WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LʼOréal SA v. Chen Min
Case No. D2014-0320
1. The Parties
The Complainant is LʼOréal SA of Paris, France, represented by Studio Barbero, Italy.
The Respondent is Chen Min of Bryn Mawr, Pennsylvania, United States of America ("USA").
2. The Domain Names and Registrar
The disputed domain names <brosseclarisonic.com>, <clarisonicavis.com>, <clarisonicenfrance.com>, <clarisonicheads.com>, <clarisonicmiabrushfr.com>, <clarisonicmiafr.com>, <clarisonicsbrush.com>, <clarisonicsbrushes.com>, <clarisonicsbrushfr.com>, <clarisonicsfrance.com>, <clarisonicskincares.com>, <clarisonicsmiabrush.com>, <clarisonicsreviews.com>, <laclarisonic.com>, <miaclarisonicfr.com>, <miaclarisonicsbrush.com>, <miaclarisonic2.com>, <miaclarisonic4.com>, <miaclarisonic5.com> and
<sephoraclarisonic.com> 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 March 3, 2014. On March 3, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 3, 2014, 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 March 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondentʼs default on April 2, 2014.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on April 11, 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 LʼOréal SA. According to the Complainant it is one of the largest companies in the field of cosmetics and beauty products and indisputably a worldwide leader in this sector. The Complainant markets various beauty products including hair colour, skin care, sun protection, make-up, perfumes and hair care. It is also active 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.
The Complainantʼs origins date back to the beginning of the twentieth century. The company that subsequently became LʼOréal originally called Société Française des Teintures Inoffensives pour Cheveux was founded in 1909 by Eugene Schueller, a young French chemist who formulated and manufactured his own hair care products. At the beginning the products were offered for sale to Parisian hairdressers, but progressively the Complainantʼs business expanded worldwide. On April 4, 1939, the Société des Teintures Inoffensives pour Cheveux officially changed its name to LʼOréal, establishing it's headquarter at 14 Rue Royale in Paris, which is still the companyʼs head office.
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 well-established brands such as LʼOréal, Garnier, Maybelline, Kerastase and with the recently acquired trademark CLARISONIC, which has been used for nearly 10 years in connection with sonic skin care devices and technology.
The Complainant acquired Pacific Bioscience Laboratories Inc. and its associated trademark rights in CLARISONIC via a merger agreement. Pacific Bioscience Laboratories Inc. was the market leader in the areas of skin cleansing devices and technology. As a result the mark CLARISONIC soon became one of leading brands of the Complainantʼs luxury product division.
The Clarisonic products, created by team of scientists and engineers in Seattle in 2004 and patented with more than 40 registrations, was launched in the USA by Pacific Bioscience Laboratories initially in the professional market (mainly spa owners and physicians) and then in the consumer market. The consumer line of products includes, inter alia, the Clarisonic Sonic Skin Cleansing System available in Classic, Plus, Mia and Aria models skin care devices, the Clarisonic Opal Sonic Infusion System, a palm-sized sonic infusion device, the Clarisonic Cleansers, the Clarisonic Brush Heads compatible with every model and which require replacing every three months. For the professionals, besides this wide range of products for the consumer market, a dedicated line named Clarisonic PRO is produced. Annex 5.1 to the Complaint sets out samples of the products.
Through LʼOréal distribution channels, perfumeries, travel retail outlets, as well as free-standing stores and e-commerce websites, CLARISONIC products are being progressively launched worldwide. The Complainant operates an extensive sales network consisting of around 72,600 employees in 130 countries. Sales of Clarisonic products at the end of 2012 were around USD 200 million, while in 2010, prior to the acquisition by LʼOréal, they amounted to USD 104 million. The Complainant submits that this demonstrates the leading position of CLARISONIC in the market for skin care devices.
CLARISONIC also enjoys a well-known reputation, as demonstrated by the many awards that the products marketed under the trademark have 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. Annexes 5.2, 5.3 and 5.4 to the Complaint set out some of the relevant award certificates.
The mark CLARISONIC was and is strongly supported by global advertising campaigns through television and other media such as important international magazines with broad circulation, inter alia, Vanity Fair, Elle, Cosmopolitan, People and Marie Claire. The CLARISONIC products had a wide media eco as demonstrated by the various advertisements and articles appearing on different magazines and newspapers reviewing the products and which have enjoyed widespread appreciation amongst famous personalities such as Oprah Winfrey, Lady Gaga, Madonna, Liv Tayler, Gwyneth Paltrow, Courtney Cox, Cameron Diaz, Demi Moore and Mary J Blige. Details are set out at Annex 5.5 to the Complaint.
Apart from being promoted in traditional advertising channels, CLARISONIC has been widely promoted via the Internet in particular with a strong presence online through the most popular social medial with channels and pages specifically dedicated to CLARISONIC, including on Facebook, Twitter and Youtube.
The Complainant has long been involved in a series of various social commitments. CLARISONIC products have been supporting since 2010 the American Cancer Society Look Good...Feel Better campaign and with the sponsorship of other high profile events and promotions.
The Complainant submits that as a result of its significant investments in R&D, marketing, sales and distribution channels as well as existence of a truly impressive client base for these products, CLARISONIC is undisputedly famous and a well-known mark worldwide in the field of sonic skin care.
The Complainant sets out details of a number of trademark registrations either directly or through its subsidiary company Pacific Bioscience Laboratories Inc. for the mark of CLARISONIC. These include the following:
1. Community Trademark Registration No. 5732375 filed on March 5, 2007, registered on January 20, 2009 in Classes 3, 5, 21, 35 and 34;
2. USA Trademark Registration No. 3087196 filed on May 27, 2004, registered on May 2, 2006 in Class 21;
3. USA Trademark Registration No. 3732137 filed on March 31, 2008, registered on December 29, 2009 in Class 3;
4. USA Trademark Registration No. 3880043 filed on May 6, 2010, registered on November 23, 2010 in Class 35;
5. Chinese Trademark Registration No. 8275826 filed on May 7, 2010, registered on May 14, 2011 in Class 5;
6. Chinese Trademark Registration No. 8514771 filed on July 27, 2010, registered on September 7, 2011 in Class 35.
The Complainant points out that there are other trademark registrations for CLARISONIC and CLARISONIC MIA in other countries. Copies of the above registrations are exhibited at Annex 3 to the Complaint.
According to the Complainant, the Respondent registered the twenty disputed domain names on June 30, 2013, without the Complainantʼs authorization. The majority of the disputed domain names are directed to websites displaying, without any disclaimer or non-affiliation and without the Complainantʼs authorization CLARISONIC trademarks and official images and using layouts apt to generate the impression that they are the Complainantʼs genuine and official websites a screenshot of which is set out in the body of the Complaint and at Annex 7.1 to the Complaint.
Moreover, prima facie infringing products bearing the CLARISONIC marks are offered for sale on the websites. The Complainant points out that in the circumstances neither the name of the Respondent nor any contact information is published on the websites and the fact that the products are offered at low prices suggests that they are counterfeit products. At Annex 7.2 to the Complaint is a comparison document setting out details of the prices at which the products are offered for sale. These are cheaper than the prices for the Complainantʼs products.
The remaining two disputed domain names <clarisonicheads.com> and <clarisonicenfrance.com> are redirected to set up pages, as shown by the screenshots at Annex 7.3 to the Complaint.
As soon as the Complainant became aware of the registration of the disputed domain names and the Respondentʼs use of the disputed domain names it instructed its authorized representative, Studio Barbero, to send a cease and desist letter to the Respondent. This letter dated July 12, 2013 is exhibited at Annex 8 to the Complaint. It requests the Respondent to deactivate the website and to transfer the disputed domain names. In the absence of a reply, reminders were sent out to the Respondent on July 23, 2013, and on September 3, 2013 (see Annex 9 to the Complaint). The paper version of the cease and desist letter sent by registered mail was returned "unclaimed".
The Respondent has not submitted a Response and the disputed domain names still resolve to the Respondentʼs websites.
In the absence of a Response, the Panel finds the evidence set out above and submitted by the Complainant to be true.
5. Partiesʼ Contentions
1. The Complainant submits that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. In particular the disputed domain names incorporate the whole of the Complainantʼs marks CLARISONIC and CLARISONIC MIA.
2. The Respondent has no rights or legitimate interests in the disputed domain names. lt points out that the Respondent is not a licensee, nor an authorized agent of the Complainant, nor in any way authorized to use the trademark CLARISONIC. The fact that the disputed domain names are redirected to commercial websites which publishes the Complainantʼs trademarks demonstrates the Respondent did not intend to use the disputed domain names in connection with any legitimate purpose.
3. The disputed domain names were registered and are being used in bad faith. The Complainant relies upon the evidence that the Respondent would have been "certainly well aware of the Complainantʼs trademark rights". The disputed domain names are being used in bad faith in connection with websites generating the impression that it is the Complainant's official site but offers for sale infringing products. It also relies upon the Respondentʼs failure to reply to the cease and desist letter.
In the absence of a Response, there are no contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Taking into account the evidence of both the Complainantʼs registered and unregistered trademark rights in the marks CLARISONIC and CLARISONIC MIA referred to above, the Panel finds that the Complainant has trademark rights for the marks CLARISONIC and CLARISONIC MIA.
The Panel finds that the disputed domain names incorporate the whole of the Complainantʼs CLARISONIC trademark but with the addition of the non-distinctive elements such as an "s", generic terms, numbers and geographical indications, minor differences that do not affect the confusing similarity. The Complainant submits that the use of these descriptive elements does not affect the confusing similarity of the disputed domain names with its trademarks. The Panel accepts this submission and also takes the view that the mark CLARISONIC is the dominant part of the disputed domain names.
In the case of <sephoraclarisonic.com>, the disputed domain name is composed of two trademarks: the first part being the registered trademark SEPHORA, owned by Sephora Company (International Trademark registration No. 1128625 set out at Annex 11 to the Complaint) and the second part being CLARISONIC. The fact that the disputed domain name includes the third-party trademark does not affect the confusing similarity. It is an established principle that a domain name that wholly incorporates a trademark is confusingly similar for the purposes of the Policy, despite the fact that the disputed domain name may also contain another trademark. For example, in Hoffmann-La Roche Inc. v. Charlie Kalopungi, WIPO Case No. D2010-1826, the Panel found that "the inclusion of the trademarks of other parties in the disputed domain name does not detract from the confusing similarity". In the present case, in view of the contents published on the website corresponding to <sephoraclarisonic.com> it is clear that the Respondent was emphasizing the CLARISONIC trademark when it registered the disputed domain name combining the two trademarks.
The remaining disputed domain names are characterized by the addition to the Complainantʼs trademarks of non-distinctive elements such as an "s", generic terms, numbers and geographical indications, minor differences that do not affect the confusing similarity.
It is also established that domain names that wholly incorporate a trademark are found to be confusingly similar for the purposes of the Policy, despite the fact that they may also contain misspelling, numbers, and descriptive or generic terms.
This applies to the disputed domain names <clarisonicsreviews.com>, <clarisonicsmiabrush.com>, <clarisonicsbrushes.com>, <clarisonicsbrush.com>, <miaclarisonicsbrush.com>, <clarisonicsbrushfr.com>, <clarisonicsfrance.com>. Previous UDRP panels considered such variations as a mere misspelling of the trademark. See, for example, Moncler S.r.l. v. Zhongyuan Tec, WIPO Case No. D2011-0471, where under similar circumstances, the panel stated: "The Panel notes that some of the domain names which are subject of the Complaint feature a plural version of Complainantʼs trademark. The Panel considers this is a simple misspelling, and notes that similar domain names have been held to be confusingly similar to the trademarks at issue." See, also Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043 (in which the panel held that the disputed domain name <edmundss.com> was confusingly similar to the complainantʼs trademark Edmunds).
In the present case, the majority of the terms selected by the Respondent for its domain name registrations increase the likelihood of confusion and induce Internet users to believe that there is an association between the disputed domain names and the Complainant. The terms "brosse", "heads", "brush", "skin cares", "brushes" are descriptive of the products made by the Complainant and the geographical indications "fr", "en france", "france" are directed to make Internet users mistakenly believe that the websites are the Complainantʼs official websites in France.
It is also well established that the generic Top-Level Domain ("gTLD") ".com" is merely instrumental to the use of the Internet so the disputed domain names remain confusingly similar to the Complainant's trademarks despite its inclusion.
In light of the foregoing and in the absence of a Response, the Panel finds that the disputed domain names are confusingly similar to the Complainantʼs trademarks in which it has rights, according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel accepts the Complainantʼs evidence that the Respondent is not a licensee, authorized agent of the Complainant or in any other way authorized to use the Complainantʼs trademarks CLARISONIC and CLARISONIC MIA.
There is no evidence that the Respondent is commonly known by the disputed domain names as an individual, business or other organization.
In the absence of a Response, the Respondent has provided no evidence of its use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services before any notice of the dispute.
As set out above and evidenced by the screenshots in Annexes 7.1 and 7.2 to the Complaint, the majority of the disputed domain names are redirected to commercial websites where, in the absence of any disclaimer of non-affiliation, the Complainantʼs trademarks are featured prominently and unauthorized products are offered for sale under the trademark CLARISONIC, which are prima facie infringing products. This in the Panel's view demonstrates that the Respondent did not intend to use the disputed domain names in connection with any legitimate purpose and their use cannot be considered a legitimate noncommercial or fair use. The Respondent is benefitting from the sales of its products bearing CLARISONIC trademarks.
By analogy, the Complainant relies upon 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 where it was stated "The unauthorized use made by the Respondent of the websites under the disputed domain names, where the Complainantʼs trademark features prominently and products bearing its trademarks are sold, make it hard to imagine that the Respondent could ever establish any rights or legitimate interests."
The use of the Complainantʼs mark CLARISONIC in respect of low price products suggests that they are prima facie infringing products.
Furthermore, two disputed domain names are prima facie passively held by the Respondent: <clarisonicenfrance.com> and <clarisonicheads.com>. It was established for example in: Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483, "Absent some contrary evidence from Respondent, passive holding of a domain name does not constitute 'legitimate non-commercial or fair use'." The Complainant takes into account the use at the same time of the other disputed domain names. It is difficult to envisage any possible legitimate use in relation to <clarisonicenfrance.com> and <clarisonicheads.com> which are confusingly similar to the trademark CLARISONIC.
In this Panelʼs view and in the absence of a Response, it is sufficient that the Complainant shows prima facie evidence in order to shift the burden of production on the Respondent. See for example L'oreal SA v. 张容容, LinChaoJie, Guangxi NanNing IDEA Business Planning Co., Ltd, WIPO Case No. D2010-1318).
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names, according to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant submits that in the light of the use of the trademark since 2004, worldwide and in particular in the USA, where the Respondent is prima facie based, the amount of advertising and sales of the Complainantʼs products, the intensive use of the trademark and the well-known character of CLARISONIC, the Respondent must have been aware of the existence of the Complainant's trademarks to which the disputed domain names are confusingly.
The well-known character of the trademark CLARISONIC has been recognized by prior UDRP decisions including, LʼOréal SA v. Katren Bwrone, WIPO Case No. D2013-0668 where the panel stated that "It is difficult to conceive that Respondent did not know of Complainantʼs marks and products when Respondent registered the disputed domain names". As set out above, the CLARISONIC products are protected by various USA, Chinese and Community registrations. The CLARISONIC products have been sold since 2004. The CLARISONIC products are marketed through the Complainantʼs extensive worldwide sales network, through the Internet and social media, television, and popular magazines. In the last two years, the CLARISONIC products have received numerous awards for best products in industry and general circulation publications. Sales in 2012 amounted to approximately USD 200 million. Based on these facts, this Panel infers that the Respondent was aware or must have been aware of the Complainant's trademarks when the Respondent registered the disputed domain names, and therefore the Respondent has registered them in bad faith.
In this Complaint the actual knowledge of the Complainantʼs trademark rights by the Respondent at the date of the registrations of the disputed domain names is clearly demonstrated by the fact that the Respondent registered twenty disputed domain names incorporating CLARISONIC on the same day and that on the majority of the corresponding websites the Complainantʼs trademarks are featured prominently and products bearing the trademarks are sold.
The Complainant relies upon previous UDRP decisions which have recognized as registration in bad faith cases involving the Complainantʼs trademarks under circumstances similar to the present one. See, inter alia, LʼOréal SA v. Katren Bwrone, (supra), and also, The Coca-Cola Company v. Andrew Corr, WIPO Case No. D2012-0368.
In light of the above, the Panel is entitled to find and does that the Respondent was aware of the Complainantʼs rights in CLARISONIC and registered the disputed domain names with an intention to refer to the Complainantʼs mark in order to capitalize on the Complainant's reputation and goodwill in CLARISONIC by diverting Internet users seeking information about the Complainant to its own websites.
The majority of the disputed domain names are used in connection with websites generating the impression to be, contrary to the fact, the Complainantʼs official websites, publishing CLARISONIC trademarks and official images and offering for sale infringing products bearing CLARISONIC trademarks, which are prima facie infringing.
Two of the twenty disputed domain names are passively held. As established in a number of prior cases, the concept of "bad faith use" in paragraph 4(b) of the Policy includes not only positive action but also passive holding (see for example Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The evidence in this Complaint shows that the Respondent has engaged in a pattern of abusive registration in order to prevent the Complainant from reflecting its trademark CLARISONIC in corresponding domain names and benefitting from the association between the disputed domain names and the Complainantʼs trademarks. By selling under the disputed domain names prima facie infringing CLARISONIC products, the Respondentʼs passive holding of these disputed domain names also amounts to bad faith.
The Complainant also relies on L'Oréal SA v. Aaliyah Bull, Aaron Greenwood, Abby Jordan, Alicia Wells, Andrew May, Billy Kent, Bradley Bond, Bradley Whitehouse, ca uang, Charlie Khan, Christopher James, Daniel Holland, Daniel Pickering, Ethan Long, Ethan Morris, Eva Bartlett, Evan Warren, Ewan Cooke, Ewan Giless, Ewan McDonald, Finlay Hayward, Finley Farmer, Harriet Webb, Harvey Richards, Henry Stephenson, Hollie Harper, Hollie Schofield, Jasmine Bull, Jessica Peacock, Kai Sin, Kate Hunter, Katherine Cooke, Kieran Charlton, Lara Berry, Lara Foster, liuyund rodd, Lola Burns, Louie Ali, Louie Harrison, Lucas Brooks, Lucas Short, Lucy Griffiths, Luke Abbott, Maddison Knowles, Madeleine Bartle, Maisie Sheppard, Megan Duffy, Natasha Payne, Nicholas Tyler, Paige Read, Poppy Wallis, Quahs aiv, Rachel Wilkins, Sam Walsh, Samuel Rose, Scarlett Davies, Scott Tucker, Sean Holland, Shannon North, Spencer Faulkner, Taylor Harris, Taylor Hunter, Toby Rahman, Zak Sims, WIPO Case No. D2013-1416, where on similar facts, it was held that "the fact that the Respondent passively holds these two inactive Disputed Domain Names does not prevent the Panel from a finding of use in bad faith. The Panel looks into the present case in its entirety and finds that the Respondent has engaged in a large scale registration of domain names that incorporate the CLARISONIC trademark as the only distinctive part. Many of the Disputed Domain Names are currently being used in bad faith as described above... It is a fair inference that the Respondent passively holds these inactive Disputed Domain Names for some future abusive use detrimental to the Complainant".
The Panel finds and in the absence of a Response that the disputed domain names were registered and are 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 names
<brosseclarisonic.com>, <clarisonicavis.com>, <clarisonicenfrance.com>, <clarisonicheads.com>, <clarisonicmiabrushfr.com>, <clarisonicmiafr.com>, <clarisonicsbrush.com>, <clarisonicsbrushes.com>, <clarisonicsbrushfr.com>, <clarisonicsfrance.com>, <clarisonicskincares.com>, <clarisonicsmiabrush.com>, <clarisonicsreviews.com>, <laclarisonic.com>, <miaclarisonicfr.com>, <miaclarisonicsbrush.com>, <miaclarisonic2.com>, <miaclarisonic4.com>, <miaclarisonic5.com>, <sephoraclarisonic.com> be transferred to the Complainant.
Clive Duncan Thorne
Date: April 24, 2014