L'Oréal v Nguyen Viet Duc

WIPO Case No. D2025-1247

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

L’Oréal v. Nguyen Viet Duc

Case No. D2025-1247

1. The Parties

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

The Respondent is Nguyen Viet Duc, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <ceravevn.online> (the “Disputed Domain Name”) is registered with iNET

Corporation (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2025. On March 27, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 28, 2025, 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 (Not disclosed) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 2, 2025, 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 in English on April 2, 2025.

On April 2, 2025, the Center informed the Parties in Vietnamese and English, that the language of the Registration Agreement for the Disputed Domain Name is Vietnamese. On April 2, 2025, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not submit any comment on the Complainant’s submission.

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 Vietnamese of the Complaint, and the proceedings commenced on April 8, 2025. In accordance with

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the Rules, paragraph 5, the due date for Response was April 28, 2025. The Respondent did not submit any
response. Accordingly, the Center notified the Respondent’s default on May 9, 2025.

The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on May 15, 2025. 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. It has a portfolio of 36 brands, employs 86,000 employees, and is present in 150 countries.

CERAVE, a brand of the Complainant, was founded in 2005, known as one of the dermatologists recommended moisturizer brand in the United States of America and available in over 40 countries worldwide.

The Complainant owns numerous CERAVE trademark registrations, including but not limited to International Trademark Registration No. 1365989 registered on June 15, 2017, designating to many countries including Viet Nam.

The Complainant is also the owner of the domain name <cerave.fr>, registered on July 19, 2017.

The Disputed Domain Name was registered on February 4, 2025. The Disputed Domain Name resolves to an active website offering products bearing the Complainant’s CERAVE trademark.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Name as follows:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark, in which the
Complainant has rights.

The Complainant contends that the Disputed Domain Name is confusingly similar to its CERAVE trademark, because the CERAVE trademark is included in its entirety. The addition of the suffix “vn”, an abbreviation corresponding to Viet Nam, only creates the impression that this is associated with a Vietnamese affiliate of the Complainant or one of the official homepages of the Complainant. The generic Top-Level domain (“gTLD”) “.online” is not to be taken into consideration when examining the identity or similarity between the Complainant’s trademarks and the Disputed Domain Name as it is viewed as a standard registration requirement. Therefore, this part is insufficient to avoid a finding of confusing similarity.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

First, the Complainant asserts that the Complainant’s CERAVE trademark preceded the registration of the

Disputed Domain Name for years.

Second, the Respondent is not commonly known by the name “cerave”, in any way affiliated with domain name incorporating said trademark.

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Third, the Complainant submits that the Respondent did not demonstrate, use of, or demonstrable preparations to use, the Disputed Domain Name or name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services. The Disputed Domain Name resolves to a website reproducing Complainant’s trademark and its visuals, offering Complainant’s alleged products for sale with a discount, creating a false affiliation with the Complainant. Consequently, the Disputed Domain Name is not used in any type of legitimate business or services and the Respondent fails to show any intention of noncommercial or fair use of the Disputed Domain Name.

(iii) The Disputed Domain Name was registered and is being used in bad faith.

First, the Complainant submits that the Disputed Domain Name was registered in bad faith because the Respondent was fully aware of the existence of the Complainant’s trademark. In support of this assertion, the Complainant advances the following reasons: (i) the Complainant is well-known throughout the world, including Viet Nam where the Respondent is located; (ii) the composition of the Disputed Domain Name entirely reproduces the Complainant’s trademark; (iii) the Complainant’s CERAVE trademark registrations significantly predate the registration date of the Disputed Domain Name; (iv) a quick trademark search on “cerave” would have revealed to the Respondent the existence of the Complainant and its trademark; and (v) the Respondent concealed its identity and contact details when registering the Disputed Domain Name, preventing the Complainant from making contact.

Second, the Complainant submits that the Respondent uses the Disputed Domain Name to attract the Internet users to a website displaying the Complainant’s logo and offering the Complainant’s products for sale. Such use of the Disputed Domain Name demonstrates the Respondent’s intention to abusively benefit from the Complainant’s reputation.

Therefore, the Complainant considers that the Respondent registered and is using the Disputed Domain

Name in bad faith under the Policy paragraph 4(b)(iii).

With the said arguments, the Complainant requests that the Disputed Domain Name be transferred to the

Complainant.

B. Respondent

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

6. Discussion and Findings

Language of the Proceeding

The language of the Registration Agreement for the Disputed Domain Name is Vietnamese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.

The Complaint was filed in English. The Complainant requested that the language of the proceeding be

English for several reasons, including the fact that:

i. The Complainant has no knowledge of Vietnamese and the use of another language other than English

would impose a burden of cost on the Complainant.

ii. The Disputed Domain Name includes only Latin characters, which strongly suggests that the Respondent
has knowledge of languages other than Vietnamese.

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Iii. English is the primary language for international relations and it is one of the working languages of the

Center.

The Respondent did not make any specific submissions with respect to the language of the proceeding.

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1).

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the Disputed Domain Name. WIPO Overview 3.0, section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The Panel finds that the Complainant has evidenced that it has rights in and to the CERAVE trademark, which was registered in several jurisdictions before the registration of the Disputed Domain Name.

The entirety of the mark is reproduced within the Disputed Domain Name. Accordingly, the Disputed Domain

Name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of the suffix “vn” may bear on assessment of the second and third elements, the Panel
finds the addition of such element does not prevent a finding of confusing similarity between the Disputed

Domain Name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

In addition, the Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.online” to the viewed as a standard registration requirement. WIPO Overview 3.0, section 1.11.1.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

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Having reviewed the available record, the Panel finds 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 rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the Policy or otherwise.

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy, including:

“(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 intent for commercial
gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization in any kind to use the Complainant’s CERAVE trademark has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any jurisdiction related to “cerave”. Thus, the Panel finds that the Respondent has no rights or legitimate interests in the CERAVE trademark.

A reseller or distributor may be making a bona fide offering of goods and services and thus have rights or legitimate interests in a domain name if its use meets certain requirements, which are described in the decision Oki Data Americas, Inc. v. ASD, Inc., (“Oki Data”), WIPO Case No. D2001-0903 including:

- the Respondent must actually be offering the goods or services at issue;

- the Respondent must use the site to sell only the trademarked goods or services (otherwise, there is the
possibility that the Respondent is using the trademark in a domain name to bait consumers and then switch

them to other goods or services);

- the site itself must accurately and prominently disclose the Respondent’s relationship with the trademark

owner; and

- the Respondent must not try to “corner the market” in domain names that reflect the trademark, thus
depriving the trademark owner of the ability to reflect its own mark in a domain name.

In this particular case, the Panel finds that the Disputed Domain Name resolves to an online shop advertising and selling cosmetics bearing the Complainant’s CERAVE trademark. On such website, the Panel finds that the Respondent did not place any statement or disclaimer disclosing accurately and prominently its

relationship with the Complainant. This indication accordingly may mislead Internet users into believing in a
connection or association between the Respondent and the Complainant, where such connection or
association does not exist in reality.

With such a view, the Panel finds that the use of the Disputed Domain Name does not meet the Oki Data criteria and thus, does not constitute a bona fide use within paragraph 4(c)(i) of the Policy.

Regarding paragraphs 4(c)(ii) and 4(c)(iii) of the Policy, the Panel finds no evidence indicating that the Respondent, whether as an individual, business, or entity, is commonly known by the Disputed Domain Name, nor is the Respondent making a legitimate noncommercial or fair use of it. In fact, as it appears

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following the Complainant’s assertions and evidence with regard to the Respondent’s registration of the to gain profit by riding on the goodwill and reputation of the Complainant.

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

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, including:

“(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.”

In the present case, the Panel finds that the Complainant has put forth evidence that the Respondent has
registered and used the Disputed Domain Name in bad faith. The Respondent did not formally reply to the

Complainant’s contentions and, therefore, did not refute the Complainant’s contentions

The Panel has considered the Complainant’s assertions and evidence relating to the Respondent’s
registration and use of the Disputed Domain Name. In this regard, the Panel finds that the Complainant’s
CERAVE trademark has been registered and put in use in, among other countries, Viet Nam where the
Respondent resides. These trademark registrations well predate the registration of the Disputed Domain
Name.

The Disputed Domain Name comprises the Complainant’s CERAVE trademark in its entirety, adding only the geographical term “vn” at the end. Given the extensive use of the CERAVE trademark for cosmetics by the Complainant, which occurs in numerous countries, including in Viet Nam, where the Respondent resides, it is very unlikely that the Respondent registered the Disputed Domain Name in a fortuity. Also, in consideration of the use of the Disputed Domain Name and the content of the associated website, the Panel is of the view that the Respondent obviously knew the Complainant and its CERAVE trademark when it registered the Disputed Domain Name, and the Panel considers the registration is an attempt by the Respondent as to take advantage of the reputation and goodwill of the Complainant’s trademark.

On the date of this Decision, the Panel accesses the Disputed Domain Name and finds that it resolves to an
active website offering discounted products bearing the Complainant’s CERAVE trademark. In addition to
the adoption of the Complainant’s CERAVE trademark as a uniquely distinctive part of the Disputed Domain
Name, the Respondent uses the Complainant’s trademark and logo, which falsely represents itself as the
Complainant’s authorized seller with an exclusive price policy.

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The Panel takes the view that any Internet users seeking to purchase the Complainant’s CERAVE products would likely mistakenly believe that the Respondent is either connected to or associated with the Complainant, while no such connection exists in fact. 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 trademarks as to the source, sponsorship, affiliation, or endorsement of its website, which is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

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

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 <ceravevn.online> be transferred to the Complainant.

/Pham Nghiem Xuan Bac/
Pham Nghiem Xuan Bac
Sole Panelist
Date: May 29, 2025