WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Clarins v. Whois Privacy Services Pty Ltd / Domain Privacy LTD

Case No. D2013-1953

1. The Parties

The Complainant is Clarins of Neuilly Sur Seine, France, represented by Tmark Conseils, France.

The Respondent is Whois Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia / Domain Privacy LTD of Marblehead, Massachusetts, United States of America.

2. The Domain Name and Registrar

The disputed domain name <clrins.com> (the “Disputed Domain Name”) is registered with Fabulous.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2013. On November 15, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 18, 2013, 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 the Complainant on November 21, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on November 22, 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 November 27, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 17, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 18, 2013.

The Center appointed Isabel Davies as the sole panelist in this matter on January 8, 2014. 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

The Complainant is a leader in the cosmetics field. It has been doing business for more than 50 years and is well known internationally.

It has registered trademarks in many countries of the world dating back to at least 1958.

The Complainant’s company name is Clarins and it owns domain names including <clarins.com> dating from 1997, which is being used internationally including in the United States of America, country for which the Complainant has also a website “www.clarinsusa.com”, the latter domain name being registered since November 12, 1997.

The Disputed Domain Name was registered May 9, 2006.

5. Parties’ Contentions

A. Complainant

A. The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(Policy, Paragraph 4(a)(i); Rules, Paragraphs 3(b)(viii), (b)(ix)(1))

The Complainant states that it is one of the major players in the field of cosmetics and has been doing business for more than 50 years where it is well-known worldwide.

It states that he Complainant owns many trademarks worldwide, and relies upon the following CLARINS trademarks having effects in France, European Union, Canada, United States of America where the Respondent appears to be established, China, Hong-Kong (China), United-Kingdom of Great Britain and Northern Ireland.

France:

French trademark Registration CLARINS n° 1637194, filed on January 7, 1991, and covering notably cosmetics in class 3 and beauty care services in class 44,

European Union:

Community trademark Registration CLARINS n° 005394283, dated October 10, 2006, and covering notably cosmetics in class 3 and cosmetic and beauty care services in class 44,

USA

American Trademark Registration CLARINS n° 935002, filed on June 2, 1970, in the name of the Complainant’s subsidiary Clarins Groupe SARL, and covering cosmetics and make-up goods in class 3,

American Trademark Registration CLARINS n° 1574179 filed on June 2, 1970, in the name of the Complainant’s subsidiary Clarins Groupe SARL, and covering cosmetics and make-up goods in class 3,

Canada:

Canadian Trademark Registration CLARINS n° TMA645123, filed on June 3, 2004, and covering cosmetic products in class 3,

China:

Chinese trademark registration n° 796200, dated February 1, 1994, in class 3, notably for cosmetics,

Hong-Kong (China):

Registration CLARINS n° 19701641AA, dated March 24, 1970, covering notably class 3 for cosmetics,

Registration CLARINS n° 199705441, dated July 4, 1992, in class 42 for beauty care related services,

United-Kingdom:

Registration CLARINS n° 997617, dated August 29, 1972, covering notably class 3 for cosmetics.

The Complainant states that these trademarks, which predate the registration of the Disputed Domain Name, are in force and are the exclusive property of the Complainant.

The Complainant also states that the name “Clarins” constitutes the registered company name of the Complainant, and the domain name <clarins.com> registered since March 16, 1997, is being used internationally including in the USA, country for which the Complainant has also a website “clarinsusa.com”, the latter domain name being registered since November 12, 1997.

The Complainant states that the word “clrins” is clearly omitting the letter “A” of the well-known trademark CLARINS. This omission is clearly a “typosquatting” case, and there are many previous cases where the disputed domain name has been found confusingly similar to a trademark further to the omission of a letter.

Therefore, the Complainant states, the Disputed Domain Name <clrins.com> is confusingly similar to the above-cited trademarks CLARINS, company and domain names.

B. The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

(Policy, Paragraph 4(a)(ii); Rules, Paragraph 3(b)(ix)(2))

The Complainant states that the Respondent, whoever it is, is not affiliated in any manner to the Complainant, and has never been authorized to use or register in any way the name “Clarins”, including as a domain name.

Furthermore, it states, the Respondent is not making a noncommercial or a fair use of the Disputed Domain Name, since it is not used in relation with a real proper website. In fact the Respondent only uses it to provide Internet users to browse through sponsored links in French.

Moreover, these offending web pages display links related to the Complainant’s field of activity, i.e. cosmetics, make-up and perfumery products.

Even worse, it says, some of the sponsored links enable the Internet user to browse through websites which offer Complainant’s direct competitors goods such as Unt, Estee Lauder, Dolce Gabbana, Guerlain, etc. For instance, the first link to “www.shopunt.com” leads to the website of the Unt company, active in cosmetics and make-up goods.

The Complainant states that menus present on top of the above page “soins” (“care” in English), “maquillage” (“make-up”), “ongles” (“nails”), “conseils beauté” (“beauty advices”) show that the activity of the Unt company is identical to the one of the Complainant and the link to Estée Lauder, leads to the French site of this company.

The Complainant states that the Respondent clearly misleads the Internet consumers and diverts them from the real and official Complainant’s websites “www.clarins.com”, in order to create a commercial gain for itself. Such use, which relies on exploiting user confusion, cannot and does not constitute bona fide commercial use, sufficient to legitimize any rights or interests the Respondent might have in the Disputed Domain Name.

Thus, the Respondent should be considered as having no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.

C. The Disputed Domain Name was registered and is being used in bad faith.

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

The Disputed Domain Name was created on May 9, 2006.

The Complainant states that it was already extensively using its trademark CLARINS well before that date.

It states that the Complainant trademark has a well-known character worldwide, and has a long-standing worldwide operating website under the <clarins.com> domain name.

It states that, in addition, the Respondent has initially taken steps to cover its identity, which raises suspicions on the Respondent’s real intentions and that, if the Respondent wanted to make genuine use of the Disputed Domain Name, it would have had no need to hide its identity.

Furthermore, the offending web page displays sponsored links to commercial websites offering goods identical to those covered by the Complainant’s trademarks, and more particularly, links to Complainant’s direct competitors’ goods.

In any case, the Complainant avers, the Respondent is exploiting the Complainant’s trademark, in order to gain “click through” commissions from the diversion of Internet users, which is a common example of registration and use in bad faith and repeats that it is also a case of “typosquatting”.

Finally, the Complainant states, the Respondent has engaged in a pattern of registering domain names that bear a resemblance to famous and/or well-known marks, such as “itunes”, and has been involved in several UDRP cases where the panel has ordered the transfer or cancellation of the disputed domain name. The amended complaint includes a list of these WIPO UDRP cases and a copy of the decision rendered in Apple Inc. v. Domain Privacy Ltd, WIPO Case No. D2012-0620).

Therefore, the Complainant submits, it is hard to believe that the filing of the Disputed Domain Name was a mere coincidence, and by using the Disputed Domain Name in such unacceptable way, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its webpage.

Accordingly, the Disputed Domain Name should be considered as having been registered and is being used in bad faith by the Respondent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief. These elements are:

(i) The Disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;

(iii) The Disputed Domain Name has been registered and is being used in bad faith.

Each of these elements will be addressed below.

The Complainant must establish these elements even if the Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of or requirement under, the Rules, including the Respondent’s failure to file a Response.

In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009)).

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. As the proceeding is an administrative one, the Complainant bears the onus of proving its case on the balance of probabilities. The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the Disputed Domain Name.

A. The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Panel accepts that the Complainant is one of the major players in the field of Cosmetics and that it has been doing business for more than 50 years is well-known internationally. The Panel also accepts that the Complainant has an extensive international trademark portfolio including the trademarks referred to above and that these trademarks, which predate the Disputed Domain Name, are in force and are the exclusive property of the Complainant.

The Panel accepts that the name “Clarins” constitutes the registered company name of the Complainant, and the domain name <clarins.com> registered since March 16, 1997, is being used internationally, including in the USA, country for which the Complainant has also a website “www.clarinsusa.com”, the latter domain name being registered since November 12, 1997.

The Panel also accepts that the word “Clrins” is omitting the letter “A” of the well-known trademark CLARINS and that this is a “typosquatting” case. The Panel recognizes this conduct as “typosquatting,” a practice which involves the use of a domain name of virtually identical and/or confusingly similar marks to a complainant’s trade mark (See Edmunds.com, Inc. v. Yingkun Guo, dba This domain name is 4 sale, WIPO Case No. D2006-0694).

The Panel holds that the similarity from a visual, oral and conceptual perspective makes the Disputed Domain Name confusingly similar to the Complainant’s mark. (See EasyGroup IP Licensing Limited v. Philip Thornton, WIPO Case No. D2004-0826).

In situations where the domain name is a slight alphabetical variation from a famous mark, it is easy for an Internet user to make a typing error (See Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc, WIPO Case No. D2001-1314).

In other WIPO UDRP proceedings, panelists have found “[d]isputed domain names with misspelled variations of trademarks […] to be ‘confusingly similar.’” Pfizer Inc. v. Enamecorp.com, WIPO Case No. D2001-0791. ESH Strategies Branding, LLC v. Kumpol Sawaengkarn, WIPO Case No. D2011-0843 (finding clear case of typo-squatting: <extendedstaysamerica.com> confusingly similar to EXTENDED STAY AMERICA mark); Apple Inc. v. Private Whois Service, WIPO Case No. D2011-0929 (<ipods.com> confusing similar to IPOD).

There are many previous cases where the disputed domain name has been found confusingly similar to a trademark further to the omission of a letter.

For Instance, in Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, d/b/a Cupcake Patrol, WIPO Case No. D2001-0302(<wallsteetjournal.com> was found confusingly similar to WALL STREET JOURNAL); in Time Warner Entertainment Company, L.P., and Hanna-Barbera Productions, Inc. v. John Zuccarini, Cupcake Patrol, and The Cupcake Patrol, WIPO Case No. D2001-0184(<harypotter.com> and <scobydoo.com> were found confusingly similar to HARRY POTTER and SCOOBY DOO respectively).

Therefore, the Panel finds that the Disputed Domain Name <clrins.com> is confusingly similar to the above-cited trademarks CLARINS.

B. The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Panel accepts that the Respondent, whoever it is, is not affiliated in any manner to the Complainant, and has never been authorized to use or register in any way the name “Clarins”, including as a domain name and that the Respondent is not making a noncommercial or a fair use of the Disputed Domain Name, since it is not used in relation with a proper website and is used only to provide Internet users to browse through sponsored links in French.

The Panel accepts that the offending web pages display links related to the Complainant’s field of activity, i.e. cosmetics, make-up and perfumery products and that some of the sponsored links enable the Internet user to browse through websites which offer the Complainant’s direct competitors goods such as Unt, Estee Lauder, Dolce Gabbana, Guerlain, etc. and that the first link to “www.shopunt.com” leads to the website of the Unt company, active in cosmetics and make-up goods. The Panel also accepts that the menus present on top of the above page “soins” (“care” in English), “maquillage” (“make-up”), “ongles” (“nails”), “conseils beauté” (“beauty advices”) show that the activity of the Unt company is identical to the one of the Complainant.

The Panel accepts that the Respondent misleads the consumers and diverts them from the real and official Complainant’s websites “www.clarins.com”, in order to create a commercial gain for itself and that this use cannot and does not constitute bona fide commercial use, sufficient to legitimize any rights or legitimate interests the Respondent might have in the Disputed Domain Name.

The Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.

C. The Disputed Domain Name was registered and is being used in bad faith.

The Disputed Domain Name was created on May 9, 2006.

The Panel accepts that Complainant was already extensively using its trademark CLARINS well before that date and that the Complainant trademark has a well-known character internationally, and has a long-standing operating website under the <clarins.com> domain name.

The Panel accepts that the offending web page displays sponsored links to commercial websites offering goods identical to those covered by the Complainant’s trademarks, and more particularly, links to Complainant’s direct competitors’ goods.

Also the Panel accepts that the Respondent is exploiting the Complainant’s trademark, in order to gain “click through” commissions from the diversion of Internet users, which is a common example of registration and use in bad faith.

In the case of Edmunds.com, Inc. v. Ult. Search, Inc., WIPO Case No. D2001-1319, it is stated:

“Registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy”

The Panel accepts that this is a case of “typosquatting”.

The Panel refers to prior UDRP decisions which have established that "typosquatting" constitutes bad faith registration and use.

The Panel refers to Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, WIPO Case No. D2000-0578.

“It is plain that Zuccarini [The Respondent] registered and has used the two domain names solely for the purpose of trading on the global reputation of THE WALL STREET JOURNAL, taking advantage of the tendency of Internet users to misspell, and attracting such users to his own sites, and thus to profit from his own sales of advertising and from links to other websites.”

Finally, the Panel accepts that the Respondent has engaged in a pattern of registering domain names that bear a resemblance to famous and/or well-known marks, such as “itunes”, and has been involved in several UDRP cases where the panel has ordered the transfer or cancellation of the disputed domain name as shown in a list of these WIPO UDRP cases and a copy of the decision rendered in Apple Inc. v. Domain Privacy Ltd., WIPO Case No. D2012-0620 annexed to the amended Complaint).

Therefore, the Panel finds it inconceivable that the filing of the Disputed Domain Name was a mere coincidence, and by using the Disputed Domain Name in this way, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its webpage.

Accordingly, the Panel finds that the Disputed Domain Name should be considered as having been registered and is being used in bad faith by the Respondent.

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 <clrins.com> be transferred to the Complainant.

Isabel Davies
Sole Panelist
Date: January 22, 2014