WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Clarins v. Gary Dean
Case No. D2013-2169
1. The Parties
Complainant is Clarins of Neuilly Sur Seine, France.
Respondent is Gary Dean of Healesville, Victoria, Australia.
2. The Domain Name and Registrar
The disputed domain name <clarinsaustralia.com> is registered with GoDaddy.com, LLC. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2013. On December 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On Decision 13, 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 December 20, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2014. Beginning on January 8, 2014 and continuing through January 14, 2014, Respondent sent to the Center a series of emails detailing why Respondent believed it was entitled to retain the disputed domain name.
The Center appointed M. Scott Donahey as the sole panelist in this matter on January 17, 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.
The Panel finds that the Response was timely filed and the Panel elects to treat he emails filed with the Center after January 9, 2014 as supplemental filings that the Panel elects to accept. Complainant has not requested that it be permitted to file supplemental pleadings in response thereto, and the Panel finds in accordance with paragraphs 10 and 12 of the Rules that it does not require any further filings in this matter in order to make its determination.
4. Factual Background
Complainant is a major supplier of cosmetics whose products are sold around the world, including in Australia, the residence of Respondent. Complainant is based in France and has been in business for more than fifty years. Complaint, Annex 4.
Complainant has trademark registrations for the mark CLARINS in many countries, including France, the European Union, Canada, China, and Australia. Complainant’s registration of the CLARINS mark in Australia dates back to 1976. Complaint, Annex 5. In 1997, Complainant registered the domain name <clarins.com>.
Respondent registered the disputed domain name on July 24, 2013. Complaint, Annex 1. The disputed domain name resolves to a web site which is a parking page containing links to other cosmetics related sites, many of which are operated by and offer goods for sale by Complainant’s competitors. Complaint, Annex 7.
In Respondent’s series of emails to the Center, Respondent makes a number of unsubstantiated contentions. Respondent asserts that he has a daughter named Clarin. Respondent contends that Complainant has not registered CLARINSAUSTRALIA as a trademark in Australia. Complainant contends that his alleged daughter,” Clarin,” was born in Australia, is now “nearing the age of 21,” is studying photography and poetry, takes wonderful photographs of the Australian outback, and Respondent and his partner plan to use the disputed domain name to resolve to a web site that they intend to construct, at which her photographs could be displayed and perhaps sold, as well as a “later arriving book.”
On December 13, 2013, the same day as the Complaint in this matter was filed, Respondent filed for the business name “Clarins Australia.”
5. Parties’ Contentions
Complainant contends that the disputed domain name is confusingly similar to its CLARINS trademark, that Respondent has no rights or legitimate interests to use the disputed domain name which includes Complainant’s famous trademark, and that Respondent is using the domain name to resolve to a web site with links to competitors’ web sites and other web sites at which cosmetic goods and products competitive to those of Complainant are offered for sale.
Respondent denies that the disputed domain name is confusingly similar to Complainant’s CLARINS trademark, that Complainant has not registered the mark CLARINSAUSTRALIA in Australia, and that Respondent has rights and legitimate interests in using the disputed domain name at issue to resolve to a web site at which his alleged daughter, allegedly named “Clarin,” will offer her photography for display and possible sale. Respondent does not respond to the allegations as to the present and/or previous use of the disputed domain name.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
i. that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
ii. that the respondent has no rights or legitimate interests in respect of the domain name; and,
iii. that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name consists of Complainant’s trademark CLARINS followed by the geographically descriptive word “Australia.”. The registration of a domain name consisting of a trademark followed by a geographical description has long been held to be confusingly similar to the trademark included in the domain name. Wal-Mart Stores, Inc. v. Walmarket Canada, WIPO Case No. D2000-0150 (<walmartcanada.com> found confusingly similar to WAL-MART trademark). Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s CLARINS trademark.
B. Rights or Legitimate Interests
Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production therefore shifts to Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. Respondent contends that he and a partner intend to create a web site at which his alleged daughter, allegedly named “Clarin,” will be able to post and possibly sell photographs she has taken. Respondent offers no proof of having a daughter named “Clarin,” nor does Respondent deny the present or previous use to which the disputed domain name is being or has been put. Respondent has not provided evidence of any demonstratable preparations to use the disputed domain name for the intended purpose before notice of the dispute. Also for the reasons set out in Section 6.C, below, the Panel finds that Respondent has failed to prove that he has rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name was registered long after Complainant registered the trademark CLARINS in Australia, the country in which Respondent resides. The disputed domain name resolves or resolved to a web site at which links are displayed which take the user to web sites at which products directly competitive to those offered by Complainant are being offered for sale. Respondent never denied that such were or had been the case. Such use of a confusingly similar domain name has long been held to constitute bad faith registration and use. NetWizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768; Policy, paragraph 4(b)(iv). Accordingly, the Panel finds that the disputed domain name has been registered and is being used 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, <clarinsaustralia.com>, be transferred to the Complainant.
M. Scott Donahey
Date: January 20, 2014