The Complainant is L'Oréal of Paris, France, represented by Studio Barbero, Italy.
The Respondent is Lizhen He of Xiamen, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with Xin Net Technology Corp. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 17, 2014. On September 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 30, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On September 30, 2014, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On September 30, 2014, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 the Respondent of the Complaint in both English and Chinese, and the proceedings commenced on October 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 29, 2014.
The Center appointed Kar Liang Soh as the sole panelist in this matter on November 14, 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 a large company in the cosmetic and beauty care industry with over 25 global brands and a presence in over 130 countries. These brands include L'OREAL, GARNIER, MAYBELLINE and KERASTASE. Following the acquisition of Pacific Bioscience Laboratories Inc. in 2011, CLARISONIC became part of the Complainant's family of brands.
The trademark CLARISONIC is used in relation to skin cleansing devices and technology developed and launched in 2004. CLARISONIC products were initially targeted at the professional market comprising spa owners and physicians but subsequently expanded to the consumer market. The consumer line of products, which includes sonic infusion systems and devices, are distributed through department stores, perfumeries, travel retail outlets, free-standing stores and e-commerce websites. Sales figures for CLARISONIC products in 2012 were about USD 200 million, almost double of sales figures in 2010.
CLARISONIC products are featured in international magazines and have received many awards including the Best Beauty Gadget in the Cosmopolitan Beauty Awards 2011 and 2012, the Best New Appliance in the UK Beauty Awards 2011, the Best Cleansing Tool in 2011 and the Best Beauty Gadget in 2012 in the Harpers Bazaar Beauty Hot 100, the Best Gadget in Woman & Home, Best in Beauty 2011 and 2012, and the Best New Gadget in the InStyle Best Beauty Buys 2012. There has been widespread appreciation and endorsement by celebrities.
The Complainant owns, directly or through its subsidiary Pacific Bioscience Laboratories Inc., many trademark registrations for CLARISONIC, including:
Jurisdiction
Trademark Number
Registration Date
European Union
5732375
January 20, 2009
United States of America
3087196
May 2, 2006
United States of America
3732137
December 29, 2009
United States of America
3880043
November 23, 2010
China
8275826
May 14, 2011
China
8514771
September 7, 2011
The Complainant has also registered many domain names incorporating the trademark CLARISONIC, including , , , and . The Complainant's principal website for Clarisonic products is located at "www." and has tailored websites to cater to different countries and languages (e.g., "www.").
There is limited information about the Respondent. The name of the Respondent suggests that the Respondent is an individual based in China. The WhoIs record of the Disputed Domain Name indicates that the Disputed Domain Name was registered on July 5, 2014. On or before July 17, 2014, the Disputed Domain Name resolved to a website mainly in French with some English words, which incorporated the prominent use of the trademark CLARISONIC and visual images including artwork and photographs used on the Complainant's website. The website also contained statements purporting to hold the website out as an online store managed by "L'Oréal produits de Luxe France". Products under the trademark CLARISONIC were also offered for sale at discounted prices on the website. The website did not contain any disclaimer regarding the affiliation of the website with the Complainant.
The Respondent is also the registrant of the domain name , which on or before the Complaint, resolved to a website containing elements similar to the website resolved from the Disputed Domain Name, including the prominent use of the trademark CLARISONIC, visual images used on the Complainant's website and offers for sale of products under the trademark CLARISONIC.
On July 17, 2014, the Complainant sent a cease and desist letter to the Respondent's address indicated on the WhoIs record of the Disputed Domain Name followed by a reminder on September 4, 2014. The Respondent did not reply to the Complainant. The Center's attempts to communicate with the Respondent via the email address, facsimile number and postal address indicated on the WhoIs record of the Disputed Domain Name were also unsuccessful because these details were invalid.
On or before the Complaint, the Disputed Domain Name no longer resolved to any website. 5. Parties' Contentions A. Complainant
The Complainant contends that:
1) The Disputed Domain Name is identical or confusingly similar to the Complainant's trademark CLARISONIC. It incorporates the whole of the trademark CLARISONIC and differs by the addition of a non-distinctive element "promos" which is an abbreviation for "promotions" or "promotional items" and does not avoid the confusing similarity with the trademark CLARISONIC;
2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent is not a licensee, authorized agent or in any way authorized to use the Complainant's trademark CLARISONIC. The Respondent is not commonly known by the Disputed Domain Name as an individual, business or other organization. CLARISONIC is not the family name of the Respondent; and
3) The Disputed Domain Name was registered and is being used in bad faith. The actual knowledge of the CLARISONIC trademark by the Respondent at the time of registration of the Disputed Domain Name is clearly demonstrated by the fact that on the website resolved from it, the trademark CLARISONIC was prominently featured in relation to offered products. The Respondent registered the Disputed Domain Name to capitalize on the reputation of the Complainant's marks by diverting Internet users seeking information about the Complainant and to earn revenue by the offer of products. The Respondent was using the Disputed Domain Name to intentionally attempt to attract for commercial gain Internet users to its website by creating a likelihood of confusion and to take profit from the sale of products. Use of the Disputed Domain Name need not be continuing at the time of decision by the Panel. The use of incomplete postal address by the Respondent in relation to the Disputed Domain Name is a further indication of bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 Language of Proceeding
The default language of the proceeding is Chinese following the language of the registration agreement of the Disputed Domain Name. The Complainant has requested English be adopted as the language of the proceeding notwithstanding this. Having considered the following circumstances, the Panel grants the Complainant's request and determines that English shall be adopted pursuant to paragraph 11 of the Rules:
1) The Complainant has confirmed that it is unable to communicate in Chinese and would be prejudiced by undue expense, delay or complication should the proceeding be in Chinese;
2) The Complainant's first language is French but is able to communicate in English. The website previously resolved from the Disputed Domain Name was mainly in French with some English words, which suggests that the Respondent is able to understand English;
3) The Complaint has already been submitted in English;
4) The Respondent is not participating in the proceeding since no Response was filed;
5) The Respondent has neither objected to the Complainant's submission of an English language Complaint nor the Complainant's request for English to be the language of the proceeding; and
6) Requiring at this stage for Chinese to be adopted would add to unnecessary delay to the proceeding without providing any procedural benefit to the proceeding. 6.2 Discussion
The Complainant must show that the elements of paragraph 4(a) of the Policy are established on the facts in order to succeed in this proceeding. These elements are:
1) the Disputed Domain Name 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 Disputed Domain Name; and
3) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel is satisfied that the Complainant has rights in the trademark CLARISONIC. The Disputed Domain Name incorporates the trademark CLARISONIC entirely. The only difference between the Disputed Domain Name and the trademark CLARISONIC is the addition of the suffix "promos" in the Disputed Domain Name and the generic Top-Level Domain ("gTLD") ".com". The Panel agrees with the Complainant that a reasonable person will associate the word "promos" with "promotions", "promotional items" or the like. Such association is wholly descriptive in nature and does not assist to distinguish the Disputed Domain Name from the trademark CLARISONIC. The addition of the gTLD may typically be disregarded under the confusing similarity test. As such, the Panel holds that the Disputed Domain Name is confusingly similar to the Complainant's trademark CLARISONIC in the manner required by the first limb of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
There is nothing in the case record to suggest that the Respondent, an individual, is known by the Disputed Domain Name. It is also not foreseeable that the combination of letters "clarisonicpromos" could be the name of an individual from China. On the other hand, the Disputed Domain Name gives a strong impression that the apparently invented term "clarisonic" has been deliberately adopted and incorporated by the Respondent as part of the Disputed Domain Name. The Complainant has confirmed that no licence or authorization was provided to the Respondent to use or register the trademark CLARISONIC as part of the Disputed Domain Name. The manner in which the Disputed Domain Name is used with reference to the website which previously resolved therefrom is not indicative of any form of bona fide or noncommercial use. In the circumstances, the Panel holds that the Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name in accordance with the second limb of paragraph 4(a) of the Policy. Since no Response was filed, the prima facie case has not been rebutted and the Panel's finding remains. C. Registered and Used in Bad Faith
From the evidence of how the trademark CLARISONIC is referred to and used on the website resolved from the Disputed Domain Name, the Panel finds it inconceivable that the Respondent had no prior knowledge of the trademark CLARISONIC at the time of registering the Disputed Domain Name. The website is clearly targeted at commercially promoting and selling products under the trademark CLARISONIC. The holding out of the website as an online store managed by "L'Oréal produits de Luxe France" and the incorporation of visual images found on the Complainant's website leaves little to the imagination that the Respondent intended visitors to view the website as being associated with the Complainant.
Paragraph 4(b)(iv) of the Policy identifies the following situation as bad faith prohibited by the third limb of paragraph 4(a):
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location"
Having considered the evidence, the Panel is of the view that the present circumstances fall squarely within the situation of bad faith registration and use outlined in paragraph 4(b)(iv) of the Policy. The Respondent obviously had the intention to attract for commercial gain Internet users to the website resolved from the Disputed Domain Name by creating a likelihood of confusion with the trademark CLARISONIC as to the source, sponsorship, affiliation, or endorsement of the website and products promoted thereon.
In addition, the Panel has noted that the Respondent's contact particulars on the WhoIs record of the Disputed Domain Name are all invalid. A domain name registrant has a duty to comply with his/her obligation to provide complete and accurate information in connection with the registration of the domain name. In the present instance, this obligation is found in Clause 15 of the registration agreement. The failure to do so has been held by past UDRP panels to be a further indication of bad faith registration and use under the third limb of paragraph 4(a) of the Policy. The Panel takes the same view.
In view of the above, the Panel holds that the third limb of paragraph 4(a) of the Policy has been established by in the proceeding. 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.
Kar Liang Soh
Sole Panelist
Date: December 5, 2014
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