The Complainant is L’Oréal of Paris, France, represented by Studio Barbero, Italy.
The Respondent is Sukumwaranon, Pornapa of laksi, 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 December 12, 2017. On December 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 13, 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 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2018.
The Center appointed Zoltán Takács as the sole panelist in this matter on January 17, 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.
The language of this administrative proceeding is English, that being the language of the Registration Agreement. 4. Factual Background
The Complainant is one of the world’s largest companies in the field of cosmetic and beauty business, currently present in over 140 countries with more than 30 global brands including the brand CLARISONIC.
The Complainant among others owns the following registrations for the word mark CLARISONIC:
- International Trademark Registration No. 1153893 designating a number of countries throughout the world, registered since February 15, 2013 for goods of Classes 3 and 21 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks (hereinafter: the “Nice Classification”);
- European Union Trademark (hereinafter: “EUTM”) Registration No. 005732375, registered since January 20, 2009 for goods of Classes 3, 5, 21, 34 and 35 of the Nice Classification.
Since August 31, 2013 the Complainant’s United States of America subsidiary L’Oreal USA Inc. owns the domain name which identifies the Complainant’s principal website for its CLARISONIC brand.
The disputed domain name was registered on November 16, 2014. At the time of filing of the Complaint it redirected to an online shop’s website displaying the CLARISONIC trademark and official advertising images and video on the CLARISONIC branded skincare products, without any information, in particular as to any affiliation of the entity managing the website under the disputed domain name.
Prior to filing its Complaint the Complainant sent a cease-and-desist letter to the Respondent requesting cease of any use of the disputed domain name and transfer of it to the Complainant. The Respondent did not reply neither to the cease-and-desist letter nor to the subsequent reminder to it.
The Center’s electronic and paper notifications on commencement of this administrative proceeding sent to the Respondent could not be delivered to the postal addresses provided by the Respondent. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its CLARISONIC trademark since it reproduces its trademark in its entirety and the generic words “skin” and “shop” are not sufficient to distinguish the disputed domain name from the Complainant’s trademark.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii) or (iii) of the Policy.
The Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith. Taking into account the distinctiveness and reputation of the Complainant’s CLARISONIC trademark the Respondent was most likely aware of it when registering the disputed domain name.
The Complainant states that the Respondent incorporated its CLARISONIC trademark in the disputed domain name with obvious intent to capitalize on reputation of its CLARISONIC trademark by diverting Internet users seeking information about the Complainant to its own website for commercial gain which among others is evidence of bad faith registration and use. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
As noted in many previous UDRP panel decisions, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A complainant must prove each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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. A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
As noted by many UDRP panels, if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant proved that it holds registered rights in the trademark CLARISONIC, and for the purpose of this proceeding the Panel establishes that the Complainant’s International Trademark Registration No. 1153893 and EUTM Registration No. 005732375 for the word mark CLARISONIC satisfy the requirement of having trademark rights for the purpose of the Policy.
Having determined that the Complainant has trademark rights in the CLARISONIC mark, the Panel next assessed whether the disputed domain name is identical or confusingly similar to the CLARISONIC trademark of the Complainant.
According to section 1.7 of the WIPO Overview 3.0 “[t]he standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.”
According to section 1.8 of the WIPO Overview 3.0 “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”
According to section 1.11.1 of the WIPO Overview 3.0 “[t]he applicable Top Level Domain (ʻTLDʼ) in a domain name (e.g., ʻ.comʼ, ʻ.clubʼ, ʻ.nycʼ) is viewed as a standard registration requirement and as such is disregarded under the first element confusingly similar test.”
The disputed domain name contains the Complainant’s CLARISONIC trademark in its entirety.
The only elements in the disputed domain name that differ from the CLARISONIC trademark of the Complainant are descriptive terms “skin” and “shop” which is not sufficient to prevent finding of confusing similarity under the first element of the Policy. In fact addition of the descriptive terms “skin” and “shop” to the Complainant’s well-established CLARISONIC mark increase confusing similarity in this case, since they are descriptive in the beauty and cosmetic industry, the core business of the Complainant.
The applicable generic Top-Level Domain (“gTLD”) suffix in the disputed domain name “.com” should in relation to this administrative proceeding be disregarded.
On the basis of facts and circumstance discussed above the Panel finds that the disputed domain name is confusingly similar to the CLARISONIC trademark of the Complainant and that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well‑established rights in the trademark CLARISONIC.
The Complainant has never authorized the Respondent to use its CLARISONIC trademark in any way, and the Complainant’s prior rights in the CLARISONIC trademark precede the date of registration of the disputed domain name.
According to section 2.1 of the WIPO Overview 3.0 while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent.
As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with the relevant evidence demonstrating rights of legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Complainant presented undisputed evidence which convince the Panel that the Respondent has registered and is using the disputed domain name in bad faith.
The reputed CLARISONIC trademark of the Complainant has no meaning; it’s a word invented by the Complainant and therefore distinctive for the corresponding products and services.
The Respondent’s website under the disputed domain name prominently featured products bearing the CLARISONIC trademark of the Complainant which leads this Panel to conclude that the Respondent was clearly aware of the Complainant’s trademark and decided to use, incorporate it in the disputed domain name in order to intentionally ride on, unlawfully benefit from the well-recognized status of the CLARISONIC mark without any authorization or rights to do so. In view of the Panel this activity of the Respondent falls within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent failed to reply to the Complainant’s cease-and-desist letters or to respond to the Complaint in this proceeding. In view of this, the Panel finds that it is reasonable to expect a good faith business to respond to allegations of cybersquatting and the Respondent’s such failure is to this Panel further indication of presence of bad faith at the Respondent’s side.
The Panel finds that paragraph 4(a)(iii) of the Policy is satisfied. 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.
Zoltán Takács
Sole Panelist
Date: January 29, 2018
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