ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Clarins v. Girard Wendy Case No. D2024-3236 1. The Parties The Complainant is Clarins, France, represented by Tmark Conseils, France. The Respondent is Girard Wendy, United States of America (“US”). 2. The Domain Name and Registrar The disputed domain name is registered with Sav.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2024. On August 7, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 7, 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 August 8, 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 August 13, 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 August 15, 2024. In accordance with the Rules, paragraph 5, the due date for Response was September 4, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 6, 2024. The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on September 10, 2024. 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.
page 2 4. Factual Background The Complainant is Clarins, a French company in the field of cosmetics and make-up products. The Complainant has been doing business in France for more than 60 years and has business in other regions, namely in other European countries, United Kingdom (“UK”), Canada, China, and US. 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; - US trademark Registration CLARINS n° 0935002, registered on May 30, 1972; - 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 August 21, 2015, and covering cosmetic and beauty care services in class 44. The Complainant also owns and operates various domain names, including , registered on March 16, 1997. The Complainant offers its products through their website “www.clarins.com”, through partners’ websites and/or in physical department stores. The disputed domain name was registered on June 29, 2024, and resolved to a website offering infringing CLARINS cosmetic products under the Complainant’s trademark and which was a clear knock-off version of the Complainant’s official website. This website incorporated the Complainant’s CLARINS logo as well as part of the trade dress of the Complainant’s French website, as evidenced in Annex 7 to the Complaint. At the time of this decision, the disputed domain name resolves to an inactive website, without any content. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for the transfer of the disputed domain name. Notably, the Complainant contends that the disputed domain name is confusingly similar to the Complainant’s mark registered and used worldwide. The Complainant alleges that the Respondent does not have rights or legitimate interests in the disputed domain name. The disputed domain name adopted by the Respondent – a reproduction of the Complainant’s registered mark with a double “c” in the beginning – shows a clear intention of misleading Internet users, as it previously linked to a website that featured images and descriptions of the Complainant’s products and incorporated the Complainant’s CLARINS logo. The Complainant underlines that the disputed domain name gives the impression that it is associated with the Complainant. The Complainant also indicates that the Respondent registered and is using the disputed domain name in bad faith, as the consumers accessing the Respondent’s website will believe that the content is sponsored, endorsed or authorized by the Complainant. Hence the Complainant concludes that the disputed domain name was registered and is being used in bad faith.
page 3 B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The Policy, in its paragraph 4(a), determines that three elements must be present and duly proven by a complainant to obtain relief. These elements are: i. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and ii. the Respondent has no rights or legitimate interests in respect to 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 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 contends that the disputed domain name is confusingly similar to the CLARINS trademark, as it is entirely incorporated in the disputed domain name. The Complainant has presented consistent evidence of ownership of the trademark CLARINS in jurisdictions throughout the world, by presenting an extensive list of trademark registrations for it, as well as comprehensive evidence of the use of the trademark. The use of the trademark CLARINS with the doubling of the first letter “C” in the disputed domain name does not prevent a finding of confusing similarity with the Complainant’s trademark. This doubling of the letter “C” can be seen as an obvious misspelling of the trademark CLARINS, a typosquatting practice creating confusing similarity between the Complainant’s trademark and the disputed domain name. In any event, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element. WIPO Overview 3.0, section 1.8. It is also well established that “.com”, as a generic Top-Level Domain, may be disregarded in the assessment of the confusing similarity between the disputed domain name and the Complainant’s mark. WIPO Overview 3.0, section 1.11.1. Given the above, the Panel concludes that the disputed domain name is confusingly similar to the registered trademark of the Complainant. B. Rights or Legitimate Interests The Panel understands that the mark CLARINS is naturally associated with the Complainant, since it is not only registered as a mark in its name, but also has been used to identify the products and services by the Complainant for over 60 years. Hence, the Panel considers that the Respondent, in all likelihood, could not be unaware of the mark CLARINS, and its direct relation to the Complainant.
page 4 The Respondent has not submitted a response to the Complaint. Also, there is no evidence that the Respondent has any authorization to use the Complainant’s trademark or to register domain names containing the Complainant’s trademark CLARINS, nor evidence that the Respondent is commonly known by the disputed domain name. Besides, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. In fact, the Complainant presented evidence that the disputed domain name resolved to a website that was presented as if it was offering for sale the Complainant’s counterfeited goods under the mark CLARINS. The Complainant has not authorized the Respondent to use its mark CLARINS or register a domain name incorporating the mark. Additionally, there is no evidence that the Respondent is commonly known by the disputed domain name or has made a bona fide or noncommercial fair use of the disputed domain name. This is supported by the use of the disputed domain name in connection with a website that falsely appears to be a website for, or otherwise associated with the Complainant (as evidenced in Annex 7 of the Complaint), which shows that the Respondent has failed to create a bona fide offering of goods. The Panel is satisfied that the Complainant has made a prima facie case of the Respondent’s lack of rights or legitimate interests in the disputed domain name. This has not been rebutted by the Respondent. Thus, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name. For this reason, the Panel believes that the Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith It is clear to the Panel that the Respondent has registered the disputed domain name with the purpose of taking unfair advantage of the Complainant’s mark. The Panel finds that the disputed domain name was likely registered to mislead consumers – hence the addition of the double “C” – which can surely be a fact from which the Respondent may well profit by giving Internet users the impression that the disputed domain name belongs to the Complainant. The fact that the disputed domain name previously linked to a website that featured images and descriptions of the Complainant’s products and incorporated the Complainant’s CLARINS logo supports a finding of bad faith in these circumstances. The Respondent intended to give an overall impression that the disputed domain name is associated with the Complainant. All the points above lead to the conclusion by this Panel that the Respondent was fully aware of the Complainant when registering the disputed domain name and that the Respondent registered and is using the disputed domain name in bad faith. The Panel finds that the Complainant has also proved the third element 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 be transferred to the Complainant. /Alvaro Loureiro Oliveira/ Alvaro Loureiro Oliveira Sole Panelist Date: September 30, 2024
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