WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
L’Oréal SA v. WhoisGuard, WhoisGuard Protected / prada sac, Lin Zhongxiong
Case No. D2013-1168
1. The Parties
The Complainant is L’Oréal SA of Paris, France, represented by Studio Barbero, Italy.
The Respondent is WhoisGuard, WhoisGuard Protected of California, United States of America / prada sac, Lin Zhongxiong of Guangdong, China.
2. The Domain Name and Registrar
The disputed domain name <acheterclarisonic.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2013. On June 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 2, 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 July 4, 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 July 5, 2013.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 30, 2013.
The Center appointed Gunnar Karnell as the sole panelist in this matter on August 9, 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
The disputed domain name <acheterclarisonic.com> was created on March 26, 2013.
The Complainant has requested that the disputed domain name be transferred to the Complainant.
The Complainant, through its subsidiary company Pacific Bioscience Laboratories Inc. (here PBL Inc.) is the owner of the following trademark registrations for CLARISONIC: CTM reg. January 20, 2009, No. 005732375, U.S. reg. May 02, 2006, No. 3087196, December 29, 2009, No. 3732137 and November 23, 2010, No. 3880043 as well as China reg. May 14, 2011, No. 8275826 and September 7, 2011, No. 8514771. The Complainant also owns directly or through its subsidiary numerous other registrations of the trademark CLARISONIC.
5. Parties’ Contentions
The Complainant is one of the world’s largest companies in the field of cosmetics and beauty. It markets various beauty products and it is active also in the dermatological and pharmaceutical fields, via a great variety of distribution channels. It operates together with a great number of well-established global brands with its trademark CLARISONIC, acquired on December 15, 2011, by a merger agreement with PBL Inc. The trademark has been used for nearly ten years in connection with skin care devices and technologies. The CLARISONIC products, widely patented, were launched in the USA by PBL Inc. in 2004 and they have since then been launched worldwide within an extensive sales network consisting of close to 69000 employees in 130 countries, supported by global advertising campaigns through traditional channels and the Internet. CLARISONIC is a well-known trademark worldwide in the field of sonic skin care. The trademark is also mirrored in a great number of domain names owned by the Complainant and its subsidiaries.
The Respondent has registered the disputed domain name without an authorization of the Complainant and it redirects to a website that displays without, any disclaimer of non-affiliation, CLARISONIC trademarks, giving the impression to be the Complainant’s official website. Prima facie counterfeit products bearing CLARISONIC marks are offered for sale without any mention of the Complainant. The fact that they are offered much cheaper than original products are priced suggests that they are probably counterfeit. It is likely that Internet users will be misled as to the source, sponsorship or affiliation of the Respondent’s activity through the corresponding website. The Respondent used a privacy protection service to conceal its identity. Requested by the Complainant to reveal it, the legal department of the shield company provided information upon which the Complainant’s authorized representative, on April 24, 2013, sent to the Respondent a cease and desist letter, later followed up by reminders. There were no replies. Possibly as a consequence to communications about possible infringements from the Complainant’s representative with the service provider hosting the website corresponding to the disputed domain name, the Respondent changed hosting provider.
The disputed domain name is confusingly similar to trademarks in which the Complainant has rights. It wholly incorporates the trademark CLARISONIC and the added element is non-distinctive, descriptive or generic. The added “acheter” part is simply, in French, the verb “to buy”. It recalls the Complainant’s online sales, thereby contributing to the risk of confusion. CLARISONIC is an invented word with no meaning in foreign languages, chosen by the Respondent to create an impression of an association with the Complainant.
The Respondent has no rights or legitimate interest in the respect of the disputed domain name, being in no way authorized to use the Complainant’s trademark CLARISONIC. The Respondent is not commonly known by the disputed domain name and it is in no way lawfully related to CLARISONIC. There are no signs of any bona fide offerings of goods or services by the Respondent related to use of the disputed domain name before notice of the dispute. The Respondent’s conduct clearly demonstrates that it did not intend to use the disputed domain name in connection with any legitimate purpose and its use cannot be considered a legitimate noncommercial or fair use without intent for commercial gain. There can be no legitimate interest in the sale of counterfeit products. The Respondent has not replied to the Complainant’s cease and desist letter nor to related reminders.
The disputed domain name was registered and it is being used in bad faith. The Respondent, prima facie presently based in China, cannot possibly have ignored the existence of the trademark CLARISONIC, which is also registered in China and the trademark’s confusing similarity to the Respondent’s disputed domain name at the date of the registration of the disputed domain name. The Respondent’s actual knowledge of the Complainant’s rights to its trademark is evident. CLARISONIC-marked products are offered for sale on the Respondent’s website, thus generating the impression of being one of the Complainant’s official website. The Respondent capitalizes on the reputation of the Complainant’s trademark by diverting Internet users seeking information about the Complainant to its own website so as to earn revenues by the offer for sale of the products promoted there. These are prima facie counterfeit, because they are sold much cheaper than the original products. This can also indicate that the Respondent has registered and uses its disputed domain name with the purpose to disrupt the Complainant’s business. Additional circumstances evidencing bad faith are the Respondent’s use of the privacy shield to avoid the consequences of registering the disputed domain name without any legitimate interest therein and its failure to reply to cease and desist letters.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel chooses to disregard in its findings and for its decision the issue as to whether the products offered on the Respondent’s website be counterfeit or not. This stated, the factual foundation of the Complainant’s contentions in other respects, as presented by the Complainant, while supporting its non-contradicted request for transfer of the disputed domain name by written evidence and ample reference to earlier UDRP case decisions, leads the Panel to the following conclusions.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s multi-registered and well known trademark CLARISONIC preceded by the French word “acheter”, possibly meant, for those who read French, to be an incitement “to buy” CLARISONIC-marked products from the website. Be that so understood as it may, it certainly does not dispel confusion by obviating the confusing similarity of the disputed domain name to the trademark in which the Complainant has rights.
The Panel therefore finds that the Complainant has made out the first limb of the Policy and that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and there has been no rebuttal by the Respondent. Nothing on the record gives reason to believe that the Respondent has or has had any rights or legitimate interests in respect of the disputed domain name.
The Panel therefore finds that the Complainant has made out the second limb of the Policy and that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Given the use of the website at the disputed domain name made by the Respondent in the past, and subject to the Panel’s proviso regarding counterfeit under section 6 above, the Panel finds no indication on the record that might impair the Complainant’s assertions regarding facts leading up to its conclusions that the disputed domain name <acheterclarisonic.com> has been registered and used in bad faith. The Panel therefore finds that the Complainant has made out the third limb of the Policy and that the Respondent has registered and used the disputed domain name in bad faith.
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 <acheterclarisonic.com> be transferred to the Complainant.
Date: August 23, 2013