filed a response or made any other submission to contest Complainant’s language request despite being notified of the Complaint in both the English and French languages. After considering the circumstance of the present case, the Panel decides that these proceedings will be conducted in English.
A. Complainant
Complainant manufactures, distributes, and sells a professional hair care product that creates and reconnects bonds in the hair. Complainant has rights in the trademark OLAPLEX through its use in commerce dating back to 2014 and its registration of the mark with the United States Patent and Trademark Office (“USPTO”) on June 17, 2014. Respondent’s <olaplexfrance.com> domain name, registered on June 19, 2015, is identical or confusingly similar to Complainant’s mark as it fully incorporates Complainant’s OLAPLEX mark and includes the geographic term “France” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <olaplexfrance.com> domain name. According to the WHOIS information, Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the mark. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or with a legitimate noncommercial or fair use. Instead, Respondent uses the domain name to falsely suggest an association or affiliation with Complainant. Further, Respondent is a former distributor of Complainant’s products but the now-terminated distribution agreement prohibited Respondent from using Complainant’s marks to identify its business.
Respondent registered and uses the <olaplexfrance.com> domain name in bad faith. Respondent uses the <olaplexfrance.com> domain name to falsely suggest that Respondent is an authorized French distributor of Complainant’s products. Respondent’s registration of the disputed domain name in violation of the parties’ distribution agreement and its continued use of the domain name after the agreement’s expiration is indicative of bad faith registration and use. Respondent’s former relationship with Complainant shows that respondent registered the domain name with actual knowledge of Complainant’s trademark rights and thus in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this 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 requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Preliminary Matter – Identification of Proper Complainant
It is a foundational requirement of Policy ¶ 4(a)(i) for the Complainant to demonstrate its ownership of rights in a trademark to which it claims that a disputed domain is confusingly similar. Therefor, the evidence of record must support such claim of trademark rights in the named Complainant. In the present case, Complainant is identified as “Olaplex, Inc.” yet the USPTO registration certificate submitted into evidence displays the name “CHRISTAL, DEAN V.” as the trademark owner. Neither the Complaint or any of its Annexes address this disparity nor the relationship between the named Complainant and the owner of the trademark registration. Although the Policy does not have as strict evidentiary requirements as courtroom litigation, it is incumbent upon a complainant, and its representative, to adequately support such a critical element of proof as the owner of asserted trademark rights.
Nevertheless, exercising its own discretion to conduct the independent investigation of publicly available information afforded by the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the Rules, this Panel has reviewed the assignment records of Complainant’s asserted trademark registration at the USPTO website and found that it is, in fact, currently owned by the named Complainant Olaplex, Inc. resulting from a January 8, 2020 assignment to that entity from CHRISTAL, DEAN V. In light of this information, the case may now proceed with Olaplex, Inc. as the named Complainant.
Complainant asserts rights in the OLAPLEX mark based on registration of the mark with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Accordingly, the Panel finds that Complainant has established rights in the OLAPLEX mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <olaplexfrance.com> domain name is identical or confusingly similar to Complainant’s mark as it fully incorporates Complainant’s OLAPLEX mark, includes the geographic term “France”, and uses the “.com” generic top-level domain (“gTLD”). The addition of a gTLD and a geographic term typically fails to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”). The Panel therefore finds that the <olaplexfrance.com> domain name is confusingly similar to the OLAPLEX mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent lacks rights or legitimate interests in the <olaplexfrance.com> domain name as according to the WHOIS information, Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the mark to identify itself. In considering this issue, WHOIS information may be used to determine whether a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Jean Philippe Wincker/WINCKER Compagny,” and there is no other evidence to suggest that Respondent is known otherwise or that it is authorized to use the OLAPLEX mark to identify itself. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant next contends that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the domain name to falsely suggest an association or affiliation with Complainant. Use of a domain name to give the false impression of association or affiliation with a complainant may not amount to a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See iFinex Inc. v. Yuri Hefetz / Genie-Solution, FA 1789385 (Forum July 9, 2018) (holding that the respondent’s mimicking of the complainant’s website in order to cause existing or potential customers to falsely believe they are setting up a new account with the complainant is prima facie evidence of the respondent’s lack of rights and legitimate interests in the disputed domain name); see also Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) (“The usage of Complainant’s NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off... As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name.”). Complainant asserts that the disputed domain name’s resolving webpage uses Complainant’s mark to falsely suggest to consumers that it is an authorized French distributor of Complainant’s products. Complainant provides screenshots of the resolving webpage and the Panel notes that it gives the impression of originating with, or being authorized by the Complainant including a copyright notice at the bottom stating “© 2020 OLAPLEX FRANCE”. Even assuming that Respondent is offering legitimate products from the Complainant, the website’s lack of any indication as to the present state of Respondent’s relationship with Complainant (or lack thereof) fails to satisfy the test for distributors set out in the seminal case of Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO, Nov. 6, 2001). The Panel therefore finds that Respondent’s use of the <olaplexfrance.com> domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant also asserts that Respondent lacks rights or legitimate interests in the disputed domain name as Respondent is a former distributor of Complainant’s, but the now-terminated distribution agreement prohibited Respondent from using Complainant’s trademarks to identify its business. A distributorship agreement that does not specifically permit use of a complainant’s mark may not convey rights or legitimate interest in a disputed domain name per Policy ¶ 4(a)(ii). See Gen. Ecology, Inc. v. Metcalf, FA 146569 (Forum Apr. 11, 2003) (finding that the respondent lacked rights and legitimate interests in the <seagull-4.com> domain name based in part on the “evidence on record that Respondent was terminated as a distributor of Complainant's SEAGULL products”); Procter & Gamble Co. v. Hlad, FA 126656 (Forum Nov. 20, 2002) (“Respondent, merely a distributor of PUR brand products, has no authorization to use the PUR mark for any trademark purpose, such as the use in the domain name.”) Complainant, via a submitted Declaration of its Intellectual Property Counsel, asserts that Respondent is a former distributor of Complainant’s products but that the agreement expressly prohibited use of Complainant’s trademarks to identify the distributor’s business. The Panel therefore finds that the mere fact of Respondent’s status as a former distributor for Complainant’s products, taking into account the agreement’s restrictions on use of the OLAPLEX mark, does not indicate that Respondent has rights or legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s former relationship with Complainant shows that respondent registered the domain name with actual knowledge of Complainant’s trademark rights. See Vita-Mix Management Corporation v. OOO "WG-STAHL", FA 1725713 (Forum May 30, 2017) (“Respondent must have had actual knowledge of the VITAMIX mark because Complainant previously authorized Respondent to distribute its product until Complainant terminated the non-exclusive distribution agreement on January 16, 2015.”); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Complainant submits into evidence portions of the former distributorship agreement between the parties. The Panel therefore finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s trademark rights.
Complainant next avers that Respondent registered and uses the <olaplexfrance.com> domain name in bad faith. Respondent uses the <olaplexfrance.com> domain name to falsely suggest that Respondent is an authorized French distributor of Complainant’s products. Use of a disputed domain name to pass oneself off as a complainant and sell competing or unauthorized products may indicate bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes itself off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business); see also CWC Direct LLC v. Ju Yu, FA 1599464 (Forum Feb. 16, 2015) (“As Respondent is using the disputed domain name to sell counterfeit or unauthorized goods bearing the COLDWATERCREEK mark, the Panel finds evidence of Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii).”) Complainant asserts that the disputed domain name’s resolving webpage uses the OLAPLEX mark to falsely suggest an association or affiliation with Complainant and Complainant submits screenshots of the resolving webpage. As noted above, this page gives the impression of originating with, or being authorized by the Complainant including a copyright notice at the bottom stating “© 2020 OLAPLEX FRANCE”. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Finally, Complainant asserts that Respondent’s registration of the disputed domain name in violation of the terms of the parties’ distribution agreement and its continued use of the name after the expiration of that that agreement is indicative of bad faith registration and use. Registration of a domain name despite the same being prohibited by a distributorship agreement has been held to indicate bad faith per Policy ¶ 4(a)(iii). See Pedia Pals, LLC v. International Medical Group BV, FA 175286 (Forum Sep. 26, 2003) (finding bad faith where Respondent registered and used a confusingly similar domain name “[n]otwithstanding … the express prohibition against such use contained in the parties’ International Master Distributor Agreement”). The Complainant, via Declaration of its Intellectual Property Counsel and submission of portions of its April 10, 2015 International Distributorship Agreement with Respondent, asserts that Respondent is a former distributor of Complainant’s products but that the agreement expressly prohibited use of Complainant’s mark to identify the distributor’s business. In light of the evidence presented and in the absence of a response or other submission from Respondent in this case, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <olaplexfrance.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: April 22, 2020
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