WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
L’Oréal v. Zheng Zhen
Case No. D2013-1738
1. The Parties
The Complainant is L’Oréal of Paris, France, represented by Studio Barbero, Italy.
The Respondent is Zheng Zhen of Putian, Fujian, China.
2. The Domain Names and Registrar
The disputed domain names <clarisonicaustralia.org>, <clarisonicsingapore.biz> and <clarisonicsingapore.org> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2013. On October 9, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 10, 2013, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on October 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 12, 2013.
The Center appointed Bruce E. O'Connor as the sole panelist in this matter on November 22, 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 Respondent has made no response to the Complaint. Given the default of the Respondent, the Panel is entitled to, and does, draw the inference that all reasonable and supported facts alleged in the Complaint are true. See paragraph 14(b) of the Rules.
The Complainant, directly or through its subsidiary company Pacific Bioscience Laboratories Inc. is the owner of numerous trademark registrations comprising CLARISONIC (the “Trademark”), including the following:
- Community Trademark Registration No. 5732375 filed on March 5, 2007, registered on January 20, 2009 and duly renewed thereafter in Classes 03, 05, 21, 35 and 34;
- Trademark Registration in the United States of America (“USA”) No. 3087196 filed on May 27, 2004, registered on May 2, 2006 and duly renewed thereafter in Class 21, claiming first use in commerce as of June 23, 2004;
- Trademark Registration in the USA No. 3732137 filed on March 31, 2008, registered on December 29, 2009 and duly renewed thereafter in Class 03, claiming first use in commerce as of June, 23, 2004;
- Trademark Registration in the USA No. 3880043 filed on May 6, 2010, registered on November 23, 2010 and duly renewed thereafter in Class 35, claiming first use in commerce as of May 1, 2005;
- Trademark Registration in China No. 8275826, filed on May 7, 2010, registered on May 14, 2011, and duly renewed thereafter in Class 05;
- Trademark Registration in China No. 8514771, filed on July 27, 2010, registered on September 7, 2011, and duly renewed thereafter in Class 35.
The Complainant submits evidence of its standing to act on behalf of Pacific Bioscience Laboratories Inc. behalf.
The Complainant markets various beauty products (hair colour, skin care, sun protection, make-up, perfumes and hair care ones) and is active also in the dermatological and pharmaceutical fields. The Complainant’s products are marketed through a variety of distribution channels, from hair salons and perfumeries to supermarkets, health/beauty outlets, pharmacies and direct mail.
The Complainant’s origins date back to the beginning of the twentieth century; the company that will later become L’Oréal, i.e. Société Française des Teintures Inoffensives pour Cheveux, was founded in 1909.
Currently the Complainant is present in over 130 countries with more than 25 global brands which have been used in connection with consumer, luxury and professional cosmetic and beauty products. The Complainant operates in the field of beauty care with various brands and with the recently acquired Trademark, which has been used for nearly 10 years in connection with sonic skin care devices and technologies.
The Complainant acquired Pacific Bioscience Laboratories Inc. and the Trademark via a merger agreement on December 15, 2011 and the Trademark is one of the brands of the Complainant’s luxury product division.
The Trademark products, created by a team of scientists and engineers in Seattle in 2004 and patented with more than 40 registrations, have been launched in the USA in 2004, initially in the professional market (mainly spa owners and physicians) and then in the consumer one.
The Complainant’s luxury products division mainly consists of department stores, perfumeries, travel retail outlets, as well as free-standing stores and e-commerce websites. Through these outlets, the Trademark products are being progressively launched worldwide. The Complainant operates within a sales network consisting of close to 69000 employees in 130 countries. The sales metrics for the Trademark products at the end of 2012 were about USD 200 Million, while in 2010, prior to the acquisition by the Complainant, they amounted to USD 104 Million.
Products marketed under the Trademark have received many awards over the years.
Furthermore, the Trademark was and presently is supported by global advertising campaigns through television and other media such as important international magazines with broad circulation.
Besides the traditional advertising channels, the Trademark has been also promoted via the Internet, in particular with a presence online through the most popular social media with channels and pages specifically dedicated to the Trademark.
In addition to the above, the Complainant has long been involved in a series of various social commitments using the Trademark.
In order to further protect its trademarks also on the Internet, the Complainant has registered numerous domain names worldwide consisting of the Trademark; the list of some of the domain names registered by the Complainant and its subsidiaries under different Top-Level Domains (“TLD”) includes <clarisonic.com>, <clarisonic.cn>, <clarisonic.fr>, <clarisonic.co.uk>, <clarisonic.us>, <clarisonic.it>, <clarisonic.com.au>, <clarisonic.sg>.
The Complainant’s principal website regarding the Trademark, where products are advertised and also offered for sale, is constituted by “www.clarisonic.com”. Via the registration of the Trademark in different country-code Top-Level Domains (“ccTLD”), the Complainant tailors the websites to the different countries and languages, see for example “www.clarisonic.cn”, “www.clarisonic.com.au,” “www.clarisonic.sg”. The Respondent registered <clarisonicsingapore.org>, <clarisonicsingapore.biz> on March 28 and 29, 2013 and <clarisonicaustralia.org> on April 14, 2013 (collectively the “Domain Names”).
Just before the enforcement actions to be discussed, all the Domain Names were redirected to websites publishing the Trademark and prima facie official images of products identified with the Trademark. On such websites, products under the Trademark were offered for sale at discounted prices without disclosing any information on the company managing the websites (and indeed publishing statements that generated the impression that they were affiliated or authorized by the Complainant).
As soon as the Complainant became aware of such registration and use of the Domain Names, the Complainant instructed its authorized representative to pursue all the necessary actions aimed at reclaiming them.
The authorized representative sent an email communication to the Respondent on September 2, 2013 requesting him to immediately deactivate the above-described websites and to transfer the Domain Names, putting in copy also the email addresses indicated on these websites. In absence of the Respondent’s reply, a reminder was sent on September 23, 2013. These notices of infringement were included in follow up correspondence related to a Cease & Desist letter sent in relation to other infringing domain names that appeared to be under the control of entities prima facie connected to the Respondent.
As the postal address indicated in the WhoIs of all the Domain Names appears to be false, the Complainant’s authorized representative filed reports for inaccurate WhoIs with the concerned Registrar on September 2, 2013 (Annex 10 to the Complaint). The Domain Names now have been suspended by the Registrar and redirected to notices of invalid WhoIs (Annex 1 to the Complaint).
5. Parties’ Contentions
The Domain Names incorporate the whole of the Trademark. The fact that the Domain Names differ from the Trademark by the addition of non-distinctive elements - such as “australia” and “singapore” - does not affect confusing similarity. It is a well-established principle that domain names that wholly incorporate a trademark are found to be confusingly similar for purposes of the Policy, despite the fact that they may also contain descriptive/generic terms.
Furthermore, in the present case, the terms selected by the Respondent for its domain name registrations, which consist of geographical indications, are particularly apt to increase the likelihood of confusion and to induce Internet users to believe that there is an association between the Domain Names and the Complainant.
Previous UDRP panel decisions found confusing similarity in cases in which the Trademark was entirely included in a domain name with the addition of a generic terms consisting of geographical indications, also in light of its well-known/highly distinctive character.
Finally, as consistently found in prior decisions, the generic Top-Level Domain (“gTLD”) “.org” and “.biz” are merely instrumental to the use of the Internet so the Domain Names remain confusingly similar despite their inclusion.
Lack of rights and legitimate interests
The Respondent is not a licensee, an authorized agent of the Complainant or in any other way authorized to use the Trademark.
Upon information and belief, the Respondent is not commonly known by the Domain Names as an individual, business or other organization and CLARISONIC is not its family name.
The Respondent has not provided the Complainant with any evidence of its use of, or demonstrable preparations to use, the Domain Names in connection with a bona fide offering of goods or services before any notice of the dispute.
The Domain Names were redirected, prior to the reclaim activities pursued by the Complainant’s authorized representatives, to commercial websites where, in absence of any disclaimer of non-affiliation, the Complainant’s trademarks and prima facie official images featured prominently and unauthorized products under the Trademark were offered for sale. Such wilful conduct clearly demonstrates that the Respondent did not intend to use the Domain names in connection with any legitimate purpose and their use cannot be certainly considered a legitimate noncommercial or fair use without intent for commercial gain, because the Respondent has been undoubtedly gaining from the sales of the products bearing the Trademark.
With regard to the Respondent’s offer for sale of products bearing the Trademark, the Complainant deems that the circumstance that they were offered at very low prices and that no information about the company managing the websites was provided suggest that they were likely counterfeit. Irrespective of the nature of these products, no fair use could be possibly invoked in the present case by the Respondent who undoubtedly failed to accurately and prominently disclose its relationship with the Complainant thus generating a clear likelihood of confusion for Internet users.
CLARISONIC is an invented word, with no meaning in foreign languages and as such is not one that traders would legitimately choose unless seeking to create an impression of an association with the Complainant.
The Respondent did not reply to communications sent by the authorised representative of the Complainant in order to put it on formal notice with the infringement of the Complainant’s intellectual property rights, despite the reminder aimed at obtaining a reply on the merits of the allegations contained therein. The Respondent’s failure to counter the allegations of the Cease and Desist letter amounts to adoptive admission of the allegations.
Bad faith registration and use
Given the Complainant’s significant investments in research and development, marketing, sales and distribution channels, as well as the existence of a truly impressive client base for these products, the Trademark is undisputedly famous and a well-known trademark worldwide in the field of sonic skin care.
In light of the use of the Trademark since as early as 2004, the amount of advertising and sales of the Complainant’s products, the intensive use and well-known character of the Trademark, the Respondent could not have possibly ignored the existence of the Trademark confusingly similar to the Domain Names when they were registered.
Furthermore, the actual knowledge of the Trademark by the Respondent, at the time of the registrations of the Domain Names, is clearly demonstrated by the fact that in less than one month it registered the three domain names and on its websites featured the Trademark prominently and sold products bearing the Trademark.
The Respondent was certainly well aware of the Complainant’s rights in the Trademark and registered the Domain Names with clear intention to refer to the Trademark in order to capitalize on the reputation of the Trademark by diverting Internet users seeking information about the Complainant to its own websites and earn revenues by the offer for sale of the products promoted thereon.
Because the Domain Names are almost identical to the Trademark, users searching for the Complainant’s website may connect to the Respondent’s website, and after seeing its content, they may believe that it is the Complainant’s website.
Therefore, the Complainant deems paragraph 4(b)(iv) of the Policy applicable to the present case since the Respondent has intentionally attempted to attract Internet users for commercial gain to its websites by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites.
Besides free-riding the goodwill of the Trademark for commercial gain, the Respondent used its websites to attract Internet users to sell the Complainant’s prima facie counterfeit products at prices which were cheaper than the ones of original products. This element can be considered further evidence that the Respondent has registered and used the Domain Names also with the purpose of disrupting the Complainant’s business according to paragraph 4(b)(iii) of the Policy.
The Domain Names, presently, are redirected to notices of false WhoIs since the websites and/or the Domain Names have been suspended by the Registrar pursuant to the Complainant’s authorized representative’s activities, as detailed above, and such use can be consider as a tantamount to a passive holding of the Domain Names
As an additional circumstance evidencing bad faith, the Respondent has clearly engaged in a pattern of such conduct which has been defined as follows: a “pattern of conduct” under paragraph 4(b)(ii) of the Policy typically involves multiple domain names directed against multiple complainants, but may involve multiple domain names directed against a single complainant. In the present case, the second definition applies. The Respondent has in fact registered several domain names confusingly similar to the Trademark.
As a further additional circumstance evidencing bad faith, the postal address indicated in the WhoIs is prima facie incorrect, as also corroborated by the Registrar that suspended the Domain Names for false data.
The Respondent’s failure to reply to the notices of trademark infringement addressed to its attention should also be taken into consideration. Prior UDRP panels held that a failure to respond to a Cease and Desist letter can be evidence of bad faith
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to obtain a transfer of the Domain Names, paragraph 4(a) of the Policy requires that the Complainant must demonstrate to the Panel that:
(i) the Domain Names are identical or confusingly similar to the Trademark; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established rights in the Trademark, by reason of its registrations cited above.
The Domain Names differ from the Trademark only by the addition of the terms “australia” and “singapore” and the gTLD “.org” and “.biz”. These differences do not distinguish the Domain Names. The terms “australia” and “singapore” are generic and simply imply a location associated with the Domain Names. And it is well established that the addition of a gTLD does not distinguish a domain name from a trademark.
The Panel finds that the Domain Names are confusingly similar to the Trademark, and that the Complainant has met its burden of proof under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists three circumstances in particular, but without limitation, that demonstrate rights or legitimate interests of a domain name registrant to a domain name for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) the respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds that the Complainant has made a prima facie showing that the Respondent does not come under these circumstances.
Notice of this dispute occurred in September 2013, when the Complainant’s representative sent its emailed notice of infringement to the Respondent.
Prior to that time, the Respondent was using the Domain Names at websites that offered for sale only products identified with the Trademark without any disclaimer of non-affiliation. These offers for sale, being unauthorized by the Complainant, were an infringement of the Complainant’s rights in the Trademark, and thus not bona fide. The Respondent’s name is not included in the Domain Names. And, the Respondent’s use of the Domain Names is commercial.
Given the evidence, Panel finds that none of the circumstances enumerated in paragraph 4(c) of the Policy apply.
Because the Respondent has not made any response to the Complaint, the Complainant’s prima facie showing meets the Complainant’s burden of proof under paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The circumstances of paragraph 4(b) of the Policy are illustrative but not exhaustive of the circumstances under which bad faith registration and use under Policy paragraph 4(a)(iii) can be established.
Paragraph 4(b) of the Policy reads:
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 online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
In each of the circumstances listed in Policy paragraph 4(b), or otherwise, the Complainant must establish that the Respondent intentionally and actively registered and used the Domain Names in bad faith as provided under the Policy. And, the Respondent must have known or should have known of the Complainant’s Trademark.
Lack of rights or legitimate interests under Policy paragraph 4(a)(ii) does not automatically translate into a finding of bad faith under Policy paragraph 4(a)(iii). A sufficient showing under Policy paragraph 4(a)(iii) generally requires more than assertions of bad faith.
The Complainant has amply demonstrated in its evidence and arguments that the Respondent’s actions fall within the circumstances in Policy paragraphs 4(b)(iii) and 4(b)iv).
The Respondent's infringing use of the Trademark at the Respondent’s websites, within a short time after registration of the Domain Names and up to notice of this dispute, demonstrates the Respondent’s knowledge of the Trademark in use of the Domain Names. Selling unauthorized products that are identified only with the Trademark, using Domain Names that include only the Trademark and generic terms, at prices that are discounted from the prices charged for authorized products, also show the Respondent’s intent to disrupt the business of the Complainant and to trade on the goodwill of the Complainant.
The Respondent has engaged in bad faith use. The Panel is justified in extending that finding to one of bad faith registration, because the Trademark is a coined word and because the Complainant had rights in the Trademark more than 7 years prior to registration of the Domain Names. And, the Respondent has submitted no evidence or arguments to the contrary.
The Panel finds that the Complainant has met its burden of proof under paragraph 4(a)(iii) of the Policy.
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 <clarisonicaustralia.org>, <clarisonicsingapore.biz> and <clarisonicsingapore.org> be transferred to the Complainant.
Bruce E. O'Connor
Date: December 2, 2013