Complainant is Clarins of Dumas, Neuilly Sur Seine, France, represented by Tmark Conseils, France.
Respondent is Mehmet Besiroglu (Plus Page Rank) of Konya, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with N LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 26, 2013. On December 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January, 1, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on January 6, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 30, 2014.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on February 13, 2014. 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
Complainant is a French company, active in the field of cosmetics, make-up and perfumery goods, for more than 50 years.
Complainant owns several trademark registrations for CLARINS worldwide (as per Annex 5 of the Complaint), including the following:
France: French trademark Registration CLARINS n°1637194, filed on January 7, 1991, and covering notably cosmetics in class 03 and beauty care services in class 44,
European Union: Community trademark Registration CLARINS n° 005394283, dated October 10, 2006, and covering notably cosmetics in class 03 and cosmetic and beauty care services in class 44;
International: International Registration CLARINS n° 398589, registered on April 27, 1973, and covering notably cosmetics in class 03 and having effects in various territories such as Austria, Germany, Benelux, Portugal, Italy;
Canada: Canadian Trademark Registration CLARINS n° TMA645123, filed on June 3, 2004 and covering cosmetic products in class 03;
USA: American Trademark Registration CLARINS n° 4061968, filed on September 29, 2010 and covering beauty services in class 44;
Turkey: Turkish trademark registration CLARINS n° 78288, filed on September 29, 1973, in class 3, notably for cosmetics.
Complainant is also the owner of the domain name since 1997, as per Annex 6 of the Complaint.
The disputed domain name was registered by Respondent on May, 26, 2013. 5. Parties’ Contentions A. Complainant
Complainant alleges it is one of the major companies in the field of cosmetics, make-up and perfumery goods, and has been doing business in France for more than 50 years, where it is well-known, and is also famous worldwide.
Complainant argues that the trademark CLARINS is entirely reproduced in the disputed domain name and that the generic Top-Level Domain (“gTLD”) “.org” is inherent to the operation of the domain name system. Therefore, Complainant states that the disputed domain name is confusingly similar to the above cited trademarks, company and domain names.
In this sense, Complainant indicates that numerous earlier UDRP decisions have held that when a domain name fully incorporates a complainant's registered trademark, it is sufficient to establish confusing similarity for purpose of the Policy (For instance, see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Eauto, L.L.C. v. TripleS. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. ,WIPO Case No. D2002-0615).
Moreover, Complainant confirms that Respondent is not affiliated in any manner to Complainant, and has never been authorized to use or register in any way the name CLARINS, including as a domain name.
Complainant further claims that Respondent is not making a noncommercial or a fair use of the disputed domain name, since it is not used in relation with a real proper website. Complainant argues that Respondent has simply disregarded Complainant’s prior rights and registered the disputed domain name only for the purpose of reselling it.
Complainant concludes by stating that the long-standing-use and well-known character of the trademark CLARINS, the fact that CLARINS is not a descriptive or a dictionary word, and the fact that the disputed domain name is for sale although recently created and is not in use with an operating web site, make it hard to believe that the filing of the disputed domain name was a mere coincidence.
Complainant argues that by using the domain name in such unacceptable way, the disputed domain name should be considered as having been registered and is being used in bad faith by Respondent, in violation of paragraph 4(b)(i) and paragraph 2 of the Policy. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
In order to succeed in a UDRP proceeding, Complainant must prove each of the following requirements specified under paragraph 4(a) of the Policy:
(i) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in respect of which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
These three elements are considered hereinafter.
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules. A. Identical or Confusingly Similar
Complainant has duly proven the first element under paragraph 4(a) of the Policy by attesting that it is the owner of several trademark registrations for CLARINS, worldwide and that such trademark is entirely incorporated in the disputed domain name .
With regard to the addition of the gTLD “.org”, it is widely accepted that it is typically irrelevant in assessing the issue of confusing similarity between a trade mark and a domain name. It is well-settled in UDRP decisions that “the applicable top-level suffix in the domain name (e.g., “.com”) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark” (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph1.2. In this case, the use of the gTLD “.org” does not, in any way, diminish the risk of confusion between the disputed domain name and Complainant’s trademark CLARINS.
The Panel therefore finds that the disputed domain name is identical to Complainant’s trademark CLARINS. B. Rights or Legitimate Interests
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized at paragraph 2.1 of the WIPO Overview, 2.0” as follows: “[A] complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If Respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP [...] If Respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on Complainant.”
In this case Complainant has provided sufficient prima facie proof of “no rights or legitimate interests”, so the burden of production shifts to Respondent. As Respondent has not filed any response, that burden has not been discharged, and the Panel has considered Complainant’s prima facie proof to be sufficient evidence to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name .
The Panel recognizes that Respondent is not commonly known as CLARINS and does not own any trademark bearing the word CLARINS, and since Respondent has not chosen to present any argument in this matter or attempted to prove any right, it is apparent that its intention when registering the disputed domain name was to sell it to a third party and/or create a false association with Complainant, both of which constitutes bad faith.
In view of the above, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include: “(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name.”
The Panel finds it is highly unlikely that Respondent had no knowledge of Complainant’s company and legal rights to the trademark CLARINS at the time of registration of the disputed domain name, considering its well-known status in France and fame worldwide.
Furthermore, in particular circumstances of this case, the fact that Respondent registered the disputed domain name with the purpose of selling it to an interested party constitutes bad faith, as per paragraph 4(b)(i) of the Policy, above cited. The Panel finds it more likely than not that Respondent intended to sell the disputed domain name for an amount in excess of the out-of-pocket costs.
The Panel also finds that the disputed domain name may create a false association between Complainant and Respondent, misleading consumers into believing that Respondent is an authorized retailer of Complainant’s products, which Complainant has confirmed not to be true.
Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith. 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 Complainant.
Gabriel F. Leonardos
Sole Panelist
Date: February 27, 2014
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