WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

L’Oréal SA v. Katren Bwrone

Case No. D2013-0668

1. The Parties

Complainant is L’Oréal SA of Paris, France, represented by Studio Barbero, Italy.

Respondent is Katren Bwrone of Zhuhai, Guangdong, China.

2. The Domain Names and Registrar

The disputed domain names <clarisonicmia-au.info>, <clarisonicmiauk-brush.info> and <clarisonicmia2prous.info> are registered with Wild West Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2013. On April 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 12, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 8, 2013.

The Center appointed Sandra A. Sellers as the sole panelist in this matter on May 23, 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.

4. Factual Background

Complainant is one of the world’s largest cosmetics companies. Its origins date back to 1909, and it took the name L’Oreal in 1939. Complainant sells various beauty products, including dermatological goods. Its products are marketed and sold through various distribution channels, including the Internet and direct mail. Complainant currently is present in over 130 countries.

Complainant acquired the CLARISONIC trademark through a merger in December 2011. The CLARISONIC products are protected by US, Community and Chinese trademark registrations, among others. The CLARISONIC products were created in 2004 and are covered by over 40 patent registrations. They were sold initially in the professional market and then in the consumer one. The CLARISONIC products are marketed through Complainant’s extensive worldwide sales network. These products are marketed extensively through the Internet and social media, television, and popular magazines. In the last two years, the CLARISONIC products have received numerous awards for best products in industry and general circulation publications. Sales in 2012 amounted to approximately USD 200 million.

Complainant’s CLARISONIC products are marketed on the Internet primarily through its main website, “www.clarisonic.com”. The Complaint cites 60 domain names containing the CLARISONIC mark.

The CLARISONIC line of products includes the Mia and Mia2 models. Two Chinese registrations cited by Complainant are for CLARISONIC MIA products.

Respondent registered the disputed domain names in late 2012. Respondent’s websites display and offer for sale dermatological products under the CLARISONIC mark, depicted identically to Complainant’s mark, including the same font. They also show pictures of products that appear to be identical to Complainant’s products. Respondent’s products are priced significantly less than Complainant’s products, which Complainant suggests indicate that Respondent’s products are counterfeit.

Complainant sent cease and desist letters to Respondent on January 25, 2013, and reminders on February 7, 2013 and April 8, 2013. Respondent did not reply.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has rights in the CLARISONIC and CLARISONIC MIA registered trademarks marks. It contends that the disputed domain names are confusingly similar to Complainant’s marks because they consist of Complainant’s CLARISONIC mark in its entirety. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain names, and that Respondent registered and uses the disputed domain names in bad faith. Complainant also alleges that the products Respondent offers for sale through the disputed domain names are counterfeits of Complainant’s CLARISONIC products.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest Respondent of the disputed domain names, Complainant must demonstrate each of the following:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights sor legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Complainant and its predecessors have sold cosmetic and dermatological products for over 110 years. CLARISONIC products have been sold since 2004. Complainant owns numerous registrations for the CLARISONIC mark, and others for CLARISONIC MIA marks. Complainant has established that it has rights in the marks.

The disputed domain names are confusingly similar to Complainant’s CLARISONIC and CLARISONIC MIA marks. The disputed domain names contain Complainant’s CLARISONIC and CLARISONIC MIA marks in their entirety. The only difference between Complainant’s marks and the disputed domain names are the addition of non-distinctive elements, such as “2”, “prous”, “uk”, “brush”, and “au”, or hyphens, which do not negate confusing similarity. Previous UDRP decisions have held that the addition of a common words or elements does not distinguish a domain name from complainant’s mark or preclude a finding of confusing similarity. See, e.g., Walmart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. Other decisions have held that the addition of a geographical indication is likely to be interpreted by Internet users as describing geographical origin of Complainant’s products or services and that the Complainant is operating or doing business in such area. See, kabushiki Kaisha Toshiba dba Toshiba Corporation v WUFACAI, WIPO Case No. D2006-0768; LEGO Juris A/S v Budi Irshandi/Cha Licious, WIPO Case No. D2012-2343 (for “uk”); Fashions Limited v Australia Karen Millen, Linde Meredith, WIPO Case No. D2012‑2376 (for “au”). Additionally, previous UDRP decisions have held that the addition of terms such as “brush” that are clearly descriptive of products made by Complainant increases, rather than decreases, the likelihood of confusion given that “Internet users would assume that the disputed domain name combining the trademark and such terms… is related to the promotion of Complainant’s products.” See, Revlon Consumer Products Corporation v Vladimir Sangcol, WIPO Case No. D2010-1774.

Accordingly, the Panel finds that Complainant has rights in the CLARISONIC and CLARISONIC MIA marks and that the disputed domain names are confusingly similar to Complainant’s marks. Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response.

Complainant has not authorized Respondent or anyone else to register and use the disputed domain names. Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the CLARISONIC or CLARISONIC MIA marks. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain names.

The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain names.

Respondent is in default, and has not provided any evidence in its own favor.

The Panel finds that the evidence in the record is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain names, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that:

“for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”

Registration in bad faith

It is difficult to conceive that Respondent did not know of Complainant’s marks and products when Respondent registered the disputed domain names. As set forth above, the CLARISONIC products are protected by various US, Chinese and Community registrations. The CLARISONIC products have been sold since 2004. The CLARISONIC products are marketed through Complainant’s extensive worldwide sales network, through the Internet and social media, television, and popular magazines. In the last two years, the CLARISONIC products have received numerous awards for best products in industry and general circulation publications. Sales in 2012 amounted to approximately USD 200 million. All of this occurred before Respondent registered <clarisonicmia-au.info>, <clarisonicmiauk-brush.info> and <clarisonicmia2prous.info> in late 2012. Further, these disputed domain names revert to web pages showing products identical to Complainant’s products, and are sold under Complainant’s CLARISONIC and CLARISONIC MIA marks, which reinforces the inference that Respondent was aware of Complainant’s marks. Based on these facts, this Panel infers that Respondent was aware or must have been aware of Complainant’s mark when Respondent registered the disputed domain names, and therefore registered them in bad faith. See, e.g., Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, in which the panel found it “inevitable that [r]espondent registered the domain names in full knowledge of [c]omplainant’s rights and interests”.

Use in bad faith

It is clear that Respondent, by using the disputed domain names, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondents’ websites or of a product or service on Respondent’s websites, thus using Complainant’s marks in bad faith. These disputed domain names revert to web pages showing products identical to Complainant’s products, and which are sold under Complainant’s CLARISONIC and CLARISONIC MIA marks. Their content appears designed to reinforce the Internet user’s impressions that the disputed domain names belong to Complainant. The resulting confusion is grounds for a finding of bad faith use under paragraph 4(b)(iv) of the Policy. See Pandora Jewelery, LLC v ke ying, no, bing jin, fcgem, Wei Pang, na no and fcg, xiong mao, WIPO Case No. D2006-1107.

The products sold on Respondent’s websites also appear to be identical to Complainant’s products, but sold at much lower prices, which Complainant asserts is prima facie evidence that Respondent’s products are counterfeits, and which disrupt Complainant’s business. Other UDRP panels have held that the sale of counterfeit products is an indication of bad faith under paragraph 4(b)(iii) of the Policy. See Guccio Gucci SpA v Liuqing Wu, Feiji Lu, WIPO Case No. D2011-1506; Moncler Srl v Linsaihui, WIPO Case No. D2010-1676; Prada S.A. v. Domains for Life, WIPO Case No. D2004-1019.

Finally, Respondent registered three domain names corresponding to Complainant’s marks, which is sufficient to constitute a pattern of bad faith conduct under paragraph 4(b)(ii) of the Policy. See General Electric Company v Normina Anstalt a/k/a Igor Fyodorov, WIPO Case No. D2000‑0452.

This Panel finds that Respondent registered and used the disputed domain names in bad faith under paragraphs 4(b)(ii), (iii) and (iv) 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 names <clarisonicmia-au.info>, <clarisonicmiauk-brush.info> and <clarisonicmia2prous.info> be transferred to Complainant.

Sandra A. Sellers
Sole Panelist
Date: June 3, 2013