ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION CLARINS v. najla alhajri Case No. D2024-2245 1. The Parties The Complainant is CLARINS, France, represented by Tmark Conseils, France. The Respondent is najla alhajri, Qatar. 2. The Domain Name and Registrar The disputed domain name is registered with Hosting Concepts B.V. d/b/a Registrar.eu. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2024. On June 3, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 4, 2024, 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 (Identity Undisclosed) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 14, 2024, 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 June 18, 2024. The Center verified that the Complaint together with 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 21, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2024. The Center appointed Gonçalo M. C. Da Cunha Ferreira as the sole panelist in this matter on August 16, 2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of
page 2 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 a French company, one of the major actors in the field of cosmetics and make-up products in France for more than 60 years and has business in other geographies namely in other European countries, United Kingdom (“UK”), Canada, China, and United States of America. The Complainant is the owner, amongst others, of the following trademark registrations for CLARINS: - French trademark Registration CLARINS n° 1637194, registered on June 14, 1991, and covering notably cosmetics in class 03 and beauty care services in class 44; - European Union trademark Registration CLARINS n° 005394283, registered on October 5, 2010, and covering notably cosmetics in class 03 and cosmetic and beauty care services in class 44; - UK trademark Registration CLARINS n° UK00905394283 registered on October 5, 2010, and covering notably cosmetics in class 3 and cosmetic and beauty care services in class 44; - Chinese trademark Registration CLARINS n° 13826490 dated December 30, 2013, and covering cosmetic and beauty care services in class 44. and also for CLARINS SKIN SPA: - French trademark Registration CLARINS SKIN SPA n° 4221295, registered on February 19, 2016, and covering notably beauty care services in class 44; - Canadian trademark Registration CLARINS SKIN SPA n° TMA768283, registered on June 1, 2010, and covering notably cosmetic and beauty care services in class 44; - Chinese trademark Registration CLARINS SKIN SPA n° G879234 dated March 6, 2006, and covering notably cosmetics in class 3 and cosmetic and beauty care services in class 44. Prior panels have recognized the wide reputation of the Complainant’s earlier trademark CLARINS, such as: Clarins v. Privacy Service Provided by Withheld for Privacy ehf / Do Thanh Luan, Lilla Group, WIPO Case No. D2022-1178; Clarins v. Margriet Swart, WIPO Case No. DNL2020-0053; Clarins v. rene yomgne, WIPO Case No. D2019-2631; and CLARINS v. DO THANH LUAN, WIPO Case No. D2023-3103. The Complainant also owns and operates various domain names, including the following: , registered on March 16, 1997; registered on March 16th, 1997: The disputed domain name was registered on March 27, 2024, and does not resolve to any active website. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that: 1. the disputed domain name is confusingly similar to the Complainant’s trademarks CLARINS SKIN SPA and CLARINS.
page 3 2. the disputed domain name reproduces identically in first position the earlier registered trademark CLARINS which is highly distinctive per se, as well as the trademark CLARINS SKIN SPA. 3. the addition of a hyphen does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademarks, which are still perfectly recognizable. 4. the addition of the hyphen between the terms “CLARINS SKIN” and “SPA” in the disputed domain name, has no other purpose than to mislead Internet users who will believe that they will be directed to the official website of the Complainant. 5. the trademarks, company name, and domain names incorporating the CLARINS mark have been in use for a long time and is enjoying reputation world-wide in the cosmetic industry. 6. the Complainant’s prior rights do predate, by far, the date of the disputed domain name registered on March 27, 2024. 7. the Respondent has no genuine activity under the name CLARINS. 8. it has never licensed or otherwise authorized in any way the Respondent to use CLARINS SKIN SPA and CLARINS protected names as domain name or as element of a domain name or for any other kind of purpose. 9. the registration of the disputed domain name which constitutes a clear case of typo squatting as it reproduces the registered trademark CLARIN SKIN SPA demonstrates the Respondent's intent to seek undue benefit from the Complainant’s attractiveness. 10. it shall be concluded that the disputed domain name has been registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. In this case, the disputed domain name reproduces entirely two trademarks of the Complainant and just adds a hyphen, which is disregarded for purposes of the first element confusing similarity test. The Panel finds that the hyphen does not prevent the Complainant’s trademarks from being recognizable within the disputed domain name.
page 4 The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although 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 difficult 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 relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Given that the disputed domain name reflects both the CLARINS and CLARINS SKIN SPA marks, there is a risk of implied affiliation in the composition of the disputed domain name that cannot constitute fair use since it effectively suggests association with the Complainant contrary to the fact. WIPO Overview 3.0, section 2.5.1. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the composition of the disputed domain name constitutes a clear case of cybersquatting as it reproduces entirely the registered trademark CLARINS SKIN SPA, which demonstrates the Respondent’s intent to mislead Internet users expecting to find the Complainant. Panels have 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. Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s trademark, and the composition of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitute bad faith under the Policy. The Panel finds that the Complainant has established the third element of the Policy.
page 5 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. /Gonçalo M. C. Da Cunha Ferreira/ Gonçalo M. C. Da Cunha Ferreira Sole Panelist Date: September 10, 2024
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