La Roche-Posay Laboratoire Pharmaceutique v kieu van thien, kieu van
WIPO Case No. D2025-2018
•10-07-2025
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
La Roche-Posay Laboratoire Pharmaceutique v. kieu van thien, kieu van
thien
Case No. D2025-2018
1. The Parties
The Complainant is La Roche-Posay Laboratoire Pharmaceutique, France, represented by Dreyfus & associés, France.
The Respondent is kieu van thien, kieu van thien, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <larocheposay-vietnam.site> is registered with GMO Internet, Inc. d/b/a
Discount-Domain.com and Onamae.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 21, 2025. On
May 21, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On May 26, 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 May 26, 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 on May 27, 2025.
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 May 28, 2025. In accordance with the Rules, paragraph 5,
the due date for the Response was June 17, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Parties of the Respondent’s default on June 18, 2025.
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The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on June 26, 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 is a French company established in 1975 that manufactures and markets dermatological cosmetics and beauty products internationally. It is the proprietor of the following trademarks:
| - | International Trademark No. 787605 for LA ROCHE-POSAY (word mark), registered on July 12, 2002 for goods in classes 3 and 5; |
| - | International Trademark No. 1533143 for LA ROCHE-POSAY (word mark), registered on April 24, 2020 for goods in classes 3 and 5 and designating, inter alia, Viet Nam; |
| - | International Trademark No. 1281149 for (device mark), registered on October 14, 2015 for |
|
The Complainant operates its primary business website at the domain name <laroche-posay.com>.
The disputed domain name was registered on April 26, 2025. At the time the Complaint was filed and of this Decision it resolved to an e-commerce site offering the Complainant’s products for sale and featuring photographs of those products. The site also had a section “La Roche Posay Vietnam”. Currently the site header displays the Complainant’s LA ROCHE POSAY logo next to additional text using the same font and color combination in Vietnamese
The record reflects that the Complainant sent a blocking request to the Registrar and a website deactivation request to the hosting provider on April 30, 2025, followed by several reminders.
No information is available about the Respondent.
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.
Notably, the Complainant contends that its LA ROCHE-POSAY trademark enjoys a worldwide reputation, and is reproduced in its entirety together with a geographical term in the disputed domain name. The
Respondent is not affiliated with the Complainant and is not authorized to use its trademark in any way.
There is no evidence that the Respondent is commonly known by the disputed domain name or that it is making any noncommercial or fair use of it. The disputed domain name resolves to a fraudulent website featuring the Complainant’s trademark and offering its products at low prices. The Respondent falsely
presents itself as La Roche Posay Vietnam in the “About Us” section of the website, misleading Internet
users into believing that the website is operated by the Complainant. The disputed domain name was likely
registered to prevent the Complainant from using its trademarks in a domain name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
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6. Discussion and Findings
Paragraph 4(a) of the UDRP requires the Complainant to make out all three of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
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 of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“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 entirety of the Complainant’s LA ROCHE-POSAY mark is reproduced within the disputed domain name
(without a hyphen). 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 other terms (here, “vietnam” preceded by a hyphen) may bear on assessment of the second and third elements, the Panel finds the addition of such terms 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.
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.
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.
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The Panel notes the composition of the disputed domain name, which reflects the Complainant’s LA ROCHE-POSAY mark followed by a hyphen and the term “vietnam”. Therefore, the Panel finds that the composition of the disputed domain name affirms the Respondent’s intention of taking unfair advantage of the likelihood of confusion between the disputed domain name and the Complainant as to the origin or affiliation of the website at the dispute domain name.
The Panel notes that the website at the disputed domain name features the Complainant’s word mark and offers for sale the Complainant’s products. The Panel also notes that it includes a section “La Roche Posay Vietnam”, providing a postal address in Viet Nam, without featuring any disclaimer as to the (lack of) relationship with the Complainant, according to the Complainant, in furtherance of an appearance of affiliation with the Complainant.
The Respondent has not put forward any rights or legitimate interests. There is no evidence that the activities that would establish the Respondent’s rights therein.
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.
In the present case, the Panel notes that 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 mark. The Panel notes that the disputed domain name was registered over 20 years after the Complainant registered its LA ROCHE-POSAY mark. The composition of the disputed domain name reflects the Complainant’s mark together with the term “vietnam”. Such composition indicates, on the balance of probabilities, that the Respondent intended to take unfair advantage of the likelihood of confusion with the Complainant as to the origin or affiliation of the website at the dispute domain name..
The disputed domain name resolved to a website purporting to offer the Complainant’s products at low prices and featuring the Complainant’s name and marks. The website includes a section “La Roche Posay Viet Nam”, providing a postal address in Viet Nam, without featuring any disclaimer as to the (lack of) relationship with the Complainant In light of the finding that the Respondent has no rights in the disputed domain name, having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under 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 <larocheposay-vietnam.site> be transferred to the Complainant.
/Ingrīda Kariņa-Bērziņa/
Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: July 10, 2025
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