The Complainant is Clarins of Seine, France, represented by Tmark Conseils, France.
The Respondent is “-“, Unknown Registrant” of Drums, Pennsylvania, United States of America (“US”); Registration Private, Domains By Proxy, LLC. of Scottsdale, Arizona, US. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2015. On March 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 17, 2015, 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 March 20, 2015 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 March 24, 2015.
The Center verified that 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 March 25, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 14, 2015. On March 30, 2015, the Center received an email from an entity whose email address appears to have been included in the WhoIs by the Respondent without the authorization from this entity, claiming that it does not have control over the disputed domain name. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on April 15, 2015.
The Center appointed Anna Carabelli as the sole panelist in this matter on April 23, 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
Since 1954 the Complainant has been manufacturing and selling cosmetics, make-up and perfumery goods worldwide under the trademark CLARINS.
The mark is protected as a registered trademark in many countries, including European countries, US, Canada and China. Annexed to the Complaint is a list of several national, international and community trademark registrations for CLARINS filed by the Complainant (Annex 5 to the Complaint).
The Complainant also owns the domain name , which was registered on March 16, 1997 and is being used internationally (Annex 6 to the Complaint).
The disputed domain name was registered on August 17, 2007, as per the copy of the WhoIs database annexed to the Complaint, which shows that the disputed domain name has been registered anonymously ( Annex 1 to the Complaint).
According to the evidence submitted by the Complainant, the disputed domain name resolves to a website displaying links related to the Complainant’s field of activity and/or redirecting to websites offering Complainant’s direct competitors goods (such as Garancia) ( Annex 7 to the Complaint). 5. Parties’ Contentions A. Complainant
The Complainant contends that:
- the Complainant’s trademark CLARINS enjoys worldwide reputation and has been used for over 50 years in connection with the Complainant’s activity such as cosmetics, make up and perfumery goods manufacturer;
- the disputed domain name is confusingly similar to its registered trademark CLARINS, since it entirely reproduces the mark, with the mere inversion of the letters “a” and “l”. This inversion is a clear case of typo-squatting, since “the disputed domain name is a slight alphabetical variation from a famous trademark”;
- the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has no relationship with the Respondent and has not authorized it to use the CLARINS mark. The Respondent is using the disputed domain name to provide Internet users to browse through sponsored links related to the Complainant’s field of activity and to Complainant’s direct competitors ( Annex 7 to the Complaint);
- the disputed domain name has been registered and is being used in bad faith since: a) the Respondent could not ignore the existence of the Complainant when the disputed domain name was registered given the worldwide reputation of the CLARINS trademark and the existence of a long-standing worldwide operating website under the domain name; b) the disputed domain name has been registered anonymously ; c) the website at the disputed domain name features links to the Complainant’s direct competitors websites/goods; d) the Respondent is using the disputed domain name to attract, for commercial gain, Internet users to its webpage in order to gain “click through” commissions. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a)9 of the Rules instructs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) The disputed domain name is identical or confusingly similar to the Complainant’s trademark or service mark; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) shall be evidence of registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii) above. A. Identical or Confusingly Similar
The only distinction between the disputed domain name and the Complainant’s mark CLARINS is given by the inversion of the letters “a” and “l”.
It has become a common practice for registrants to register domain names with minor spelling variations, a phenomenon which is commonly known as “typo-squatting”.
In the assessment of whether a domain name and a trademark are confusingly similar, the relevant trademark would generally need to be recognized as such within the domain name. See paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). Here, the disputed domain name contains an obvious misspelling of the Complainant’s trademark, where the misspelled trademark remains the dominant or principal component of the disputed domain name. See paragraph 1.10 of WIPO Overview 2.0
Previous panels have found that the slight spelling variations do not prevent a disputed domain name from being confusing similar to the complainant’s mark (see, e.g., GoC Limited v. PLUTO DOMAIN SERVICES PRIVATE LIMITED, WIPO Case No. D2008-1693; Encyclopaedia Britannica, Inc. v. John Zuccarini and the Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330; Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362).
Moreover, because the Complainant’s trademark is so well known, Internet users finding on search engines or elsewhere are led to believe that the Complainant is the registrant or is otherwise associated with the disputed domain name; or, if not misled, they are at least confused into wondering whether this is so.
Accordingly, the Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has not authorized, licensed or permitted the Respondent to use the trademark CLARINS and there is no evidence that the Respondent has been or is commonly known by the disputed domain name.
Furthermore, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and it is not making a legitimate noncommercial or fair use of the trademark, since the web pages identified by the disputed domain name display links to websites of the Complainant’s direct competitors (Annex 7 to the Complaint).
On the other hand, by not submitting a Response, the Respondent has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy.
Accordingly, the Panel finds that the Complainant has established paragrah 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Given the international reputation of the CLARINS mark, the Panel finds that in all likelihood the Respondent would have been aware of the Complainant’s well-known CLARINS trademark at the time it registered the disputed domain name.
The Respondent appears to have intentionally registered the disputed domain name as a minor spelling variation of Complainant’s mark, to take advantage of a typographical error that may be made by Internet users while attempting to enter Complainant’s mark as its logical Internet address in their web browsers, or of the likely association of the disputed domain name with the Complainant’s trademark an Internet user may do.
Therefore, the Panel finds that the Respondent has registered and has been using the disputed domain name in bad faith, to intentionally attract for commercial gain Internet users to the website “www.” by trading on the goodwill associated with the CLARINS brand and mark. By registering and using the disputed domain name, which phonetically and visually recalls the Complainant’s famous and distinctive mark, the Respondent has created a likelihood of confusion with respect to this mark as to the source, sponsorship, affiliation and endorsement of the corresponding website and of the products and services offered on the site, according to paragraph 4(b)(iv) of the Policy.
In the Panel’s view, further evidence of bad faith may be found in the fact that the Respondent registered the disputed domain name anonymously (Annex 1 to the Complaint). As the panel stated in The Saul Zaentz Company d/b/a Tolkein Enterprises v. Eurobox Ltd. / “The Saul Zaentz Company”, WIPO Case No. D2008-0156, “Indeed, the use of a proxy service would more usually (although not necessarily always) be indicative that the respondent is seeking to hide its activity from scrutiny in proceedings under the Policy. The natural inference from this is a negative one – that the respondent has ‘something to hide’.”
In addition, it is apparent that the Respondent is benefiting financially through advertising and pay per click links from the unauthorized registration and use of the disputed domain name. This is a common example of registration and use in bad faith, as stated by several UDRP WIPO decisions (see e.g. Ron L. Hilton v. Heng Zhong, WIPO Case No. D2014-1325; Wrays Pty Ltd v. Laszlo Till / Centac, WIPO Case No. DCO2011-0051; Loders Croklaan B.V. v. Loderscrooklaan.Com/ Loders Croklaan, Paul Bakker, WIPO Case No. D2009-1216; Lilly ICOS LLC v. The Counsel Group, LLC, WIPO Case No. D2005-0042; L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623).
Accordingly, the Panel finds that the Complainant has established paragraph 4(a)(iii) 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.
Anna Carabelli
Sole Panelist
Date: May 7, 2015
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