WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
L’Oréal SA v. webwin, Zhim You
Case No. D2013-0364
1. The Parties
The Complainant is L’Oréal SA, Paris, France, represented by Studio Barbero, Italy.
The Respondent is webwin, Zhim You, Provincia de Fujian, Vientos, Gutian, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <brosseclarisonicfrance.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2013. On February 25, 2013, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On February 26, 2013, eNom 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 the Complainant on March 1, 2013 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 March 5, 2013. The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2013.
The Center appointed Marilena Comănescu as the sole panelist in this matter on April 10, 2013. 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.
At the moment of sending the Cease and Desist letters and drafting the UDRP Complaint, the registrant of the disputed domain name appeared to be the privacy service WhoisGuard, WhoisGuard Protected, United States of America. After receiving the Complainant’s Cease and Desist letter of February 8, 2013, the privacy service immediately disclosed the underlying registrant of the disputed domain name, webwin, Zhim You from China. Further, in its amended Complaint, the Respondent named webwin, Zhim You from China as sole Respondent in this procedure. Accordingly, the Panel shall consider webwin, Zhim You, China as the Respondent in this procedure.
The language of the proceeding is English.
4. Factual Background
The Complainant, L’Oréal SA, is a French based industrial group, founded in 1909. The Complainant engages in cosmetics and beauty, and is nowadays one of the international leaders in its field.
The Complainant asserts that it acquired the company Pacific Bioscience Laboratories Inc. and its CLARISONIC trademark via a merger agreement in December 2011. The registered holder of some CLARISONIC trademarks is Pacific Bioscience Laboratories Inc. Annex 4 to the Complaint contains a Power of Attorney issued by Pacific Bioscience Laboratories Inc. to L’Oréal SA for trademark matters and thus certifies the Complainant’s capacity in this procedure.
The CLARISONIC products, created in 2004 by a team of scientists and engineers in Seattle, are patented with more than 40 registrations and are distributed worldwide through Complainant’s channels consisting of department stores, perfumeries, travel retail outlets, as well as free-standing stores and e-commerce websites.
Further, the Complainant asserts that, through its global advertising campaigns via television and other media channels, the social campaigns in which the Complainant was involved, also confirmed by the awards received and the volume of sales, the CLARISONIC trademark has become famous and well-known worldwide in the field of sonic skin care products.
The Complainant holds worldwide trademark registrations for “CLARISONIC”, such as the following:
- the US word mark CLARISONIC no. 3732137 filed on 31.03.2008 with first use in commerce since 2004 registered for goods in class 03;
- the US word mark CLARISONIC no. 3880043 filed on 06.05.2010 with first use in commerce since 2005 registered for services in class 35;
- the China word mark CLARISONIC no. 8275826 filed on 07.05.2010 for goods in class 05; and
- the Community Trademark CLARISONIC no. 5732375 filed on 05.03.2007 for goods and services in classes 03, 05, 21, 35 and 44.
The Complainant operates numerous websites including “www.clarisonic.com’’, “www.clarisonic.cn” and “www.clarisonic.us”.
The disputed domain name was created on January 31, 2013.
At the time the Complaint was filed, the disputed domain name was used in connection to a website having similar look & feel and layout as the Complainant’s official websites and was used in connection with offering for sale of, prima facie, counterfeit goods as there were displayed images of the Complainant’s genuine goods but offered for much cheaper prices.
The Complainant sent Cease and Desist letters to the Respondent in February 2013, informing the Respondent of its intellectual property rights in the trademark CLARISONIC and demanding that the disputed domain name be transferred to the Complainant. The Respondent did not reply to the Complainant’s letters.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(i) The disputed domain name <brosseclarisonicfrance.com> is confusingly similar to its trademark CLARISONIC:
The disputed domain name incorporates the Complainant’s trademark CLARISONIC in its entirety. The addition of the non distinctive terms “brosse” and “france” to the CLARISONIC were particularly selected to increase the likelihood of confusion and to induce the Internet users to believe that there is an association between the disputed domain name and the Complainant.
France is a geographical indication which is likely to be interpreted by the Internet users as describing the geographical source of origin of the Complainant’s goods and services and that the Respondent is operating or doing business in such area.
Also, “brosse” (in translation from French language is “brush”) is a descriptive term for the products marketed under CLARISONIC mark as the Complainant markets, inter alia, spare brush heads for its sonic skin care devices.
Therefore the addition of terms related to the Complainant’s business increases rather than decreases the likelihood of confusion.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name:
The Respondent has no affiliation or connection with the Complainant and did not receive any authorization or consent to use the CLARISONIC trademark in a domain name or in any other manner.
The Respondent does not fall under the circumstances listed by paragraph 4(c) of the Policy.
Rather, the Respondent is using the disputed domain name in connection to a commercial website reproducing the Complainant’s official websites look & feel, publishing the Complainant’s trademarks and official images and offering for sale prima facie counterfeit products.
The use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods and services.
Regarding the offer to sale of prima facie counterfeit goods, panels have constantly stated that it cannot be legitimate interest in the sale of counterfeits. Even if the Respondent would sell genuine CLARISONIC branded products on its website, this is not a fair use as the Respondent undoubtedly fails to accurately and prominently disclose the registrant’s relationship with the trademark holder thus generating a clear likelihood of confusion for Internet users.
“Clarisonic” is an invented word with no meaning in any foreign language.
The fact that the Respondent had no reaction to the Complainant’s Cease and Desist letters further emphasizes that the Respondent has no rights or legitimate interests in the disputed domain name.
(iii) The disputed domain name <brosseclarisonicfrance.com> was registered and is being used in bad faith:
The Respondent could not have possibly ignored the existence of the trademark CLARISONIC when registering the disputed domain name particularly due to the following: the Complainant’s trademark use in commerce since 2004; the amount of advertising and sales of the Complainant’s products; the intensive use of the trademark including in China, where the Respondent is apparently located; and the well-known character that should be recognized to the CLARISONIC trademark.
Further, the similar look & feel and layout of the Complainant’s websites copied by the Respondent and that on the website accessed via the disputed domain name the Complainant’s trademarks are featured and the products bearing its trademark are sold, clearly demonstrates the actual knowledge of the CLARISONIC trademark by the Respondent.
The Respondent had registered the disputed domain name with clear intentions to refer to the Complainant’s mark in order to capitalize on the reputation of the Complainant’s marks by diverting Internet users seeking information about the Complainant to its own website and earn revenues by the offer for sale of products promoted thereon.
With reference to the use of the disputed domain name in bad faith, the disputed domain name is used in connection with a website almost identical to the Complainant’s website where prima facie counterfeit products are offered for sale. Such a conduct demonstrates that the only purpose of the Respondent was to use the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to such a website, creating al likelihood of confusion with the endorsement of the Complainant’s website and to taking profit from the offer for sale of the products promoted thereon.
Also, selling on a website which displays the Complainant’s marks the Complainant’s prima facie counterfeit goods at prices much cheaper than the original products, is disrupting the Complainant’s business and constitutes another indication of bad faith behavior according to paragraph 4(b)(iii) of the Policy.
Even if the goods offered on the disputed website were genuine deriving from the Complainant, Internet users could erroneously believe that the website published at the disputed domain name is operated by the Complainant or its authorized agents.
Further circumstances evidencing bad faith are the facts that the Respondent had registered the disputed domain name using a WhoIs protection service and the Respondent’s failure to reply to the Cease and Desist letters addressed to its attention by the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint 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.”
In accordance with paragraph 4(a) of the Policy, the Complainant must prove to the Panel that the following three circumstances are cumulatively met in order to obtain the transfer or cancellation of the disputed domain name:
(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 does not have rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used by the Respondent in bad faith.
The Respondent’s failure to respond does not automatically result in a decision in the favor of the Complainant, the latter must establish each of the three elements provided by paragraph 4(a) of the Policy, above listed.
Consequently, the Panel shall further analyze the eventual concurrence of these circumstances in the present case.
A. Identical or Confusingly Similar
There are two requirements that a complainant must establish under this element, namely: that it has rights in a trademark, and, if so, that the disputed domain name is identical or confusingly similar to its mark.
The Complainant has rights in the CLARISONIC trademark, holding registrations worldwide, including in China since 2010 where the Respondent appears to be located.
The dominant part of the disputed domain name <brosseclarisonicfrance.com> incorporates the Complainant’s widely advertised and fanciful trademark CLARISONIC in its entirety.
In addition to this, the disputed domain name contains the generic terms “brosse” (meaning “brush” in French language) and “france”, whereas the Complainant’s goods branded CLARISONIC are, inter alia, spare brush heads and the Complainant’s headquarters are located in France. Such terms are therefore descriptive for the Complainant’s business.
Numerous UDRP panels have considered that the addition of generic or descriptive words to trademarks in a domain name is not sufficient to escape the finding of confusing similarity and does not change the overall impression of the domain name as being connected to the complainant’s trademark. In fact, adding descriptive terms for the business of the Complainant, even increases the likelihood of confusion (see Telstra Corporation Limited v. Peter Lombardo, Marino Sussich and Ray Landers, WIPO Case No. D2000-1511; Nike, Inc. v. Farrukh Zia, WIPO Case No. D2000-0167; Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications, WIPO Case No. D2003-0602; Sanofi-Aventis, Aventis Inc. v. Searchology, Domain Registrant, WIPO Case No. D2007-0889; Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434; Revlon Consumer Products Corporation v. Vladimir Sangco, WIPO Case No. D2010-1774; Revlon Consumer Products Corporation v. IONE Inc., WIPO Case No. D2010-1000).
Further, it is well established in decisions under the UDRP that the presence or absence of characters (e.g., hyphens, dots) in a domain name and indicators for top level domains (e.g., “.com”, “.info”, “.net”, “.org”) are typically irrelevant to the consideration of confusing similarity between a trademark and a domain name.
For all the above, the Panel finds that the disputed domain name <brosseclarisonicfrance.com> is confusingly similar to the Complainant’s trademark CLARISONIC.
Accordingly, the Panel finds that the first element of the Policy is established, and the Complainant has proven that the disputed domain name is confusingly similar to its trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant has provided a prima facie case under this element of the Policy showing that it has had no relationship with the Respondent and has not granted the Respondent any right to register and use its CLARISONIC trademark. Therefore, in line with prior UDRP decisions, the burden of production on this element shifts to the Respondent to demonstrate its rights or legitimate interests in the disputed domain name.
Although properly notified by the Center, the Respondent failed to submit any response in the present procedure. Also, the Respondent failed to respond to Complainant’s Cease and Desist letters sent prior to commencing the present procedure. Considering other relevant circumstances of a matter, the silence of the Respondent may support a finding that it has no rights or legitimate interests in respect of the disputed domain name. See also Alcoholics Anonymous World Services, Inc., v. Lauren Raymond, WIPO Case No. D2000-0007; The Great Eastern Life Assurance Company Limited v. Unasi Inc., WIPO Case No. D2005-1218; Ronson Plc v. Unimetal Sanayi ve Tic.A.S, WIPO Case No. D2000-0011.
Further, there is no evidence before the Panel to suggest that the Respondent has made a bona fide use of the disputed domain name, or has been known by this disputed domain name, or is making any legitimate noncommercial or fair use of the disputed domain name.
In fact, the disputed domain name resolves to a website almost identical to the Complainant’s official websites, having the CLARISONIC trademark and official images displayed on the website without the consent of the Complainant.
Regarding the offer to sale of prima facie counterfeit goods, this Panel obviously agrees with the previous panels that it cannot be legitimate interest in the sale of counterfeits.
In this case, assuming that the products or at least some of the products offered for sale under the disputed domain name were genuine CLARISONIC branded products, the key question under this element is whether the Respondent’s use of the disputed domain name for such resale amounts to a bona fide offering of goods under paragraph 4(c)(i) of the Policy. The current state of panel decisions in relation to this issue is helpfully summarized in the Paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) as follows:
“Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder.”
This summary is based on panel decisions such as Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095. At least one condition that it outlines has clearly not been satisfied by the Respondent in this case: on the website corresponding to the disputed domain name there are no accurate information regarding the Respondent, in fact at the section “A propos de nous”/”About us” the Respondent is providing a story about CLARISONIC trademark origins and is making statements falsely suggesting to the Internet users that the website is managed by the Complainant itself or by one of its subsidiaries.
For all these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires proof of bad faith in both the registration and use of the disputed domain name.
When assessing the bad faith in the registration requirement, the following should be considered (1) whether the Respondent knew of the Complainant and its trademark, and (2) whether the Respondent targeted the Complainant to benefit from confusion generated by the similarity between the disputed domain name and the trademark (see Avon Products, Inc. v. Mary Ultes, WIPO Case No. D2009-0471).
The Complainant’s trademark has been used since 2004 and registered worldwide, including in China since 2010, where the Respondent is apparently located. Due to its extensive advertising and use the Panel accepts that the CLARISONIC trademark has acquired an important degree of recognition in the markets it penetrated in the field of sonic skin care products.
The CLARISONIC trademark has no meaning and it is a word invented by the Complainant, therefore it is distinctive for the claimed goods.
The disputed domain name <brosseclarisonicfrance.com> was registered in January 2013 and incorporates, along with Complainant’s distinctive trademark, two generic words related to the Complainant’s business, namely “brosee” (brush) and “france”.
From the above, the Panel concludes that indeed the Respondent had knowledge of the Complainant’s trademark and business and incorporated the CLARISONIC trademark and descriptive terms in the disputed domain name in order to create confusion and attract Internet users on its web portal.
At the time the Complaint was filed, the Respondent was using the Complainant’s trademark for a website with a layout very similar to the Complainant’s official websites for CLARISONIC branded goods and was selling products marketed as being genuine CLARISONIC goods. Due to the much lower price, the Complainant believes that, prima facie, the goods are counterfeits.
The Respondent is using without permission the Complainant’s distinctive trademark in order to get traffic on its web portal and to obtain commercial gain from the false impression created for the Internet users with regard to a potential affiliation/connection with the Complainant. This impression is increased by the use of the Complainant’s trademark along with descriptive words for Complainant business in the disputed domain name, the layout and the content on the website corresponding to the disputed domain name.
Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” is evidence of registration and use in bad faith.
Given that the disputed domain name incorporates the Complainant’s trademark and the website operated under the disputed domain name displays the Complainant’s trademarks and copies the layout of Complainant’s official websites indeed in this Panel’s view, the Respondent intended to attract Internet users accessing the website corresponding to the disputed domain name <brosseclarisonicfrance.com> who may be confused and believe that it is a website held, controlled by, or somehow affiliated or related to the Complainant, for its commercial gain.
In the same time, the Complainant is mentioning the provisions of paragraph 4(b)(iii) of the Policy, particularly the disruption of the Complainant’s business caused by the lower prices of the products presented on the website corresponding to the disputed domain name. Such paragraph refers to the actions of a competitor of the Complainant. Because paragraph 4(b) of the Policy sets out a nonexclusive list of circumstances that evidence bad faith registration and use of a domain name and the broader meaning that was assigned to the word "competitor" by the previous panels1, this Panel agrees with the Complainant’s assertions that the offering for sale of prima facie counterfeit products may produce the disruption of the activity of the manufacturer of the genuine goods.
Further, the Respondent chose not to participate in these proceedings and has not contested any of the allegations made by the Complainant, and did not provide any evidence whatsoever of any legitimate noncommercial, or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the Complainant’s trademark. Such passive attitude of the Respondent can be considered further evidence of bad faith. See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Kabushiki Kaisha Toshiba v. Shan Computers, WIPO Case No. D2000-0325; Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
In the same time, the Respondent has failed to provide accurate contact details to the relevant registrar as the post address and telephone number provided in the contact details were inaccurate. Along with other circumstances in a case, the supplying of an incorrect or incomplete address by the respondent to the registrar can be considered sign of bad faith. See also Ticketmaster Corporation v. Dmitri Prem, WIPO Case No. D2000-1550; Francesco Totti v. Jello Master, WIPO Case No. D2002-0134; BellSouth Intellectual Property Corporation v. Real Yellow Pages, WIPO Case No. D2003-0413.
For all these reasons, the Panel finds that the third element of the Policy is established on the record in these proceedings, and accordingly that the disputed domain name was registered and is being used in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
For all 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 <brosseclarisonicfrance.com> be transferred to the Complainant.
Date: April 17, 2013
1 See Mission Kwa Sizabantu v. Benjamin Rost, WIPO Case No. D2000-0279 saying that this paragraph should be read as “the Respondent was "primarily for the purpose of disrupting" the activities of another”.