WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
L’Oreal SA v. Zhang Yaxu
Case No. D2014-0321
1. The Parties
The Complainant is L’Oreal SA of Paris, France, represented by Studio Barbero, Italy.
The Respondent is Zhang Yaxu of Henan, China.
2. The Domain Name and Registrar
The disputed domain name <clarisonicbrushoutlet.com> is registered with HiChina Zhicheng Technology Ltd. (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 name. On March 4, 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.
On March 5, 2014, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceedings. On the same day, the Complainant confirmed its request that English be the language of the proceedings by email to the Center. The Respondent did not submit any comments within the specified due date.
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 Respondent’s 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 L’Oreal 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 Complainant’s origins date back to the beginning of the twentieth century. The company that subsequently became L'Oreal originally called Société Française des Teintures Inoffensives pour Cheveux was founded in 1909 by Eugène 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 Complainant’s business expanded worldwide. On April 4, 1939, the Société des Teintures Inoffensives pour Cheveux officially changed its name to L’Oreal, establishing its headquarter at 14 Rue Royale in Paris, which is still the company’s 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 L’Oreal, 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 the leading brands of the Complainant’s luxury product division.
The Clarisonic products, created by a team of scientists and engineers in Seattle in 2004 and patented with more than 40 registrations, has been launched in the United States 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 which use a patented sonic frequency of more than 300 movements per second, 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 has set out samples of the products.
Through L’Oreal 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 L’Oreal, 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 with 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. United States Trademark Registration No. 3087196 filed on May 27, 2004, registered on May 2, 2006 in Class 21;
3. United States Trademark Registration No. 3732137 filed on March 31, 2008, registered on December 29, 2009 in Class 3;
4. United States 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 in other countries. Copies of the above registrations are exhibited at Annex 3 to the Complaint.
According to the Complainant the Respondent registered the disputed domain name on May 9, 2013, without the Complainant’s authorization. The disputed domain name is directed to a website displaying it, without any disclaimer of non-affiliation and without the Complainant’s authorization CLARISONIC trademarks and using a layout apt to generate the impression that it is the Complainant’s genuine and official website, a copy 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 website. The Complainant points out that in the circumstances neither the name of the Respondent nor any contact information is published on the website 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 Complainant’s products.
As soon as the Complainant became aware of the registration of the disputed domain name and the Respondent’s use of the disputed domain name it instructed its authorized representative, Studio Barbero, to send a cease and desist letter to the Respondent. This letter is exhibited at Annex 9 to the Complaint. It requests the Respondent to deactivate the website and to transfer the disputed domain name. In the absence of a reply, reminders were sent out to the Respondent on July 23, 2013 and on September 3, 2013.
The cease and desist letter and reminders were dispatched solely via email since the registered address indicated in the WhoIs by the Respondent and which incorporates the word “Henanshenpingxiananziyingxianbaipocundianzigouzhuang” was patently false. For example, there is no city called Pingxian in China.
The Respondent has not submitted a Response and the disputed domain name stills resolves to the Respondent’s website.
In the absence of a Response, the Panel finds the evidence set out above and submitted by the Complainant to be true.
5. Parties’ Contentions
1. The Complainant submits that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights. In particular the disputed domain name incorporates the whole of the Complainant’s marks CLARISONIC together with two non-distinctive elements “brush” and “outlet”.
2. The Respondent has no rights or legitimate interests in the disputed domain name. It 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 name is redirected to a commercial website which publishes the Complainant’s trademarks demonstrates the Respondent did not intend to use the disputed domain name in connection with any legitimate purpose.
3. The disputed domain name was registered and is being used in bad faith. The Complainant relies upon the evidence that the Respondent would have been “certainly well aware of the Complainant’s trademark right”. The disputed domain name is being used in bad faith in connection with a website generating the impression that it is the Complainant’s official site but offers for sale infringing articles. It also relies upon the fictitious postal address and the Respondent’s failure to reply to the cease and desist letter.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly similar
Taking into account the evidence of both the Complainant’s registered and unregistered trademark rights in the mark CLARISONIC referred to above, the Panel finds that the Complainant has trademark rights for the mark CLARISONIC including trademark rights in China where the Respondent purports to be located.
The Panel finds that the disputed domain name incorporates the whole of the Complainant’s CLARISONIC trademark but with the addition of the non-distinctive elements “brush” and “outlet”. The Complainant submits that the use of these distinctive elements does not affect the confusing similarity of the disputed domain name 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 name.
The Complainant relies upon two previous UDRP cases, L'Oreal SA v. Katren Bwrone, WIPO Case No. D2013-0668 and Revlon Consumer Products Corporation v. Vladimir Sangcol, WIPO Case No. D2010-1774, which are authorities for the view that the addition of descriptive terms which are descriptive of products made by the Complainant increases, rather than decreases, the likelihood of confusion given that the disputed domain name combines the trademark and descriptive terms related to the promotion of the Complainant’s products.
In the Panel’s view the disputed domain name is confusingly similar to the Complainant’s trademark CLARISONIC in which it has rights according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds on the basis of the Complainant’s submissions that the Respondent is not a licensee or authorized agent of the Complainant nor is it in any way authorized to use the Complainant’s mark CLARISONIC. There is no evidence that the Respondent is commonly known by the disputed domain name. The Respondent has not provided the Complainant with any evidence of use of or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Rather, the disputed domain name is redirected to a commercial website where in the absence of any disclaimer of non-affiliation the Complainant’s trademarks are used on unauthorized and prima facie infringing products. This demonstrates that the Respondent doesn’t intend to use the disputed domain name in connection with any legitimate purpose or use.
It is also clear on the basis of the evidence submitted by the Complainant, that the offer for sale of prima facie infringing products is evidence that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds the Respondent has no rights nor 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
The Complainant’s evidence, which has been accepted by the Panel is that there has been intensive use of the trademark CLARISONIC including in China where the Respondent is, prima facie, personally based and that the Respondent should have recognized the Complainant’s trademark CLARISONIC. In support of this submission, the Complainant relies upon the argument that the use of the trademark CLARISONIC by the Respondent is demonstrated by the fact that on the Respondent’s website the Complainant’s trademarks are published and used in relation to allegedly infringing products not manufactured by the Complainant.
The Panel accepts the evidence of the Complainant, that the wide use of the Complainant’s trademark since 2004 and registration worldwide including in China since 2010 where the Respondent is apparently based, ensures that the mark is widely recognised in relation to sonic skin care products. It follows that the Respondent would have been “certainly well aware” of the Complainant’s rights in the trademark and registered the disputed domain name with a clear intention to refer to the Complainant’s mark in order to capitalize on the reputation of the Complainant’s mark by diverting Internet users seeking information about the Complainant to its own website and to earn revenues by offering for sale of the products promoted thereon. It also follows that the Respondent in addition to unlawfully utilizing the Complainant’s goodwill for commercial gain, is using its website to attract Internet users to sell the Respondent’s prima facie infringing products at cheaper prices than the original products sold by the Complainant. This is evidence of registration and use in bad faith.
In addition, the Panel takes into account the use of an apparently false postal address by the Respondent and the fact that the Respondent has failed to reply to the cease and desist letter and reminders sent by the Complainant’s representative.
The Panel finds that the disputed domain name has been registered and is 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 <clarisonicbrushoutlet.com> be transferred to the Complainant.
Clive Duncan Thorne
Date: April 15, 2014