WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
L'Oréal SA v. Clarisonic Onsale / Tang Yun / WhoisGuard Protected, WhoisGuard, Inc.
Case No. D2014-0287
1. The Parties
The Complainant is L'Oréal SA of Paris, France, represented by Studio Barbero, Italy.
The Respondent is Clarisonic Onsale / Tang Yun of Shenzhen, Guang Dong, China, WhoisGuard Protected, WhoisGuard, Inc. of Panama.
2. The Domain Name and Registrar
The disputed domain name <clarisonicitalia.org> is registered with eNom (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 25, 2014. On February 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 3, 2014, the Registrar transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 6, 2014.
The Center verified that the Complaint together with the amendment to 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 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 Felipe Claro as the sole panelist in this matter on April 30, 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 directly or through its subsidiary company Pacific Bioscience Laboratories Inc. is the owner of numerous trademark registrations for CLARISONIC, as indicated in the Complaint and supported by different documentation filed by the Complainant (i.e. CLARISONIC United States of America (USA) Registration No. 3087196, May 2, 2006, class 21).
The Complainant L'Oréal SA is one of the world's largest company in the field of cosmetic and beauty and leader of this sector. The Complainant markets various beauty products and is active also in the dermatological and pharmaceutical fields. The Complainant's products are marketed through a wide variety of distribution channels: from hair salons and perfumeries to supermarkets, health/beauty outlets, pharmacies and direct mail.
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 recently acquired the trademark CLARISONIC, which has been used for nearly ten years in connection with sonic skin care devices and technologies.
The CLARISONIC products, created by a team of scientists and engineers in Seattle, USA, in 2004 and patented with more than 40 registrations, have been launched in the USA by Pacific Bioscience Laboratories Inc. in 2004, initially in the professional market (mainly spa owners and physicians) and then in the consumer one.
Through the Complainant's distribution channels, that for L'Oréal Luxe products' division mainly consist of department stores, perfumeries, travel retail outlets, as well as free standing stores and ecommerce websites, CLARISONIC products are being progressively launched worldwide. The Complainant operates within an extensive sales network consisting of close to 69,000 employees in 130 countries.
The Complainant has registered numerous domain names, earlier than the disputed domain name, consisting of or comprising the word "clarisonic"; the list of domain names registered by the Complainant and its subsidiaries under the different Top-Level Domains ("TLDs") including, amongst others, <clarisonic.com>, <clarisonic.cn>, <clarisonic.fr>, <clarisonic.co.uk> and <clarisonic.us>.
The Complainant's principal website regarding the CLARISONIC brand, where products are advertised and also offered for sale, is "www.clarisonic.com".
5. Parties' Contentions
CLARISONIC enjoys a well-known reputation, as demonstrated by the many awards that the products marketed under the trademark, has received over the last years, inter alia as the "Best Beauty Gadget" in the "Cosmopolitan Beauty Awards" 2011 and 2012, as the "Best New Appliance" in the "UK Beauty Awards" 2011, as the "Best Cleansing Tool" in 2011 and the "Best Beauty Gadget" in 2012 in the "Harpers Bazaar Beauty Hot 100", the "Best Gadget in Woman & Home", "Best in Beauty" 2011 and 2012, as the "Best New Gadget" in the "InStyle Best Beauty Buys" 2012.
Furthermore, the trademark CLARISONIC was and presently is strongly supported by global advertising campaigns through television and other media such as with important international magazines with broad circulation, as Vanity Fair, Elle, Cosmopolitan, People, and Marie Claire. The Clarisonic products had a wide media eco, as demonstrated by the various advertisements and articles appeared on different magazines and newspapers reviewing the products, and have enjoyed widespread appreciation also amongst famous personalities such as Oprah Winfrey (that, in 2007, listed CLARISONIC within her yearly list of Oprah's Favorite Things), Lady Gaga, Madonna, Liv Tayler, Gwyneth Paltrow, Courteney Cox, Cameron Diaz, Mary J. Blige, and Demi Moore.
Besides the traditional advertising channels, the Complainant's products have also been widely promoted via Internet, in particular with a strong presence online through the most popular social media with channels and pages specifically dedicated to CLARISONIC, i.a. on Facebook, Twitter and Youtube ("www.facebook.com/clarisonic", "twitter.com/clarisonic" and "www.youtube.com/clarisonic" used also for promotional purposes.
In addition to the above, the Complainant has been involved in a series of various social commitments. With specific regard to "Clarisonic" products, they have been supporting since 2010 the American Cancer Society Look Good...Feel Better campaign, becoming the largest corporate financial donor in the Program's history, with the sponsorship of high profile events and promotions, organization of social media campaigns and donations of more than USD 2 million from sales of specially designated pink products to fight breast cancer and to increase awareness and patient participation.
In light of the Complainant's significant investments in R&D, marketing, sales and distribution channels, as well as the existence of a big client base for these products, CLARISONIC is a famous and well-known trademark worldwide in the field of sonic skin care.
The Respondent registered <clarisonicitalia.org> on March 24, 2013 without authorization of the Complainant and the disputed domain name, according to the Complaint, is redirected to a website displaying, without any disclaimer of non-affiliation and in absence of the Complainant's authorization, CLARISONIC trademarks and prima facie official images taken from advertising campaigns, and using a layout apt to generate the impression to be a Complainant's official website. Although today the disputed domain name is not active, the site "www.archive.org" shows the same information anticipated by the Complainant when checking the disputed domain name.
Furthermore, prima facie counterfeit products bearing CLARISONIC marks are offered for sale. The Complainant highlights that the circumstance that neither the name of the company nor any contact information is published on the website nor the fact that the products are offered at very low prices, suggest that they are likely counterfeit. The prices at which the products are offered for sale on Respondent's website are, in fact, cheaper than the prices for the original products.
In view of the above-described use of the disputed domain name and in light of Internet users' presumption of trustworthiness in domain name consisting of or incorporating registered trademarks, it is likely that users could be misled as to the source, sponsorship or affiliation of the Respondent's activity through the corresponding website. Such likelihood is increased by the absence of any disclaimer of non-affiliation on the website.
The Complainant sent a Cease and Desist letter and a reminder to the Respondent, requesting him to immediately deactivate the website and to transfer the disputed domain name. No response was received.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In view of the lack of a response filed by the Respondent as required under paragraph 5 of the Rules, this proceeding has proceeded by way of default. Hence, under paragraphs 5(e), 14(a) and 15(a) of the Rules, the Panel is directed to decide this administrative proceeding on the basis of the Complainant's undisputed representations which are thus considered true and valid. In that regard and apart from judging this proceeding through mere default of the Respondent, the Panel makes the following specific findings.
A. Identical or Confusingly Similar
The disputed domain name registered by the Respondent is confusingly similar to trademarks in which the Complainant has rights, according to the case file.
The disputed domain name incorporates the Complainant's CLARISONIC trademark. The fact that the disputed domain name differs from the Complainant's trademark by the addition of the nondistinctive term "italia" (country name) does not affect the confusing similarity. It is a well-established principle that a domain name that wholly incorporates a trademark is found to be confusingly similar for purposes of the Policy, despite the fact that the disputed domain name may also contain a descriptive or generic term.
Some UDRP decisions addressing situations where generic terms are used in combination with trademarks are L'Oréal, Lancôme Parfums Et Beauté & Cie v. Jack Yang, WIPO Case No. D2011-1627; Fry's Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Marko Tusla d/b/a/ Toshiba-Club.com, WIPO Case No. D2004-1066.
Furthermore, in the present case, the term selected by the Respondent for its domain name registration, consisting of a geographical indication, is particularly apt to increase the likelihood of confusion and to induce Internet users to believe that there is an association between the disputed domain name and the Complainant. As held in Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI, WIPO Case No. D2006-0768, "the addition of the geographical indication is likely to be interpreted by Internet users as describing the geographical source or origin of the Complainant's products or services and that the Complainant is operating or doing business in such area". See also, amongst the decisions finding that domain names composed by the Complainant's trademark along with a country designation have to be considered as confusingly similar, inter alia, with specific regard to "italia" Fendi Adele S.r.l. v. PrivacyProtect.org / Liao Yani, WIPO Case No. D2012-2346 ( <fendiitalia.com>, trademark FENDI). Also PepsiCo, Inc. v. Kieran McGarry, WIPO Case No. D2005-0629, (<pepsiusa.com>, trademark PEPSI), ACCOR v. Eliah Zusstone, WIPO Case No. D2006-0362 (<accordamerica.com>, trademark ACCOR).
Finally, as consistently found in several UDRP decisions, including Columbia Insurance Company v. G Design, WIPO Case No. D2006-1617; Alliant Credit Union v. Mark Andreev, WIPO Case No. D2007-1085, Telecom Personal, S.A., v. NAMEZERO.COM, Inc, WIPO Case No. D2001-0015 and Société Générale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri, WIPO Case No. D2002-0760, the top level domain ".org" is merely instrumental to the use of the Internet, so the disputed domain name remains confusingly similar despite its inclusion.
In light of the foregoing, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's trademarks in which it has rights according to paragraph 4(a)(i)of the Policy.
B. Rights or Legitimate Interests
The Respondent is not a licensee, an authorized agent of the Complainant or in any other way authorized to use the Complainant's trademark CLARISONIC. As stated i.a. in Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134 "the mere registration, or earlier registration, does not establish rights or legitimate interests in the disputed domain name". Along these lines, see also Guccio Gucci S.p.A. v. Hainei Zhou, WIPO Case No. D2011-1017; Amanresorts Limited v. WWW Enterprise, Inc., WIPO Case No. D2005-0384; American Home Products Corporation v. Healthy Futures, WIPO Case No. D2000-0454; N.C.P. Marketing Group, Inc. v. Entredomains, WIPO Case No. D2000-0387.
Upon information and belief and also in light of the disclosure made by the company providing the privacy protection service, the Respondent is not commonly known by the disputed domain name as an individual, business or other organization and "Clarisonic" is not the family name of the Respondent.
The Respondent has not provided the Complainant with any evidence of its use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute.
As to the likelihood of confusion that is created by the layout of the Respondent's website at the disputed domain name, similar to Moncler S.R.L. v. World Top Sale Inc / WTS, WIPO Case No. D2012-2537, "the content of the Respondent's websites appears designed to reinforce the Internet user's impression that the disputed domain name belong to the Complainant. The websites are presented as if they are official websites of the Complainant" and such use cannot constitute a bona fide offering of goods or services: See, along these lines, Swarovski Aktiengesellschaft v. Luc Sun, WIPO Case No. D2012-0071 (considering, amongst the factors apt to demonstrate a prima facie case of absence of rights or legitimate interests, that the respondent was using the SWAROVSKI marks to create the impression of an association with complainant), Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847 where it has been held that "use which intentionally trades on the fame of another can not constitute a bona fide offering of goods or services". See also PJ Hungary Szolgáltató Korlátolt Felelősségű Társaság v. Chenmei Mei Chen / Private Whois pepejeans-uk.org, Private Whois pepejeans-uk.net, WIPO Case No. D2012-0441.
With regard to the offer for sale of prima facie counterfeit products, it should be noted that UDRP panels have constantly held that "there can be no legitimate interest in the sale of counterfeits". See, inter alia, Lilly ICOS LLC v. Dan Eccles, WIPO Case No. D2004-0750; Moncler S.r.l. v. zhuo muniao, supra, Moncler S.r.l. v. Daniel Park, WIPO Case No. D2011-0488, Cartier International, N.V., Guccio Gucci S.p.A. v. Domain Administrato - Domain Administrator, WIPO Case No. D2010-1589, Cartier International, B.V. v. David Lee, WIPO Case No. D2009-1758. The Complainant highlights that, irrespective of the nature of the products offered for sale on the website corresponding to the disputed domain name, no fair use according to the OKI Data principles (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903) could be possibly invoked in the present case by the Respondent who fails to accurately and prominently disclose the registrant's relationship with the trademark holder thus generating a clear likelihood of confusion for Internet users. See, along these lines, L'Oréal v. Domain Admin/ PrivacyProtect.org/Linyuanchao/Huyaojun, WIPO Case No. D2013-0428.
Furthermore, similar to the circumstances of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, it should be noted that "Clarisonic" is an invented word, with no meaning in foreign languages, and "as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant". See, along these lines, Sanofi-aventis v. Tania Malik, WIPO Case No. D2006-0932; Six Continents Hotels Inc. v. Inoxis Africa Ltd., WIPO Case No. D2004-0516; Designor OY AB v. Bamse Enterprises, WIPO Case No. D2001-0643.
As an additional element within the frame of rights or legitimate interests, the Respondent did not reply to the Cease and Desist letter sent by the Complainant, despite the reminder aimed at obtaining a reply on the merits of the allegations therein contained. As stated in The Great Eastern Life Assurance Company Limited v. Unasi Inc. WIPO Case No. D2005-1218 "By operation of a common sense evidentiary principle, the Panel finds that the Respondent's failure to counter the allegations of the Cease and Desist letter amounts to adoptive admission of the allegations.".
It is a consolidated principle that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent's rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one. Accordingly, it is sufficient that the Complainant shows a prima facie evidence in order to shift the burden of production on the Respondent (see i.a. Anti Flirt S.A. and Mr. Jacques Amsellem v. WCVC, WIPO Case No. D2000-1553; Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110, Sampo plc v. Tom Staver WIPO Case No. D2006-1135, Audi AG v. Dr. Alireza Fahimipour, WIPO Case No. DIR2006-0003; L'oreal SA v. 张容容, LinChaoJie, Guangxi NanNing IDEA Business Planning Co., Ltd, WIPO Case No. D2010-1318).
The Panel therefore concludes 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.
C. Registered and Used in Bad Faith
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 of the trademark, also in China where the Respondent prima facie is presently based, and the well-known character that should be recognized to CLARISONIC, the Respondent, in the Panel's view, could not have possibly ignored the existence of the Complainant's trademark when registering a confusingly similar domain name.
Furthermore, the actual knowledge of the CLARISONIC trademark by the Respondent at the time of the registration of the disputed domain name is demonstrated by the fact that, according to the Complaint, on the website Complainant's trademark features prominently and products bearing its trademark are sold. See, along these lines, The Coca-Cola Company v. Andrew Corr, WIPO Case No. D2012-0368; Moncler S.r.l. v. Zhongyuan Tec, WIPO Case No. D2011-0471; Moncler S.r.l. v. linhuiming, WIPO Case No. D2011-0172; Swarovski Aktiengesellschaft v. Luc Sun, supra, Riedel Electronics, LLC d/b/a Telstar Electronics v. Ross Marshall, WIPO Case No. D2003-0231.
As stated, inter alia, in L'Oréal v. Domain Admin/ PrivacyProtect.org/Linyuanchao/Huyaojun, supra, "The Complainant's trademark has been used since 2004 and was registered worldwide, including in China since 2010, where the underlying Respondents are apparently located. Due to its extensive advertising and use the Panel concludes that the trademark CLARISONIC acquired significant degree of recognition in the markets it penetrated in the field of sonic skin care products. The CLARISONIC trademark has apparently no meaning and it is a word invented by the Complainant, therefore it is distinctive for the claimed goods. (..)". See, along these lines, L'Oréal SA v. Katren Bwrone, WIPO Case No. D2013-0668; L'Oréal SA v. webwin, Zhim You, WIPO Case No. D2013-0364.
In light of the above, the Panel finds that the Respondent was certainly well aware of the Complainant's rights in the trademark and registered the disputed domain name with clear intentions to refer to the Complainant's mark in order to capitalize on the reputation of the Complainant's marks by diverting Internet users seeking information about the Complainant to its own website and earn revenues by the offer for sale of the products promoted thereon. See Hoffmann-La Roche Inc. v. Doroven, WIPO Case No. D2010-1196.
With reference to the use in bad faith, the disputed domain name is used, according to the Complaint, in connection with a website generating the impression to be a Complainant's official website and offering for sale unauthorized products bearing CLARISONIC trademark, which are prima facie counterfeit. Such a conduct demonstrates that the only purpose of the Respondent was and is to use the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to such a website, creating a likelihood of confusion with the endorsement of the Complainant's website and to taking profit from the offer for sale of the products promoted thereon.
As stated in Kelley Blue Book Company, Inc. v. Nikolay Golovin aka Buy-movie.net, WIPO Case No. D2005-0837 "Because the disputed domain name is almost identical to Complainant's mark, users searching for Complainant's website (..) may connect to Respondent's website, and after seeing its content, they may believe that it is Complainant's website. The resulting confusion provides a ground for a finding of bad faith use." See also Pandora Jewelry, LLC v. ke ying, no, bing jin, fcgem, Wei Pang, na no and fcg, xiong mao, WIPO Case No. D2010-0642, Ebay Inc. v. Wangming, WIPO Case No. D2006-1107.
In the Panel's view, the Respondent intentionally attracts Internet users for commercial gain to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
Furthermore, it should be noted that, according to the Complaint, the Respondent, besides free-riding off of the goodwill of Complainant's mark for commercial gain, is using its website to attract Internet users to sell the Complainant's prima facie counterfeit products at prices which are much cheaper than for the original products. This element can be considered a further evidence that the Respondent has registered and is using the disputed domain name also with the purpose of disrupting the Complainant's business according to paragraph 4(b)(iii) of the Policy.
Similar conduct, where the respondent redirects domain names to websites where the complainant's trademarks are published and prima facie counterfeit products are offered for sale, was found indication of bad faith, among others, also in the following UDRP decisions: Guccio Gucci S.p.A. v. Liuqing Wu, Feiji Lu, WIPO Case No. D2011-1506; Moncler S.r.l v. Mr. Zhuo Muniao, supra, Moncler S.r.l. v. Linsaihui, WIPO Case No. D2010-1676, Moncler S.r.l. v. Sandra Brown, supra, Moncler S.r.l. v. wuyuansheng, supra, Moncler S.r.l. v. Andy Huang, WIPO Case No. D2010-1669; Prada S.A. v. Domains for Life, WIPO Case No. D2004-1019.
In the present case, it's worth noting that, similar to Swarovski Aktiengesellschaft v. Whois Privacy Protection Service / Sprout Ltd., mamoru shiga, WIPO Case No. D2012-1496, "even if the SWAROVSKI products offered for sale on the Respondent's website were genuine goods deriving from the Complainant, Internet users could believe that the website published at the disputed domain name is operated by the Complainant or its authorized agents".
As a final circumstance of the Respondent's bad faith, it has also to be taken into consideration the Respondent's failure to reply to the Cease and Desist letters addressed to his attention and following reminder. Prior panels held that a failure to respond to a Cease and Desist letter can be evidence of bad faith. See, e.g., Bayerische Motoren Werke AG v. This Domain is For Sale Joshuathan Investments, Inc., WIPO Case No.D2002-0787.
In view of the above, the Panel concludes that the disputed domain name has been registered and is being used in bad faith according to paragraphs 4(a)(iii) and 4(b) 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, <clarisonicitalia.org> be transferred to the Complainant.
Date: May 14, 2014