The Complainant is Clarins of Neuilly Sur Seine, France, represented by Tmark Conseils, France.
The Respondent is You You Wo of Guangzhou, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with B, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2014. On November 25, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 26, 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 November 28, 2014, the Center transmitted an email in both English and Chinese regarding the language of the proceeding to the parties. On December 1, 2014, the Complainant confirmed its request that English be the language of the proceeding by email to the Center. The Respondent did not submit any comments.
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 December 5, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 25, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 29, 2014.
The Center appointed Francine Tan as the sole panelist in this matter on January 8, 2015. 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 has been in the cosmetics business for more than 50 years in France and is very well established worldwide. It owns the CLARINS trade mark in many countries across the world including in China where the Respondent seems to be located, as well as in Hong Kong, China, Taiwan Province of China and Macau, China.
The Complainant owns, inter alia, a Chinese trade mark registration for CLARINS/克拉琳 dated February 1, 1993, and International registrations designating China for the mark CLARINS dated December 4, 2009 and September 29, 2010. These registrations cover cosmetics and cosmetic products in Class 3 as well as beauty care-related services in Class 44.
The Complainant’s company name comprises the word “Clarins” which has been in use since at least May 30, 1983. The Complainant’s domain name was registered on March 16, 1997. The Complainant has used the CLARINS mark extensively in China since at least the year 2001.
The disputed domain name was registered on October 7, 2014. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s CLARINS mark. The “.com” extension is inherent to the operation of the domain name system. The trade mark CLARINS has been incorporated in its entirety in the disputed domain name. The word “buy” in the disputed domain name is descriptive of the nature of the website enabling Internet users to buy goods from the Respondent’s website.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant points out that the Respondent is not affiliated in any way to the Complainant and the Respondent has never been authorized by the Complainant to use or register CLARINS as a trade mark or as a domain name. The Complainant further submits that the Respondent has never been known by the disputed domain name or by any name corresponding to it and the Respondent is not making a noncommercial or fair use of the disputed domain name. The Respondent’s website bears the Complainant’s CLARINS trade mark and is used to offer for sale cosmetic goods bearing the Complainant’s trade mark and is misleading in nature. It diverts consumers from the real and official website of the Complainant.
The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The disputed domain name was registered in October 2014, long after the Complainant had used the CLARINS mark extensively. The disputed domain name contains the Complainant’s trade mark in Latin characters and not Chinese characters. This renders the disputed domain name registration to be even more suspicious in nature. The website purports to be an authentic website of the Complainant’s but is not.
The Respondent appears to have engaged in a pattern of registering domain names that bear a resemblance to famous or well-known cosmetics brands such as KOSE, KAO and BIODERMA. The Respondent’s intention must have been to attract, for commercial gain, Internet users to its website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Language of the Proceeding
Paragraph 11(a) of the Rules stipulates that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Complaint was filed in English but the language of the Registration Agreement is Chinese. The Complainant requested that the language of the proceeding be English since it is a common business language with which the Respondent appears to be familiar enough. The disputed domain name contains the English word “buy” which is directly descriptive of the activities of the Respondent’s website. The Respondent’s website (although mostly in Chinese) contains English terms such as “On Sale” and “Category”. The Complainant points out that the Respondent owns 15 other domain names containing English words associated with other well-known trade marks, e.g. , , , , , and .
Having had regard to the circumstances of this case including the fact that the Respondent has not objected to the Complainant’s request, in the exercise of its discretion pursuant to paragraph 11 of the Rules, the Panel holds that English shall be the language of the administrative proceeding in this case. It is, on the face of it, apparent that the Respondent is comfortable with English and in fairness to both parties, the Panel finds it appropriate to make its ruling in English. Substantive Elements of the Proceeding A. Identical or Confusingly Similar
The Complainant has proven it has rights to the trade mark CLARINS. The word “Clarins” is readily identifiable in the disputed domain name and incorporated in its entirety. The message communicated by the disputed domain name is one which is rather clear, from the incorporation of the generic term “buy”. Anyone looking at the disputed domain name would understand that the website to which the disputed domain name resolves is probably one from which Clarins products can be bought or one which promotes and advertises Clarins products.
It is a well-established principle that the addition to a domain name of a generic term such as “buy” in this case, or, for instance, “shop”, would not serve to remove the confusing similarity especially where an inherently distinctive trade mark is incorporated in its entirety and identifiable within that domain name.
The Panel therefore concludes that the first element of paragraph 4(a) of the Policy has been established by the Complainant. B. Rights or Legitimate Interests
When encountering a domain name in dispute which involves the wholesale incorporation of a well-known or well-established trade mark which has been used for a website which mimics the Complainant’s official websites and offers for sale the Complainant’s goods with no disclosure as to the Respondent’s lack of authorization from the Complainant to do so, much would be required of the respondent in that case in terms of proof to show how, despite these circumstances which do not favor a finding for the respondent, it has rights or legitimate interests in respect of the domain name in dispute.
The case at hand presents such a situation. The Complainant has set out its prima facie case that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. In the absence of any response and evidence from the Respondent which shows, for instance (as set out in paragraph 4(c) of the Policy), that:
(i) before any notice to the Respondent of the dispute, its use of, or demonstrable preparations to use, the disputed domain name was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known (as an individual or business) by the disputed domain name; or
(iii) the Respondent has been making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers,
the Panel concludes that the second element of paragraph 4(a) of the Policy has been established by the Complainant. C. Registered and Used in Bad Faith
There has been no evidence put forward in this proceeding that the goods offered for sale by the Respondent on its website are counterfeit goods. The Panel therefore does not make any finding in that regard. However, what is clear from the screenshots submitted by the Complainant is that the “look and feel” of the Respondent’s website creates the impression that it is a website of the Complainant’s or is endorsed by or associated with it. The Respondent’s intention, by choosing and registering the disputed domain name, which incorporates the well-known trade mark of the Complainant, must have been to “attract, for commercial gain, Internet users to [the Respondent’s] 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 [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location [paragraph 4(b)(iv) of the Policy].”
The Respondent’s registration of other domain names incorporating the names of established and known cosmetics brands is also indicative of opportunistic bad faith and a pattern of conduct from which the Panel draws a negative inference.
The Panel concludes that the disputed domain name has been registered and is being used in bad faith by the Respondent.
The third element of paragraph 4(a) of the Policy has been established by the Complainant. 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.
Francine Tan
Sole Panelist
Date: January 16, 2015
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