Complainant is Clarins, France, represented by Tmark Conseils, France.
Respondent is rene yomgne, United Kingdom (“UK”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2019. On October 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 29, 2019, 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 Complainant on November 4, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 5, 2019. Further to the Center’s request for clarification, Complainant filed another amended Complaint on November 6, 2019. The Center verified that the Complaint together with the amended Complaints 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 Respondent of the Complaint, and the proceedings commenced on November 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 2, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 4, 2019. The Center appointed Marina Perraki as the sole panelist in this matter on December 11, 2019. 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 Per Complaint, Complainant is a French joint stock company, one of the major actors in the field of cosmetics and make-up goods worldwide. Complainant owns several trademark registrations in many jurisdictions for CLARINS, including: - UK trademark registration No. 997617 for CLARINS (word), filed on August 29, 1972 and registered for goods in international class 3; Complainant is also the owner of the domain names The Domain Name Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and The Domain Name incorporates Complainant’s trademark CLARINS in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525). The word “uk” and the hyphen “-“ which are added in the Domain Name do not avoid a finding of confusing similarity (BHP Billiton Innovation Pty Ltd v. Oloyi,WIPO Case No. D2017-0284, Andrey Ternovskiy dba Chatroulette v. 1&1 Internet Inc / David Grandpierre, WIPO Case No. D2018-2237, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8). The generic Top-Level Domain (“gTLD”) “.com” is also disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (see Rexel Developpements SAS v. Zhan Yequn,WIPO Case No. D2017-0275; Hay & Robertson InternationalLicensing AG v. C. J. Lovik,WIPO Case No. D2002-0122). The Panel finds that the Domain Name is confusingly similar to the CLARINS mark of Complainant. Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements: (i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complaint, Respondent was not authorized to register the Domain Name. Respondent did not demonstrate, prior to the notice of the dispute, any use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. On the contrary, as Complainant demonstrates, the Domain Name redirects to the home page of Complainant’s website “www.clarins.co.uk”. A respondent’s use of a complainant’s mark to redirect users would not support a claim to rights or legitimate interests (WIPO Overview 3.0, section 2.5.3). Furthermore, as Complainant demonstrates, Respondent used the Domain Name for the purpose of a fraud scheme. The use of the Domain Name for an illegal activity such as constructing an email composition containing the Domain Name for deceiving purposes cannot confer rights or legitimate interests on Respondent (L’ Oréal v. Cimpress Schweiz GmbH,WIPO Case No. DCO2017-0021; Syngenta Participations AG v. Simon Laidler / Who Is Agent, WhoIs Privacy Protection Service, Inc.,WIPO Case No. D2014-1702). The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name. Complainant has established Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”: (i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or The Panel concludes that Respondent has registered and used the Domain Name in bad faith. As per Complaint, Complainant’s CLARINS trademark is well known. Furthermore, CLARINS is the surname of a natural entity and therefore highly distinctive. Because the CLARINS mark had been widely used and registered at the time of the Domain Name registration by Respondent, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc.,WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net,WIPO Case No. D2000-0226). Respondent should have known about Complainant’s rights, due to the fact that Complainant’s mark had significant goodwill and reputation when the Domain Name was registered. Furthermore, such knowledge is readily obtainable through a simple browser search due to Complainant’s use of CLARINS mark on the Internet (Caesars World, Inc. v. Forum LLC,WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc.,WIPO Case No. D2009-0462). Respondent could also have searched the European Union trademark registry and would have found Complainant’s prior registration in respect of CLARINS (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata,WIPO Case No. D2012-1338). The Domain Name incorporates in whole Complainant’s mark with the term “-uk” and is also practically identical to Complainant’s domain names As regards bad faith use, Complainant demonstrated that the Domain Name was used for the purpose of initiating a fraud scheme, namely to create a corresponding email address “[…]@clarins-uk.com” in order to hack the identity of the Director of Complainant’s UK affiliate, Clarins UK Limited and then to try to obtain fraudulent money transfer by issuing a false bank reference letter and a false invoice in the name of Clarins UK Limited. Use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending deceptive emails, phishing, identity theft, or malware distribution (WIPO Overview 3.0, section 3.4, Arla Foods Amba v. Michael Guthrie, M. Guthrie Building Solutions,WIPO Case No. D2016-2213). Furthermore, as Complainant demonstrates, the Domain Name redirects users to Complainant’s UK affiliate’s website “www.clarins.co.uk”. The Panel considers the following factors: (i) the reputation of Complainant’s mark, which has been recognized (Clarins v. “-“, Unknown Registrant” / Registration Private, Domains By Proxy, LLC,WIPO Case No. D2015-0451), (ii) the failure of Respondent to submit a response, and (iii) the implausibility of any good faith use to which the Domain Name may conceivably be put, given that as Complainant has demonstrated, the Domain Name was used for purposes other than to host a website, namely for creating an email address for the sole purpose of scam, while the corresponding website redirects to Complainant website “www.clarins.co.uk”. Under these circumstances and on this record, the Panel finds that Respondent registered and is using the Domain Name in bad faith. Complainant has established Policy paragraph 4(a)(iii). 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 Marina Perraki
- French trademark registration No. 1637194 for CLARINS (word), filed on January 7, 1991, and registered for goods and services in, inter alia, international classes 3 and 44; and
- European Union trademark registration No. 005394283 for CLARINS (word), filed on October 17, 2006 and registered on October 5, 2010, for goods and services in inter alia, international classes 3 and 44.
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
Sole Panelist
Date: December 18, 2019
Full & Egal Universal Law Academy