The Complainant is L’Oréal of Paris, France, represented by Studio Barbero, Italy.
The Respondent is Thommagorn Hemtawen of Thailand. 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 November 24, 2017. On November 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 25, 2017, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 25, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 26, 2017.
The Center appointed Knud Wallberg as the sole panelist in this matter on January 14, 2018. 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 active in over 140 countries and is one of the largest cosmetics companies in the world just as the Complainant is active in the dermatological and pharmaceutical fields.
The Complainant owns numerous trademark registrations for the mark CLARISONIC, including the following trademark registrations in Thailand: No. 881820 of February 15, 2013, in class 03 and no. 881821 of February 15, 2013, in class 21.
The Complainant has also registered numerous domain names containing the CLARISONIC mark such as , . The Complainant also tailors its online stores to the different countries and languages via ad hoc websites, such as, “” specifically dedicated to the Thai market.
The disputed domain name was registered on August 13, 2015. At the time of the filing of the Complaint, the disputed domain name resolved to a website that appears to offer the Complainant’s products. Currently, the disputed domain name resolves to a website on which it is stated that “the online shop is temporarily closed”. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its CLARISONIC trademark. It contains that mark in its entirety with only the addition of the non-distinctive term "thai".
The Complainant also asserts that the Respondent is not a licensee, an authorized agent or in any way authorized to use the trademark CLARISONIC, nor is he commonly known by the disputed domain name.
Further, according to the Complainant the Respondent has used the disputed domain name for a website on which unauthorized CLARISONIC products are promoted and offered for sale and on which the Complainant’s trademarks are feature prominently without any disclaimer of non-affiliation. The said use does not amount to a bona fide offering of goods or services or to a legitimate noncommercial or fair use of the disputed domain name without commercial intent. In addition, the Respondent did not reply to the cease-and-desist letter sent by the authorized representative of the Complainant and following reminders, which is an element that supports the claim that the Respondent lacks rights or legitimate interest in the disputed domain name.
The Complainant also asserts that given the use of the trademark since as early as 2004, the amount of advertising and sales of the Complainant’s products, the intensive use of the CLARISONIC trademark and the well-known character of the mark, the Respondent could not possibly be unaware of the existence of the trademark when the disputed domain name was registered. This is underlined by the fact that the Complainant’s trademarks were featured prominently on and products bearing the trademark were offered for sale on the website. The Complainant therefore claims that paragraph 4(b)(iv) of the Policy is applicable to the present case since the Respondent intentionally attracted Internet users for commercial gain to his website by creating a likelihood of confusion with the Complainant’s mark as to its source, sponsorship, affiliation, or endorsement.
Finally the Complainant asserts that the Respondent´s failure to respond to the cease and desist letter that was addressed to him and the fact that the Respondent has supplied incorrect contact details when registering the disputed domain name, further evidences bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint based on the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. A. Identical or Confusingly Similar
The disputed domain name consists of “clarisonic” with the addition of the common term for the Respondent’s country of residence Thailand, namely “thai”. The element “clarisonic” is identical to the Complainant’s mark. In the Panel’s view, the addition of a geographical term is usually not enough to avoid the confusing similarity and the gTLD denomination “.com” is typically disregarded when assessing the confusing similarity of domain names and trademarks.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark and that the requirements in paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests
The Respondent is using the disputed domain name for a website that appears to offer the Complainant’s products. According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the mark. Under the circumstances present in this case, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and the burden of production to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name shifts to the Respondent.
The Panel recognizes that there may be some limited situations where the registration and use of a domain name that specifically refers to and incorporates the trademark of another entity may serve legitimate purposes. As it is stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 2.8:
“While the following section primarily concerns cases involving “bait and switch” or other related unfair trade practices, many of the principles outlined above, especially at section 2.5 with respect to fair use, underpin the following section.
2.8.1 Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the “Oki Data test”, the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.
The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark.
2.8.2 Cases applying the Oki Data test usually involve a domain name comprising a trademark plus a descriptive term (e.g., “parts”, “repairs”, or “location”), whether at the second-level or the top-level. At the same time, the risk of misrepresentation has led panels to find that a respondent lacks rights or legitimate interests in cases involving a domain name identical to the complainant’s trademark. [See section 2.5.1 above.]
Panels have found that PPC websites do not normally meet the Oki Data requirements as they do not themselves directly offer the goods or services at issue.”
This Panel takes the view that without express authority of the Complainant, a right to sell or distribute or to offer services related to the Complainant’s products does not create a right to use a domain name that creates a risk of impersonation with the relevant trademark. See section 2.5.1 of WIPO Overview 3.0, “[a]t one end, certain geographic terms (e.g., , or ), or terms with an ‘inherent Internet connotation’ (e.g., , , or ) are seen as tending to suggest sponsorship or endorsement by the trademark owner”, (e.g., as here CLARISONIC plus a common term for Thailand). In this case, the Respondent is not an authorized seller of the Complainant’s products, and moreover the Respondent does not meet the requirements under the Oki Data principles since the third requirement namely that “the site must accurately and prominently disclose the registrant’s relationship with the trademark holder” is not met, as pointed out by the Complainant in the Complaint.
In the circumstances present here, the Respondent’s registration and use of the disputed domain name indicates the Respondent’s lack of rights or legitimate interests therein, and consequently the prerequisites in the Policy, paragraph 4(a)(ii) are also considered fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy further provides the requirement to prove registration and use in bad faith. Paragraph 4(b) of the Policy lists, by way of examples, the kind of circumstances that evidence the same.
Based on the provided information, the Complainant’s trademark CLARISONIC can be characterized as a well-known trademark and it is clear from the content of the corresponding website that the Respondent was well aware of the Complainant and of the Complainant’s mark when he registered the disputed domain name.
As explained above the disputed domain name has been used for a website at “www.” on which the Respondent offers or has offered what appears to be CLARISONIC products. It is thus evident that the use of the name “clarisonic” refers to the specific products originally manufactured and sold by the Complainant and that this use is capable of giving the Internet user the impression that the Respondent and its website is somehow endorsed by or affiliated with the Complainant. See paragraph 4(b)(iv) of the Policy. The current use of the disputed domain name does not change the Panel’s findings.
Bearing these facts and the facts mentioned above the Panel finds that the disputed domain name has been registered and is being used in bad faith, cf. paragraphs 4(a)(iii) and 4(b) of the Policy.
Consequently, all the prerequisites for cancellation or transfer of the disputed domain name according to paragraph 4(a) of the Policy are fulfilled.
The Complainant has requested the Panel that the disputed domain name be transferred to it. 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.
Knud Wallberg
Sole Panelist
Date: February 1, 2018
Full & Egal Universal Law Academy