Complainant is CLARINS, a French joint stock company, represented by Tmark Conseils, France.
Respondent is Alexander Lemeshenko, Ukraine. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2021. On January 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 5, 2021, 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 January 6, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on January 6, 2021. The Center verified that the Complaint together with the amendment to 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 January 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 27, 2021. The Respondent filed an informal response on January 20, 2021, stating the possibility of settling the dispute. The Complainant sent an email to the Center on January 22, 2021, stating that they did not want to request a suspension of proceeding with the purpose of exploring settlement discussions. The Respondent’s final Response was filed with the Center on January 27, 2021, the due date. The Center appointed Lawrence K. Nodine as the sole panelist in this matter on February 10, 2021. 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 Founded over 50 years ago, Complainant is one of the major actors in the field of cosmetics and make-up goods. Complainant has a global reach, doing business in Europe, Australia, North and South America, Asia, and Africa where the Complainant promotes its products, services, and related activities. Complainant owns numerous trademark registrations for the word mark, and coined term, CLARINS, including United States Registration No. 935002, registered on May 30, 1972, and European Trade Mark Registration No. 005394283, registered on May 10, 2010. Complainant also owns a registration for the domain Respondent registered the Disputed Domain Name on November 21, 2020. At the time of the filing of the Complaint, the Disputed Domain Name led to a pay-per-click (“PPC”) website featuring links to the websites of Complainant’s competitors and other cosmetic and make-up sites. In his response, Respondent asserts that he has a business in the field of “Internet trade” in Ukraine, where he is “the official distributor or official dealer” of certain brands in Ukraine. The Disputed Domain Name currently leads to a website featuring Complainant’s products for sale in the Russian language. 5. Parties’ Contentions A. Complainant Complainant contends that the Disputed Domain Name is virtually identical and confusingly similar to Complainant’s CLARINS mark. According to Complainant, the addition of the word “shop” in the Disputed Domain Name makes no difference, as it is inherent to the operation of the domain name system. Complainant also asserts that Respondent is not commonly known by “CLARINS” or any variations thereof and that Complainant has not authorized or licenses Respondent’s use of Complainant’s mark. Additionally, Complainant contends that Respondent is using the Disputed Domain Name in bad faith, as evinced by the pay-per-click links relating to other cosmetic and make-up websites on Respondent’s website. Complainant alleges that the Respondent intends to mislead consumers and divert them from Complainant’s real and official website “clarins.com”, in order to create a commercial gain. After he received the Complaint, but before he filed a response to the allegations, Respondent offered to settle by selling the Disputed Domain Name to Complainant for USD 700, noting that if the parties settled, Complainant would receive a USD 1000 refund of the filing fee. Complainant declined and asserted that the offered price was further evidence of bad faith as it exceeded out of pocket costs, which it asserted would typically be about USD 50. B. Respondent Regarding bad faith, Respondent alleges that at the time he registered the Disputed Domain Name, Respondent planned to create, through negotiations presumably with Complainant, an appropriate site for online sales of Complainant’s products. The Disputed Domain Name now leads to a website featuring Complainant’s products for sale. 6. Discussion and Findings A. Identical or Confusingly Similar The Respondent concedes that Complainant has satisfied paragraph 4(a)(i) of the Policy. Complainant has rights in the CLARINS trademark with it has registered in several countries. The Disputed Domain Name is identical to Complainant’s registered mark. The generic Top-Level Domain (“gTLD”) is generally disregarded under the first element of the Policy. The gTLD of the Disputed Domain Name is not considered when evaluating the first criteria. Regardless, adding the word “shop” would not dispel confusion. The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in respect of the Disputed Domain Name, which Respondent has not adequately rebutted. First, Respondent’s use of the Disputed Domain Name in connection with a PPC website that links to Complainant’s competitors is not a bona fide use. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.9. Second, Respondent’s alterations of his website after the Complaint was filed do not vest Respondent with rights under the Policy. The Policy provides that a respondent may introduce evidence that “before any notice to you of the dispute” the Respondent used or made “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.” Policy 4(c)(i). Furthermore, Respondent’s unverifiable assertion of his intent to start negotiations with Complainant does not qualify as “demonstrable preparations”clear contemporaneous evidence of bona fide pre-complaint preparations is required.” WIPO Overview 3.0, section 2.2. Moreover, the preferred “demo” website does not reflect a bona fide use. Among other duties, bona fide resellers must make clear their relationship to the trademark owner and certainly, may not as here claim an authorized relationship when there is none. WIPO Overview 3.0, section 2.8 and Oki Datia Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Yet, here, Respondent’s new webpage includes the banner “official online store of the French brand-Clarins.”1 And the demo [available online; not in the record] includes several reviews complimenting the quality of the products and service, but these reviews are obviously fictitious as they are dated 2018 and 2019, before Respondent registered the Disputed Domain name. The Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel finds that Respondent registered the Disputed Domain Name in bad faith. Respondent admits that he was fully aware of Complainant and its products contends he meant to start negotiations for rights to operate an online store in Ukraine. The Panel finds that Respondent’s assertion of an intent to negotiate is not credible, in particular because Respondent made no effort to open negotiations before receiving the Complaint and made no mention of his hopes to negotiate reseller rights when he offered to sell the Disputed Domain Name for USD 700 – which fact undermines his assertion that he wants to do business with Complainant. The Panel also finds bad faith use. “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.” WIPO Overview 3.0, section 3.1.4. Moreover, Respondent’s use of the Disputed Domain Name in connection with a website with PPC links for goods and services competitive with Complainant’s goods and services followed by use for an apparent demo webshop demonstrates that Respondent “has “intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.” Policy paragraph 4(b)(iv). See Wayfair LLC v. Xiamen Privacy Protection Service Co., Ltd. / zhang qin,WIPO Case No. D2018-2032. Respondent’s offer to sell the Disputed Domain Name for more than out of pocket expenses further confirms the Panel’s finding of bad faith. Policy, paragraph 4(b)(iv). Complainant has satisfied 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 Lawrence K. Nodine 1 Respondent included the Russian language version in his response. The quoted English translation is available online.
Sole Panelist
Date: February 25, 2021
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