DECISION

L'Oreal USA Creative, Inc. v CDO

Claim Number: FA0104000097033

PARTIES

The Complainant is L'Oreal USA Creative, Inc., New York, NY, USA (“Complainant”) represented by Robert L. Sherman, of Paul, Hastings, Janofsky & Walker LLP.  The Respondent is Christopher Oratorio CDO, Newark, DE, USA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is "redkin.com" registered with Tucows.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as Panelist in this proceeding.

Hon. R. P. Kerans (retired) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on April 6, 2001; the Forum received a hard copy of the Complaint on April 9, 2001.

On April 9, 2001, Tucows confirmed by e-mail to the Forum that the domain name "redkin.com" is registered with Tucows and that the Respondent is the current registrant of the name.  Tucows has verified that Respondent is bound by the Tucows registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On April 13, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 3, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@redkin.com by e-mail.

A timely response was received and determined to be complete on May 3, 2001. 

A timely additional submission by way of reply was received from the Complainant on May 22, 2001.

On May 15, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon R. P. Kerans (retired) as Panelist.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. The Complainant corporation sells cosmetics, hair care products, and a wide variety of other products under the brand name “Redken”.  This brand name has been in use for forty years.  The Complainant purchased Redken Laboratories, and the brand name, in 1993.

2. The trade name “Redken” was registered in the USA in 1973 respecting some cosmetics, and in 1983 and 1987 respecting others.  It has also been registered in many other countries.

3. The domain name “redkin.com” is confusingly similar to the name “Redken”, in which the Complainant claims a substantial property interest.

4. The Respondent has only registered the domain name “Redkin.com” with the hope of realizing a profit from the sale of the domain name to the Complainant.

5. The Complainant received this email from the Respondent on April 21, 2000:

I have had this domain for some time. I think I may set up an e-commerce site using the name in the next couple of months.  I literally have 45 domain names of witch (sic) I am setting up sites. This name "Redkin" really seems to be able to generate a ton of hits.

Oh, by the way, . . . am putting the name on the market next week before I decide to use it myself. There is about three decent places on the net to sell domain names. Also, I will do a generic bulk mailing to advertise the name. The price is $2,000. non-negotiable and I will handle all the paperwork- If interested just give me an e-mail.

 Last sale of a domain name was OreckXL.com to the Oreck vacuum compamy for $2,500.00 0

            Thanks for your interest,

Chris

B. Respondent

1. The Respondent CDO, also known as Chris Oratario, accuses the Complainant “French Corporation” of attempting to “financially bully” an American citizen.

2. In November, 2000, the Respondent sent an email to “Redken Corporation” offering to transfer the name for $2,000.

3. This was in response to an email offering to buy it.

4. Respondent has a “webmaster certificate” and “it is not for this conglomerate to decide a time frame as to when I need to develop a website”.

5. It has never been my intention nor will I ever in the future create a website for redkin.com that has anything to do with any product or services that Redken offers.

C. Complainant’s Additional Submissions

1. The email does not express itself as a response to an earlier email, or expression of interest.

2. The Respondent does not offer the alleged earlier email in evidence.

3. The email amounts to an admission of a practice of registration of well-known names as domain names, followed by an offer of sale to the owner of the name.

4. The Respondent never says what, if any, business plan he has.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

Identical and/or Confusingly Similar

A customer of Redken products could easily confuse a Redkin site with the Redken products.  It would be an easy spelling mistake for a proper noun where there would be no significant phonetic difference.  I find the names confusingly similar.  See Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that the domain names, <davemathewsband.com> and <davemattewsband.com>, are common misspellings and therefore confusingly similar); see also Reuters Limited v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive);  Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to Complainant’s mark satisfies ¶ 4(a)(i) of the Policy).

Rights or Legitimate Interests

The Complainant has a legitimate legal and commercial interest in its trade mark

The Respondent never does explain what legal or commercial interest he has in the name “Redkin”, or why he chose it or how it is important to any plan to develop the site. See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use); see also Adamovske Strojirny v Tatu Rautiainen, D2000-1394 (WIPO Dec. 20, 2000) (finding that Respondent has no rights or legitimate interests in the domain name where Respondent is not commonly known by the distinct ADAST mark and has made no use of the domain name in question).

Registration and Use in Bad Faith

I infer, from his sending the email to Redken, that the Respondent when he registered the domain name knew perfectly well about the Redken trade name, and knew of the likelihood of confusion.  It is a well-known brand.  See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Ty. Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous and thus Respondent should have been aware of it).

Moreover, he even boasts in the email of selling its own name to another corporation.  He offers no suggestion of any business development plan or any reason why or how he would legitimately use the name. 

The only reasonable inference is that he registered the name for the specific purpose of selling it to Redken.  See Educational Testing Service v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith); see also Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the Respondent demonstrated bad faith when he requested monetary compensation beyond out of pocket costs in exchange for the registered domain name).

In my view, this is a classic case of cybersquatting. 

DECISION

I direct that the domain name redkin.com be transferred to the Complainant.

Hon. R.P. Kerans (retired) , Panelist

Dated: May 29, 2001

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