The Complainant is L’Oréal SA of Paris, France, represented by Studio Barbero, Italy.
The Respondents are PrivacyP of Nobby Beach, Queensland, Australia / WangShanShan of New York, New York, United States of America (the “Respondent”). 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2014. On February 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 27, 2014, 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 February 28, 2014, 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 amendment to the Complaint on February 28, 2014.
The Center verified that the Complaint together with the amendment to 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”).
The Complaint was originally filed against PrivayP who appeared to be the Registrant of the disputed domain name according to the WHOIS information published on the registrar’s database. However, in its amendment to the complaint, the Complainant requested that WangShanShan be added as co-Respondent to PrivacyP in the present proceedings after it appeared from the Center’s communication that the underlying registrant of the disputed domain name, whose identity was originally publicly protected by a privacy shield, is WangShanShan.
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 March 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 23, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 24, 2014.
The Center appointed Geert Glas as the sole panelist in this matter on April 1, 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
The Complainant is L’Oreal, one of the world’s largest companies in the field of cosmetics and beauty, founded in Paris in 1909 under the brand name SOCIETE FRANCAISE DE TEINTURES INOFFENSIVES and commonly known under de brand name L’OREAL since 1939. The Complainant has been established as the worldwide leader in beauty care for many years.
On December 15, 2011, the Complainant acquired PACIFIC BIOSCIENCE LABORATORIES INC., the market leader in the areas of skin cleansing devices and technology. It appears from a document provided by the Complainant that its subsidiary PACIFIC BIOSCIENCE LABORATORIES Inc., who is the owner of numerous trade mark registrations for CLARISONIC, has authorized the Complainant to act on its behalf with regard to the CLARISONIC trade mark.
The Complainant’s subsidiary uses the trade mark CLARISONIC in connection with the cosmetic, beauty, dermatological and pharmaceutical sector throughout the world, covering more than 130 countries and marketed through a wide variety of distribution channels.
The Complainant’s subsidiary also owns numerous domain names containing the term CLARISONIC, including the following , , , and .
The Domain Name was registered on May 30, 2013 by the Respondent. According to the evidence submitted by the Complainant, the Domain Name leads to a website where products are sold under the CLARISONIC trade mark.
The Complainant sent a cease and desist letter to the Respondent on June 11, 2013. In reply to that communication, the Complainant received an automated email from PrivacyP, stating that the Respondent could only be contacted by means of completing an online form. On the same day, the Complainant filed such online form. In light of the absence of any reply to the communication sent via the online form, the Complainant sent a reminder of the cease and desist letter on September 2, 2013, but did not receive any response. 5. Parties’ Contentions A. Complainant
The Complainant requests the transfer of the Domain Name on the following grounds:
(i) The Domain Name is identical or confusingly similar to a trade or service mark in which the Complainant has rights
The Complainant contends that the Domain Name is confusingly similar to the well-known trade mark CLARISONIC because it incorporates this trade mark in its entirety.
The Complainant submits that, by using the trade mark CLARISONIC as a dominant part of the Domain Name, there is a considerable risk that the public will perceive that the Domain Name is owned by the Complainant’s subsidiary or will think that there is some kind of commercial relationship with the Complainant’s subsidiary. The addition of the generic and descriptive terms “outlet”, “online” and “sale” does not detract from this overall impression. Indeed, as these terms refer to online locations where the Complainant’s subsidiary products are offered, it is highly likely that the Domain Name could mislead Internet users into thinking that it is associated with the Complainant’s subsidiary.
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name
The Complainant contends that Complainant’s subsidiary has never licensed or authorized the Respondent to use the CLARISONIC trade mark and that the Respondent is not in any way affiliated with the Complainant’s subsidiary.
The Respondent is neither known by the Domain Name, nor has the Complainant found any evidence that would suggest that the Respondent has been using CLARISONIC in a way that would grant it legitimate rights in the name.
Furthermore, the Respondent has failed to provide any evidence that it is using the Domain Name in connection with a bona fide offering of goods and services. Indeed, the Domain Name is redirected to a commercial website where products bearing the Complainant’s subsidiary trademarks are offered for sale and advertising images taken from the official website of Complainant’s subsidiary are published, along with statements generating the impression that the website is managed by the Complainant’s subsidiary. The products bearing the CLARISONIC trade mark and being offered for sale appear to be counterfeit. Moreover, CLARISONIC is an invented word, with no meaning in foreign languages, and as such not a word anyone would choose unless seeking to create an impression of an association with the Complainant’s subsidiary.
(iii) The Domain Name was registered and is being used in bad faith
The Complainant contends that:
- the Respondent is using the Domain Name to intentionally attempt to attract internet users to its website for commercial gain by creating a likelihood of confusion with the trade mark of the Complainant’s subsidiary as to the source, sponsorship, affiliation or endorsement of its website and to taking profit from the offer for sale of the products promoted thereon;
- it is highly unlikely that the Respondent was not aware of the rights of the Complainant’s subsidiary in this well-known trade mark at the time of registration; and
- the Respondent’s failure to respond to the Complainant’s cease and desist letter and to the reminder of the cease and desist letter indicates registration and use in bad faith;
- the fact that the Respondent registered the Domain Name through a privacy shield service to hide its identity and contact addresses may in itself constitute bad faith.
The Complainant requests that the Domain Name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant proves 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 trade mark or a service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interest in respect of the disputed 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 has demonstrated that it has the authority to act on behalf of PACIFIC BIOSCIENCE LABORATORIES INC., who is the owner of numerous trademarks covering the word CLARISONIC, including the following:
- Community Trade mark Registration N° 5732375;
- US Trade mark Registration N° 3087196;
- US Trade mark Registration N° 3732137;
- US Trade mark Registration N°3880043;
- Chinese Trade mark Registration N° 8275826; and
- Chinese Trade mark Registration N°8514771.
In previous UDRP decisions, panelists have found that a complainant is considered to have protectable rights in a trade mark, although it is not the holder of any trade mark registrations for the mark, if the complainant has established that it is a related company such as a subsidiary or parent to the registered holder of the trade mark. In the case at hand, the Complainant is the parent company of the trade mark owner who has explicitly authorized its parent company to act on its behalf with regard to the CLARISONIC trade mark.
The Domain Name incorporates the trademarks of the subsidiary of the Complainant in their entirety and differs from the trademarks of the Complainant’s subsidiary only in that the suffixes “outlet”, “online” and “sale” have been added. Several UDRP panels have held that wholly incorporating a complainant's registered trade mark in a domain name may be sufficient to establish confusing similarity for the purposes of the Policy, particularly where the trade mark is highly recognizable and famous (see, e.g., AT&T Corp. v. William Gormally,WIPO Case No. D2005-0758; Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; and The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113). In addition, it is well-established that adding a generic or descriptive term to a registered trade mark does not prevent the domain name from being confusingly similar to that registered trade mark (see, e.g., Microsoft Corporation v. J. Holiday Co,WIPO Case No. D2000-1493; Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253; and Lilly ICOS LLC v. John Hopking/Neo net Ltd.,WIPO Case No. D2005-0694).
In the case at hand, the Panel finds that adding the generic words “outlet”, “online” and “sale” to the CLARISONIC trademarks does not render the Domain Name less confusingly similar to the CLARISONIC trade marks (see, e.g., Lego Juris A/S v. Thomas Plaut,WIPO Case No. D2012-1822; L’Oréal, Lancôme Parfums Et Beauté & Cie v. Jack Yang,WIPO Case No. D2011-1627; Fry’s Electronics, Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1435; and LEGO Juris A/S v. SAKCHAI SRION,WIPO Case No. D2012-0604). With specific regard to “outlet”, “online” and “sale” see, e.g., Swarovski Aktiengesellschaft v. mei xudong,WIPO Case No. D2013-0150; and Etro S.P.A. v. T AG, Ricky Menzer,WIPO Case No. D2010-0743. As CLARISONIC constitutes the dominant part of the Domain Name, there is a considerable risk that the public will be under the impression that the Respondent's Domain Name is owned by the Complainant’s subsidiary or will think that there is some kind of commercial relationship with the Complainant’s subsidiary.
The addition of the generic top level domain ".com" is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the Complainant's subsidiary trade mark and the Domain Name, because top-level domains are a required element of every domain name (see, e.g.,
Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; and Qantas Airways Limited v. Minh Huynh,WIPO Case No. D2008-1382).
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
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, the consensus view is that, once a complainant has made a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent requiring it to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the 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 Policy (see, e.g., Document Technologies Inc. V. International Electronic Communications Inc.,WIPO Case No. D2000-0270 and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”, paragraph 2.1).
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
Indeed, based on the evidence submitted by the Complainant, the Panel finds that there is no evidence that the Respondent, who is moreover hiding behind a privacy shield, has been commonly known by the Domain Name (see, e.g., Harrah’s License company, LLC v. WHOIS IF Theft Protection,WIPO Case No. D2006-1435).
Furthermore, the Complainant has provided evidence that the Domain Name leads to a commercial website where products bearing the trademarks of the Complainant’s subsidiary are offered for sale and advertising images taken from the official website of the Complainant’s subsidiary are published, along with statements and content generating the impression that the website is managed by the Complainant’s subsidiary. Several UDRP panels have held that when the content of the respondent’s website appears designed to reinforce the Internet user’s impression that the domain name belongs to the complainant or the website is presented as if it is an official website of the complainant, such use cannot constitute a bona fide offering of goods or services (see, e.g., Swarovski aktiengesellschaft v. Luc Sun,WIPO Case No. D2012-0071). Also in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, the panel stated that no fair use of the domain name can possibly be invoked if the respondent fails to accurately and prominently disclose its relationship with the complainant thus generating a clear likelihood of confusion for Internet users.
In the case at hand, the Panel finds that the advertising images taken from the official website of the Complainant’s subsidiary and the layout of the Respondent’s website corresponding to the Domain Name, contribute to the creation of a likelihood of confusion. Accordingly, the Panel finds that the Respondent has failed to provide evidence that it has made a legitimate non-commercial use of the Domain Name or has used the Domain Name in connection with a bona fide offering of goods and services.
Moreover, the Complainant has argued that the Respondent, who is not a licensee or an authorized agent of the Complainant’s subsidiary, offers for sale prima facie counterfeit CLARISONIC products on its website corresponding to the Domain Name, an illegitimate activity that is undoubtedly commercial and non bona fide in nature (see, e.g., Guccio Gucci S.P.A. v. Hainei zhou,WIPO Case No. D2011-1017). Indications of the presumed counterfeit nature of the products sold by Respondent on its website under the CLARISONIC trade mark can be found in the circumstance that these products are offered for sale at substantially lower prices than the prices for the original CLARISONIC products and by the circumstance that neither the name of the company nor any contact information, except for an email address, is published on the Respondent’s website, which makes it all but impossible to verify the origin of these products. Moreover, the content and look and feel of the Respondent’s website (including the use of advertising images taken from the official website of the Complainant’s subsidiary) is such that a conscious effort is made to create the misleading impression that this website is the official website of the Complainant’s subsidiary. The Panel is of the opinion that those circumstances do indeed constitute a prima facie indication of the counterfeit nature of the products offered for sale by the Respondent on the website corresponding to the Domain Name. Previous panels have constantly held that there could be no legitimate interest in the sale of counterfeits (see, e.g., Lilly ICOS LLC v. Dan Eccles,WIPO Case No. D2004-0750; Cartier International B.V. v. David Lee,WIPO Case No. D2009-1758; Moncler S.r.l. v. zhuo muniao, supra, Moncler S.r.l. v. Daniel Park,WIPO Case No. D2011-0488).
Finally, the Respondent has failed to respond to the Complaint and has therefore failed to provide any evidence of its rights or legitimate interests in the Domain Name (see, e.g., The Great Eastern Life Assurance Company Limited v. Unasi Inc,WIPO Case No. D2005-1218; Stanworth Development Limited v. Mike Morgan (290436), WIPO Case No. D2006-0230. This is even more relevant in the case at hand. Indeed, by failing to submit a reply, Respondent has opted not to address the allegation that its products are counterfeits and to counter the indications of this counterfeit nature of its products.
Based on the evidence provided by the Complainant, the Panel finds that the second element under paragraph 4(a)(ii) of the Policy has been established. C. Registered and Used in Bad Faith
Given that prima facie counterfeit products bearing CLARISONIC trademarks are sold on the Respondent’s website corresponding to the Domain Name, and that official advertising images and statements from the Complainant’s subsidiary main website are published on the Respondent’s website corresponding to the Domain Name, the Panel is of the view that such conduct demonstrates the Respondent’s intention to use the Domain Name to create a likelihood of confusion with the Complainant’s subsidiary website with the view to attracting, for commercial gain, Internet users to such a website and to take profit from the offer for sale of the products promoted thereon.
Several UDRP panels have ruled that bad faith is established where a respondent intentionally attracts Internet users for a commercial gain to its own website by creating a likelihood of confusion with the complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website (see, e.g.,Hoffmann-La Roche Inc. v. Doroven,WIPO Case No. D2010-1196; Kelley Blue Book Company, Inc. v. Nikolay Golovin aka B,WIPO Case No. D2005-0837). Likewise, previous panels have ruled that redirecting a domain name to a website generating the impression to be an official online store and offering prima facie counterfeit products constitutes an indication of the respondent’s bad faith (see, e.g., L’Oréal SA v. Aaliyah Bull et al.,WIPO Case No. D2013-1416; Prada S.A. v. Domains for Life,WIPO Case No. D2004-1019). Finally, in the Swarovksi Aktiengesellschaft v. Whois Privacy Protection Service/ Sprout Ltd., mamoru shiga,WIPO Case No. D2012-1496, the panel ruled that such behavior can be considered as constituting bad faith use of the disputed domain name even if the products offered for sale on the respondent’s website are found to be genuine goods deriving from the complainant because Internet users are highly likely to conceive the website associated with the disputed domain name to be operated by the complainant or its authorized agents.
In the case at hand, the Complainant however does contend that the products offered for sale by the Respondent are counterfeit. For the reasons developed under B. above, the Panel is of the opinion that the circumstances and elements put forward by the Complainant do indeed constitute prima facie indications of the counterfeit nature of the products offered for sale by the Respondent on the website corresponding to the Domain Name.
Moreover, the use of a privacy shield and the Respondent's failure to respond to the Complainant's contentions and as a result to provide any evidence whatsoever of any good faith registration and use of the Domain Name are additional indications of bad faith (see, e.g., News Group Newspapers Limited and News Network Limited v. Momm Amed la,WIPO Case No. D2000-1623, Nike, Inc. v. Azumano Travel,WIPO Case No. D2000-1598, America Online, Inc. v. Antonio R. Diaz,WIPO Case No. D2000-1460). Any such bad faith is compounded when a respondent or its duly authorized privacy service, upon receipt of a cease and desist letter, refuses to respond to or even disclose the respondent’s identity to the complainant. (see, e.g., Bayerische Motoren Werke AG v. This Domain is For Sale Joshuathan Investments, Inc.,WIPO Case No. D2002-0787; Red Bull GmbH v. Domain Admin, PrivacyP /, Ijaz Ahmad,WIPO Case No. D2011-2192).
In the case at hand, following the cease and desist letter, the Respondent did not disclose its identity to the Complainant. In addition, the Respondent, whose identity has been disclosed by the concerned Registrant to the Center and to the Complainant’s authorized representative only following the filing of the Complaint, has provided contact data that is incomplete, since it solely indicates the city of New York as the Respondent’s address, without any further address within the city of New York. The Panel is of the opinion that such conduct is not consistent with what one reasonably would expect from a good faith registrant.
In light of the above, the Panel concludes that the Domain Name was registered and is being used in bad faith.
Accordingly, the Panel finds that the third element under paragraph 4(a) (iii) of the Policy has been established. 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.
Geert Glas
Sole Panelist
Date: April 15, 2014
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