WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Clarins v. Clarins Chemistry Limited, Michael E Omofoma

Case No. D2013-1948

1. The Parties

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

The Respondent is Clarins Chemistry Limited, Michael E Omofoma of Lagos, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <clarinschemistry.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.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 Domain Name. On November 16, 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 November 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 11, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2013.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on December 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

The Complainant is a privately held French cosmetics company established in 1954. The Complainant manufactures premium skincare, makeup, and fragrances products, which are sold in retail stores in some 150 countries. The Complaint attaches media and Wikipedia articles demonstrating that its CLARINS branded products are well known in France, Europe, and globally. The Complainant operates several websites to promote its products online, including “www.clarins.com” (for which the domain name was registered in 1997), “www.clarins.fr”, and “www.clarinsusa.com”.

The Complainant holds numerous registered trademarks consisting of or incorporating the CLARINS name, including the following:

The Domain Name was created on April 14, 2011 and registered to Michael E Omofomo of “Clarins Chemistry Limited” (the Respondent) in Lagos, Nigeria. The Respondent has not replied to the Complainant or to the Center, and the Respondent does not appear in Nigerian online business directories or in search engine results using the purported company name as a search term. The Complainant states that it has no connection with the Respondent and has never authorized the Respondent to use the CLARINS mark in the Domain Name or otherwise.

The Complaint attaches screenshots of the website to which the Domain Name resolved in November 2013 (the “Respondent’s website”). A few pages of that website as they appeared in August 2013 are also available through the Internet Archive’s Wayback Machine at “www.archive.org”. The Respondent’s website displayed the name “Clarins Chemistry” with the tag line, “luxury you can afford”, as well as a “Clarins Chemistry” logo with a red double arc similar to the design of the Complainant’s figurative trademarks. Products advertised on the Respondent’s website appear to be similar to the Complainant’s products. One page on the website described the Respondent as “a diverse manufacturing firm” that had been in business for five years. However, the home page and other pages of the Respondent’s website did not clearly identify the Respondent or disclaim affiliation with the Complainant.

The Domain Name currently resolves to an “account suspended” message.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its CLARINS marks, and that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant concludes that the Domain Name was selected and used to mislead Internet users for commercial gain.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules, “A Panel shall 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.”

A. Identical or Confusingly Similar

The Complainant indisputably holds registered CLARINS trademarks, which are based on a French family name. The Domain Name incorporates the CLARINS mark in its entirety and adds the English dictionary word “chemistry”. This generic addition to the distinctive CLARINS mark does not avoid confusion with the mark. It serves rather to heighten the likelihood of confusion, as the Complainant’s products require chemical research and manufacture. The Complainant has obtained patents for chemical formulations derived from or combining organic substances, and its own websites refer to the research and development functions of “Clarins Laboratories”.

UDRP panels customarily treat the first element of a Policy complaint as a standing requirement, which simply requires “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”; some panels refer as well to the “overall impression” created by the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2. The Panel finds that these tests are met in this case and concludes that the Domain Name is confusingly similar to the Complainant’s CLARINS marks for purposes of the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:

(i) before any notice to it 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 or services; or

(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; 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.

Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the domain name shifts to the respondent. See WIPO Overview 2.0, paragraph 2.1.

In this proceeding, it is undisputed that the Complainant did not give permission to use its CLARINS mark in the Domain Name. The Respondent’s website formerly associated with the Domain Name briefly refers to “Clarins Chemistry” as a “diverse manufacturing firm”, but there is no corroborating evidence in the record (or readily available through online search engines) establishing that the Respondent actually exists as a corporate entity with a name corresponding to the Domain Name or holds trademark rights in the Clarins Chemistry name and logo displayed on the Respondent’s website. It is clear from the Respondent’s website that the Respondent was not making noncommercial fair use of the Domain Name. Rather, the Respondent was advertising products similar to those that the Complainant offers but more “affordable”. Using the Complainant’s distinctive and well known mark to sell competing or counterfeit products could not be considered a use in connection with a bona fide offering of goods or services for Policy purposes.

The Respondent has not rebutted the Complainant’s prima facie case on this point, and the Panel concludes that the Complainant prevails on the second element of the Policy.

C. Registered and Used in Bad Faith

The Policy’s non-exhaustive list of circumstances that shall be considered evidence of bad faith (paragraph 4(b)) includes the following:

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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.”

This example of bad faith is apposite in the current proceeding. CLARINS is a well known and distinctive mark, based on a family name rather than a dictionary word in French or English. The mark is registered in Nigeria, where the Respondent is located, and the Complainant’s products are sold there, as they are in much of the world. Thus, it is improbable that the Respondent was unaware of the Complainant’s mark. Moreover, the similarity of the products advertised on the Respondent’s website, as well as the similarity of the name and logo displayed on that website, indicates that the Respondent was familiar with the Complainant’s mark and sought to suggest a connection with the Complainant, even beyond the likely initial interest confusion created by the Domain Name incorporating the Complainant’s mark, or alternatively to advertise the Respondent’s explicitly competing or counterfeit products. These are not good faith uses of a competitor’s trademark within the meaning of the Policy, and the Respondent has not come forward with any alternative, legitimate reason for incorporating the Complainant’s mark in the Domain Name.

The Panel concludes that the third element of the Policy has been established.

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 Domain Name <clarinschemistry.com> be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: January 13, 2014