The Complainant is Clarins SA of Neuilly Sur Seine, France, represented by Tmark Conseils, France.
The Respondent is Whoisguard Protected of Panama/ Adam Broom of Worcestershire, United Kingdom of Great Britain and Northern Ireland (the “UK”). 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2013. On October 31, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 1, 2013, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on November 4, 2013 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 November 5, 2013 by the Center.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 27, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 28, 2013.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on December 5, 2013. 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
According to the Complaint, the Complainant is a corporation that has been doing business in France for more than 50 years in the field of cosmetics. The company was founded in 1954. At the beginning of the year 1970, the Complainant started to spread internationally. The first subsidiary of the Complainant in the United States of America was created in 1981. At the end of 2005, the Complainant had 19 subsidiary companies and distribution in more than 150 countries.
The Complainant has registered CLARINS as a trademark for various goods and services. The Complainant owns also the domain name registered and in use since March 16, 1997.
The disputed domain name was registered on June 13, 2012. The disputed domain name resolves to a web page that contains links to various websites and pages promoting products competing with those of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant is the owner of the CLARINS trademark registered in several European countries, the United States, Canada, China, and Panama.
The Complainant has registered and used the domain name since March 16, 1997.
The disputed domain name is confusingly similar to the Complainant’s trademark.
The word “foundation” added to the disputed domain name is purely descriptive for the cosmetics and make up goods.
The Respondent is not affiliated in any manner to the Complainant and has never been authorized to use or register in any way the name CLARINS, including as a domain name.
The Respondent is not making a noncommercial or fair use of the disputed domain name, since it is not used in relation with a real proper website. In fact the Respondent only uses it to provide Internet users to access sponsored links in English language. In addition the related webpage indicates that the domain name is for sale. Finally the website display links related to the Complainant’s field of activity: cosmetics and make-up products. The Complainant states that some of these links enable the Internet user to browse through a website which offers the Complainant’s direct competitors goods such as “Yves-Saint Laurent”, “Lancome”, “Elizabeth Arden” and “Rimmel”.
The disputed domain name was registered and is being used in bad faith.
The disputed domain name was registered on June 13, 2012 and at that time the Complainant was already extensively using its trademark CLARINS. The Complainant states that its trademark is well-known in different countries including France.
According to the Complaint, the Respondent has taken steps to cover its identity, which raises suspicions on the Respondent real intentions. The Complainant concludes that there would be no need to hide someone’s identity if a genuine use of the domain name was in play.
The Complainant asserts that the disputed domain name displays sponsored links to commercial websites offering goods identical to those covered by the Complainant’s trademark and more particularly links to the Complainant direct competitor’s goods.
The Respondent is exploiting the Complainant’s trademark in order to gain click through commissions from the diversion of Internet users, which is a common example of registration and use in bad faith.
The Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each and all of the following three elements in order to prevail in these proceedings:
(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 domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant provided evidence that it has prior registered rights in the trademark CLARINS in several countries.
The disputed domain name is confusingly similar to the Complainant’s trademark.
The term “foundation” added to the disputed domain name after the trademark does not change this conclusion. Previous UDRP panels have held that adding common terms to a registered trademark and registering the result as a domain name does not mitigate the confusing similarity between the disputed domain name and the trademark (EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047).
Accordingly, the Panel finds that the Complainant has established the first element under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:
(i) Before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) The respondent is 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 at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed nor authorized the use of its trademark to the Respondent, and there is no indication that the Respondent is commonly known by the disputed domain name.
The present record provides no evidence to demonstrate the Respondent’s intent to use or to make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the webpage at the disputed domain name seems to be a use in bad faith of the disputed domain name as explained in the next section of this Decision.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include "(i) circumstances indicating that [the respondent has] registered or [the respondent has] 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 [the respondent's] documented out-of-pocket costs directly related to the domain name; (iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or of a product or service on [respondent’s] web site or location”.
The Respondent has used the disputed domain name to direct Internet users to web pages offering goods and services competitive with those of the Complainant. This use employs the Complainant's trademark in the disputed domain name for commercial gain by creating Internet user confusion through suggesting source, sponsorship, affiliation or endorsement by Complainant of Respondent’s website. This constitutes bad faith registration and use of the disputed domain name according to paragraph 4(b)(iv) of the Policy.
The Panel determines that the Complainant has established that the Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b) 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 be transferred to the Complainant.
Pablo A. Palazzi
Sole Panelist
Date: December 16, 2013
Full & Egal Universal Law Academy