Olaplex, Inc. v Fahad Ali

WIPO Case No. D2023-1224

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Olaplex, Inc. v. Fahad Ali

Case No. D2023-1224

1. The Parties

The Complainant is Olaplex, Inc., United States of America, represented by 101domain.com, United States of America.

The Respondent is Fahad Ali, Qatar.

2. The Domain Name and Registrar

The disputed domain name <olaplex-qatar.com> (the “Domain Name”) is registered with GoDaddy.com, LLC

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2023. On March 21, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 22, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (Information not available on WHOIS) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 28, 2023, 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 April 5, 2023.

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 April 11, 2023. In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 2, 2023.

The Center appointed Mathias Lilleengen as the sole panelist in this matter on May 9, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of

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Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant has operated in the hair care industry since 2014. It has over 100 patents for formulas and
treatments. The Complainant serves customers in over a dozen global regions through a distribution

network of certified stylists in over 25.000 locations.

The Complainant has several trademark registrations for OLAPLEX and its first was registered on November
27, 2013 (International Trademark Registration number 1187399). The Complainant has a portfolio of over
100 domain names, such as <olaplex.com>.

The Domain Name was registered by the Respondent on December 6, 2022. At the time of the Complaint, the Domain Name resolved to a website impersonating the Complainant’s company. At the time of drafting the Decision, the Domain Name resolved to an error page.

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 Domain Name. The Complainant provides evidence of trademark registrations and argue that they
are well known. The Domain Name uses the entirety of the Complainant’s trademark and directs consumers
to an unaffiliated website, comprised of unauthorized OLAPLEX products and images.

The Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain potential customers and garner Internet traffic based on the Complainant’s recognition.
Name. The Respondent reproduces the Complainant’s trademark in the Domain Name without
authorization. The Respondent’s sale of unofficial hair products disrupts the business of the Complainant.
The Respondent is not making a legitimate noncommercial or fair use of the Domain Name. The
Respondent has not provided any evidence of bona fide use of, or demonstrable preparations to use, the

The Complainant argues that the Respondent’s registration of the Domain Name constitutes fraudulent activity, with the intention to direct online consumers to the Respondent’s infringing site. The Domain Name registration prevents the Complainant from reflecting its trademark, and it misleads the Complainant’s customers into believing the Respondent’s website is associated with the Complainant. The Respondent wrongfully profits from the Complainant’s online reputation.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The first element functions primarily as a standing requirement. The test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO

Overview 3.0”), section 1.7.

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The Complainant has established that it has rights in the trademark OLAPLEX. The Domain Name incorporates the Complainant’s trademark in its entirety with “-qatar” added. The addition does not prevent a finding of confusing similarity. For the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the generic Top-Level Domain (“gTLD”); see WIPO Overview 3.0, section 1.11.1.

The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

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. 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.

Based on the evidence, the Respondent is not affiliated or related to the Complainant. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired trademark rights. There is no evidence of the Respondent’s 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. The use of
the Domain Name to sell counterfeited products is not bona fide. Neither would reselling of genuine
OLAPLEX products be legitimate as the Respondent’s website has not “accurately and prominently
disclosed the registrant’s relationship with the trademark holder”, see WIPO Overview 3.0, section 2.8.
Finally, the composition of the Domain Name carries a risk of implied affiliation with the Complainant.

The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.

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.

The composition of the Domain Name and the content of the Respondent’s website makes it evident that the Respondent was aware the Complainant and its prior rights when the Respondent registered the Domain Name. The fact that the Domain Name now resolves to a (non-active) error webpage, does not prevent a finding of bad faith. The Domain Name fully incorporates the Complainant’s trademark together with the country name Qatar. The Respondent has offered no response to the Complaint. Based on the case file, the Panel cannot conceive a good faith use or registration of the Domain name by the Respondent.

For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy.

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7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders the Domain Name <olaplex-qatar.com> be transferred to the Complainant.

/Mathias Lilleengen/
Mathias Lilleengen
Sole Panelist
Date: May 16, 2023