Olaplex, Inc. v 张青 (Qing Zhang)
WIPO Case No. D2024-1470
•24-05-2024
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Olaplex, Inc. v. 张青 (Qing Zhang)
Case No. D2024-1470
1. The Parties
The Complainant is Olaplex, Inc., United States of America (“United States”), represented by
101domain.com, United States.
The Respondent is 张青 (Qing Zhang), China.
2. The Domain Name and Registrar
The disputed domain name <olaplexs.org> is registered with West263 International Limited (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2024. On April 9, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 10, 2024, 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 (Information not available on WHOIS) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 10, 2024, 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 12, 2024.
On April 10, 2024, the Center informed the parties in Chinese and English, that the language of the registration agreement for the disputed domain name is Chinese. On April 12, 2024, the Complainant confirmed its request for English to 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 Chinese of the Complaint, and the proceedings commenced on April 16, 2024. In accordance with the
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Rules, paragraph 5, the due date for Response was May 6, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 7, 2024.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on May 14, 2024. 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 one of the largest independent hair care brands in the world with over 100 patents for their formulas and treatments spanning the globe. The Complainant has been operating in the hair care industry since 2014 and has built an entire brand around its brand OLAPLEX.
The Complainant has an international trademark portfolio for its OLAPLEX marks, including but not limited to International Trademark Registration number 1187399, registered on November 23, 2013, in class 3 for various hair product types and services; and United States Trademark Registration No. 4553436, registered on June 17, 2014. The Complainant also has a domain name portfolio including many domain names incorporating its OLAPLEX marks, including <olaplex.com>.
The disputed domain name was registered on December 16, 2023, and is therefore of a later date than the Complainant’s abovementioned trademark registrations. The Complainant provides evidence that the disputed domain name previously directed to an online store impersonating the Complainant and purportedly selling the Complainant’s hair care products. However, the Panel notes that on the date of this Decision, the disputed domain name points to an inactive website.
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.
| that it has a strong reputation for the products under this trademark. The Complainant asserts that the | Notably, the Complainant contends that it is the owner of registered trademarks consisting of OLAPLEX and disputed domain name. |
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B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Preliminary Issue: Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. 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 the Complainant does not understand Chinese and argues that it would be an undue burden to submit Chinese translations; and the fact that the disputed domain name previously directed to a website in English, promoting the Complainant’s products in English and priced in the USD currency with product labels in English, demonstrating that the Respondent has a at least a working knowledge of the English language.
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.
6.2 Substantive Issues
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.
Based on the available record, the Panel finds 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’s mark OLAPLEX is clearly recognizable within the disputed domain name, since the disputed domain name fully incorporates this mark. Accordingly, the disputed domain name is confusingly similar to the Complainant’s mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.
Although the addition of another term, here the letter “s”, may bear on assessment of the second and third elements, the Panel finds the addition of such term 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.
Based on the available record, the Panel finds the first element of the Policy has been established.
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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 domain names 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.
Moreover, upon review of the facts and evidence, the Panel notes that the Respondent has not provided any evidence of the use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Instead, upon review of the facts and the evidence submitted in this proceeding, the Panel notes that the disputed domain name previously directed to an active website
prominently displaying the Complainant’s trademark and seemingly selling the Complainant’s products, noncommercial or fair use of the disputed domain name.
which showed a clear intent on the part of the Respondent to impersonate the Complainant, for commercial
gain. The Panel also finds that there are no other circumstances apparently conferring any rights or
legitimate interests on the Respondent. Given the abovementioned elements, the Panel concludes that the
The Panel notes that on the date of this Decision, the disputed domain name directs to an inactive or blank webpage. In this regard, the Panel finds that holding a domain name passively, without making any use of it, also does not confer any rights or legitimate interests in the disputed domain name on the Respondent in this case (see in this regard earlier UDRP decisions such as Bollore SE v. 赵竹飞 (Zhao Zhu Fei), WIPO Case No. D2020-0691; and Vente-Privee.Com and Vente-Privee.com IP S.à.r.l. v. 崔郡 (jun cui), WIPO Case No. D2021-1685).
Based on the available record, 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 registered a domain name which is confusingly that by registering the disputed domain name, the Respondent deliberately and consciously targeted the Complainant’s prior well-known trademarks for OLAPLEX. The Panel finds that this creates a presumption of bad faith. The Panel also notes that the Complainant’s trademarks in this case predate the registration date of the disputed domain name by several years, and that the Respondent could not have been
similar to the Complainant’s intensely used and well-known trademarks, see in this regard also previous
decisions under the Policy which have recognized the Complainant’s trademarks as well-known, such as
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reasonably unaware of them. This finding is confirmed by the fact that the Respondent attempted to domain name would have made it clear to the Respondent that the Complainant owned prior rights in its trademarks for OLAPLEX. In the Panel’s view, the above elements clearly indicate bad faith on the part of the Respondent, and the Panel therefore finds that it has been demonstrated that the Respondent registered the disputed domain name in bad faith.
misrepresent itself as the Complainant by connecting the disputed domain name to an imposter website.
As to use of the disputed domain name in bad faith, the Complainant provides evidence that the disputed domain name directed to an active website prominently displaying the Complainant’s trademark and seemingly offering for sale the Complainant’s hair care products, and which showed a clear intent on the part of the Respondent to misleadingly pass it off as the Complainant’s website. The Panel concludes from these facts that the Respondent is intentionally attracting Internet users for commercial gain to such website, by creating consumer confusion between the website associated with the disputed domain name and the Complainant’s trademarks. This constitutes direct evidence of the Respondent’s bad faith under paragraph 4(b)(iv) of the Policy. The Panel therefore finds that it has been demonstrated that the Respondent has used and is using the disputed domain name in bad faith.
The Panel notes that on the date of this Decision, the disputed domain name directs to an inactive or blank website. Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available
record, the Panel finds the non-use of the disputed domain name does not prevent a finding of bad faith in and longstanding use of the Complainant’s trademarks, the composition of the disputed domain name, the fact that the Respondent has not replied or cooperated in this procedure, the previous use of the disputed domain name in connection with an impersonation website, and the provision of false or incomplete contact details by the Respondent when registering the disputed domain name (the courier service was not able to deliver the Written Notice), and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.
the circumstances of this proceeding. Although panelists will look at the totality of the circumstances in each
case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the
degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a
response or to provide any evidence of actual or contemplated good-faith use, and (iii) the respondent’s
concealing its identity or use of false contact details (noted to be in breach of its registration agreement).
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 <olaplexs.org> be transferred to the Complainant.
/Deanna Wong Wai Man/
Deanna Wong Wai Man
Sole Panelist
Date: May 24, 2024
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