Generic Top Level Domain Name (gTLD) Decisions

Complainant is L'Oreal USA Creative, Inc., New York, NY, USA ("Complainant"). Respondent is Arkle Internet Ltd., UK ("Respondent").

The domain name at issue is "KIEHLS-SINCE1851.COM", registered with CSL GmbH (a subsidiary of CORE Internet Council of Registrars).

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

Honorable Carolyn Marks Johnson sits as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 08/04/2000; The Forum received a hard copy of the Complaint on 08/03/2000.

On 08/09/2000, CORE Internet Council of Registrars confirmed by e-mail to The Forum that the domain name "KIEHLS-SINCE1851.COM" is registered with CORE Internet Council of Registrars and that Respondent is the current registrant of the name.

On 08/10/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 08/30/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by e-mail. It was also e-mailed to postmaster@kiehls-since1851.com.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, The Forum transmitted to the parties a Notification of Respondent Default.

On 09/06/2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed Honorable Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that The Forum has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, The Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

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

A. Complainant

Complainant contends that Respondent registered a domain name that is identical to Complainant’s common law trademark, KIEHL’S SINCE 1851, and that is confusingly similar to Complainant's registered trademarks, KIEHL’S SINCE 1851, INC, KIEHL’S, and KIEHL’S DISPENSARY. Complainant asserts that Respondent has no legitimate interests in the domain name in question and that Respondent’s registration and use of the domain name is in bad faith.

B. Respondent

Respondent did not respond in this matter.

Complainant is the proprietor of several highly reputed lines of skin and hair care products marketed under the KIEHL’S SINCE 1851 and KIEHL’S trademark. Kiehl’s Since 1851 is a wholly owned subsidiary of Complainant. Complainant is the authorized distributor of the line of products bearing the KIEHL’S family of trademarks.

Complainant owns several U.S. and foreign trademarks containing the terms "Kiehl’s Since 1851" and "Kiehl’s".

Shortly after a feature article in W Magazine, which announced that Kiehl’s would soon be launching an equine shampoo product, Respondent registered the domain name in question. Respondent is a web-company offering specialty services to the Equine Industry.

Respondent is using the domain name as a pointer to direct Internet traffic to its equine related website.

Respondent has ignored the "cease and desist" letter that Complainant sent Respondent.

ICANN Uniform Rule 14(b) provides that, absent exceptional circumstances, the Panel shall draw inferences, as it deems appropriate, from the failure of a party to comply with a provision or requirement of the Uniform Rules. Because Respondent failed to submit a response, the Panel will accept all rational inferences presented in the Complaint.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("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.

Complainant has rights in the common law mark KIEHL’S SINCE 1851 and its registered marks KIEHL’S SINCE 1851, INC, KIEHL’S, and KIEHL’S DISPENSARY.

The only differences between Complainant's marks and Respondent’s domain name are: the elimination of spaces between the words, the deletion of the apostrophe, and the addition of the top-level domain ".com". These slight differences lead the Panel to conclude that Respondent registered a domain name that is identical to Complainant’s common law trademark, KIEHL’S SINCE 1851, and that is confusingly similar to Complainant's registered trademarks, KIEHL’S SINCE 1851, INC, KIEHL’S, and KIEHL’S DISPENSARY. See Julia Fiona Roberts v. Russell Boyd, D2000-0210 (WIPO May 29, 2000) (holding that the domain name <juliaroberts.com> is identical to the mark "Julia Roberts"); Golfer’s Warehouse, Inc. v. Dan Lynch, FA 92532 (Nat. Arb. Forum Mar. 14, 2000) (holding that the domain name <golferswarehouse.com> is identical to the mark "Golfer’s Warehouse"); Beverages And More, Inc. v. Glenn Sobel Mgt., AF-0092 (eResolution Mar. 9, 2000) (holding that the domain name <beveragesandmore.com> is patently identical to the "BEVERAGES, & MORE!" mark).

Complainant contends that Respondent has no rights or legitimate interests in the domain name at issue. Respondent has not denied this claim.

Respondent has not offered any goods or services in connection with the domain name, is not making a legitimate noncommercial use of the domain name and is not commonly known by the domain name. Policy ¶ 4.c.(i) – (iii). The above, in addition to the Respondent’s failure to respond, leads the Panel to determine that Respondent has no rights or legitimate interests in the domain name.

Complainant contends that Respondent has registered and used the domain name in bad faith. Respondent has not denied this claim.

Respondent registered the domain name shortly after the article in W Magazine, which previewed Complainant’s new equine products. Respondent registered the domain name in order to direct Internet users to its website, an equine related website. Registering a domain name to attract Internet users to a website for commercial gain and creating a likelihood of confusion as to the sponsorship or endorsement of that website or the products contained therein is evidence of registration and use in bad faith. Policy ¶ 4.b.(iv). See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where the Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as the Complainant).

The Panel declares that Respondent registered and used the domain name in bad faith.

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name, "KIEHLS-SINCE1851.COM", be transferred from Respondent to Complainant.