WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Clarins v. Chen Xiaojie / Pavol Icik
Case No. D2014-0284
1. The Parties
The Complainant is Clarins of Neuilly Sur Seine, France, represented by Tmark Conseils, France.
The Respondent is Chen Xiaojie of Shanghai, China / Pavol Icik of Bratislava, Slovakia.
2. The Domain Name and Registrar
The disputed domain name <clarinsskincarecenter.com> is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2014. On February 25, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 26, 2014, 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 February 27, 2014 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 February 28, 2014. On February 27, 2014, the Center transmitted an email to the parties in both Slovak and English language regarding the language of the proceeding. On February 28, 2014, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in both English and Slovak, and the proceedings commenced on March 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 31, 2014.
The Center appointed Luca Barbero as the sole panelist in this matter on April 7, 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 company organized under the laws of France and is one of the major actors in the field of cosmetics and make-up goods.
The Complainant has been doing business in France for more than 50 years and is well-established worldwide.
The Complainant is the owner of trademark registrations for CLARINS in several countries of the world, including the French trademark No. 1637194, filed on January 7, 1991, in classes 3 and 44, the United Kingdom trademark No. 997617, filed on August 29, 1972, in class 3, the Chinese trademark No. 796200, of February 1, 1994, in class 3, the Hong Kong trademark No. 19701641AA, of March 24, 1970, in class 3 and 199705441, of July 4, 1992, in class 42, the Taiwanese trademark No. 338869, of November 3, 1985, in class 3, and the International trademark No. 208808, registered on April 10, 1958, having effects in Slovakia since 1993, in class 3.
The Complainant has also registered since 1997 the domain name <clarins.com>.
The disputed domain name <clarinsskincarecenter.com> was registered on May 13, 2002.
5. Parties’ Contentions
The Complainant contends that, apart from the words “skincare” and “center”, which are purely descriptive for cosmetics and beauty services, and the “.com” generic extension, which is inherent to the operation of the domain name system, the disputed domain name is identical or at least confusingly similar to the Complainant’s trademarks, company and domain names constituted by the term “CLARINS”.
The Complainant informs the Panel that the Respondent is not affiliated in any manner to the Complainant, and has never been authorized to use or register in any way the term “Clarins”, including as a domain name.
The Complainant asserts that the Respondent has never been known, commonly or otherwise, by the disputed domain name or by a trademark or name corresponding to it, prior to the registration of the disputed domain name.
The Complainant also states 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 “real proper web site”, being redirected to a web page providing sponsored links, some of which are related to the Complainant’s field of activity and enable Internet users to access web sites of Complaint’s direct competitors.
The Complainant points out that the Respondent is misleading consumers and diverting them from the official web site of the Complainant in order to derive a commercial gain and highlights that such use, which relies on exploiting user confusion, does not constitute a bona fide commercial use, sufficient to legitimize any rights or interests the Respondent might have in the disputed domain name.
As to bad faith at the time of the registration, the Complainant contends that, when the disputed domain name was registered, in 2002, the Complainant was already extensively using its trademark, which enjoys a well-known character worldwide.
With reference to the use of the disputed domain name, the Complainant highlights that the Respondent, by pointing the disputed domain name to a web page displaying sponsored links to commercial web sites offering goods identical to those covered by the Complainant’s trademarks, and more particularly, links to goods of the Complainant’s direct competitors, 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.
As additional circumstances of bad faith, the Complainant asserts that the Respondent has hidden its identity through a privacy service and that it was involved in prior UDRP cases where the domain names were transferred to the complainants.
The Complainant states that it is hard to believe that the registration of the disputed domain name was a mere coincidence, and that, by using the disputed domain name in the above-described way, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Preliminary Issue: the Language of the Proceeding
According to paragraph 11 of the Rules, unless otherwise agreed by the parties or specified in the registration agreement between the respondent and the registrar in relation to the domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceedings.
According to the indications of the Registrar, the language of the registration agreement in the case at hand is Slovak. The Complainant has requested that English be the language of the proceeding and the Respondent, which was notified of the language issue both in Slovak and English language, did not comment on it by the specified due date.
In evaluating whether to allow the proceeding to be conducted in a language other than the language of the registration agreement, the panel must consider all “the relevant circumstances”, including whether the respondent is able to understand and communicate in the language in which the Complaint has been filed and would suffer no real prejudice, and whether the expenses of requiring a possible translation of the Complaint and the delay in the proceeding can be avoided without causing injustice to the parties.
The Panel considers that the disputed domain name is constituted by the trademark CLARINS with the additions of English words and has been redirected to a web site featuring links in English language, circumstances which suggest that the Respondent is familiar with the English language.
In addition, the Respondent has been involved in at least six other UDRP cases (Confédération Nationale Du Crédit Mutuel v. Pavol Icik/CREDITMUTUEL-INFOS.COM, WIPO Case No. D2013-1864, OSRAM GmbH v. wwwosram.com / Privacy Protection Service / Pavol Icik, WIPO Case No. D2013-1571, Dillard's. Inc. v. Pavol Icik, WIPO Case No. D2013-1013, Association des Centres Distributeurs E. Leclerc - A.C.D Lec contre Anonyme / Pavol Icik, WIPO Case No. D2013-0977, La Fee v. Pavol Icik / Privacy Protect, WIPO Case No. D2013-0526, ICICI Prudential Life Insurance Corporation Limited v. Privacy protect / Pavol Icik, WIPO Case No. D2012-2521) where the language of the proceedings was English.
In view of the above, the Panel determines that English is the language of this proceeding.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant demonstrate that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The disputed domain name <clarinsskincarecenter.com> entirely reproduces the Complainant’s registered trademark CLARINS with the addition of the generic words “skincare” and “center” and the generic Top-Level Domain (gTLD) “.com”. For the purposes of determining identity or confusing similarity in UDRP proceedings, the gTLD does not generally need to be considered.
Also according to previous UDRP decisions, the “addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP” (see paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
Moreover, in the present case, the association of CLARINS with the terms “skincare” and “center”, which are descriptive of the products and services provided by the Complainant, is particularly apt to increase the likelihood of confusion between the disputed domain name and the Complainant’s trademark.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark CLARINS according to paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
With respect to this requirement, a complainant is generally required to make a prima facie case that a respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name (WIPO Overview 2.0, paragraph 2.1).
In the present case, the Panel finds that the Complainant has made a prima facie case and that the Respondent, which has not responded to the Complaint, has failed to demonstrate any rights and/or legitimate interests in the disputed domain name.
The Complainant has not authorized the Respondent’s use of the trademark CLARINS and there is no evidence showing that the Respondent might be commonly known by the disputed domain name. In addition, from the evidence on records, showing that the disputed domain name has been redirected to a web page displaying several sponsored links related to the Complainant’s field of activity, including links to web sites of the Complainant’s competitors, the Panel infers that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services and has not made a legitimate noncommercial or fair use of the disputed domain name.
The Panel therefore finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant demonstrate that the disputed domain name has been registered and is being used in bad faith.
The Panel finds that, in light of the prior registration and use of the trademark CLARINS in connection with the Complainant’s cosmetics in several countries of the world and in view of the fact that the disputed domain name is constituted by CLARINS with the addition of generic terms directly related to the products and services covered by the Complainant’s trademark, the Respondent’s registration of the disputed domain name cannot be ascribed to a mere coincidence and, indeed, the Panel believes that the Respondent was more likely than not aware of the Complainant’s trademark at the time of the registration of the disputed domain name.
In view of the redirection of the disputed domain name to a web site featuring several pay-per-click links, some of which promotes web sites of the Complainant’s competitors, the Panel finds that the Respondent has registered and used the disputed domain name to intentionally attract, for its own commercial gain, Internet users to its web site, by causing a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the web site by the Complainant according to paragraph 4(b)(iv) of the Policy.
The Panel also finds that, considering the circumstances of the case, including the Respondent’s registration of other domain names that were subject of prior UDRP proceedings and were transferred to the complainants, the adoption of a privacy service and the Respondent’s failure to respond to the Complaint are additional elements evidencing the Respondent’s bad faith.
In light of the above, the Panel concludes that the disputed domain name was registered and is being used in bad faith according to 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 <clarinsskincarecenter.com> be transferred to the Complainant.
Date: April 21, 2014