WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
L'Oréal SA v. Morgan Lees / Domain Admin / PrivacyProtect.org
Case No. D2014-0325
1. The Parties
The Complainant is L'Oréal SA of Paris, France, represented by Studio Barbero, Italy.
The Respondent is Morgan Lees of Banbridge, United Kingdom of Great Britain and Northern Ireland / Domain Admin / PrivacyProtect.org of Nobby Beach, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <iclarisonicaustralia.biz> (the "Domain Name") is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 4, 2014. On March 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 5, 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 March 7, 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 March 7, 2014.
The Center verified that 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, and the proceedings commenced on March 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 2, 2014.
The Center appointed Anders Janson as the sole panelist in this matter on April 23, 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 one of the world's largest companies in the field of cosmetic and beauty. The Complainant markets various beauty products and 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. One of the products offered by the Complainant is a sonic skin care device designed for skin cleansing, which is marketed under the trade name CLARISONIC.
The Complainant, directly or through its subsidiary company Pacific Bioscience Laboratories Inc., is the owner of the trademarks CLARISONIC and CLARISONIC MIA with registrations in several countries. CLARISONIC was on January 20, 2009 registered as a word mark with the Community Trademark Registration No. 005732375 and on May 14, 2011 CLARISONIC was also registered as a word mark in China with the Chinese Trademark Registration No. 8275826. Furthermore, the word "Clarisonic" has been protected as a trademark for several years with many national registrations in various jurisdictions, including Australia, Canada, China, Hong Kong, Japan, Singapore, South Korea, and the United States.
The Respondent registered the Domain Name <iclarisonicaustralia.biz> on May 24, 2013.
5. Parties' Contentions
The Complainant, directly or through its subsidiary company Pacific Bioscience Laboratories Inc., is the owner of the trademarks CLARISONIC and CLARISONIC MIA with registrations in several countries. The Respondent registered <iclarisonicaustralia.biz> on May 24, 2013 without authorization of the Complainant. The Domain Name, at the time of drafting the present Complaint and as well when the reclaim activities were initiated, is redirected to a website displaying, in absence of the Complainant's authorization and of any disclaimer of non-affiliation, CLARISONIC trademarks (used also as "Favicon"), and imitating the layout of "www.clarisonic.com.au" thus generating the impression to be a Complainant's official website too.
Unauthorized products under the trademark CLARISONIC are, furthermore, offered for sale at discounted prices on the website at the Domain Name without disclosing information on the company managing the website. The website corresponding to the Domain Name is attempting to imitate websites that belong to the Complainant, which suggests that the website at the Domain Name is managed by the Complainant or its subsidiary.
The Complainant's authorized representative sent an email on June 27, 2013 to the owner of the Domain Name requesting him to immediately deactivate the website and the Domain Name. The email was however disregarded by the Respondent. Another email was sent as a reminder to the Respondent on September 3, 2013, and this e-mail was also disregarded by the Respondent. No response has been received by the Respondent and the Domain Name is still redirected to the misleading website.
The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights according to the Policy, Paragraph 4(a)(i) and the Rules, Paragraphs 3(b)(viii) and 3(b)(ix)(1). The Domain Name incorporates the whole of the Complainant's registered trademark CLARISONIC. The addition of "i" and "australia" within the Domain Name does not affect this. 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 domain name may also contain descriptive or generic terms. The addition of "australia" to the Domain Name is not enough to distinguish the Respondent's Domain Name from that of the Complainant; instead, it causes confusion among Internet users regarding the source and origin of the products.
The Respondent has no rights or legitimate interests in respect of the Domain Name according to the Policy, Paragraph 4(a)(ii) and the Rules, Paragraph 3(b)(ix)(2). The Respondent is not in any way licensed or authorized to use the Complainant's trademark CLARISONIC. Furthermore, there is no evidence showing that the Respondent is commonly known by the Domain Name as an individual, business or other organization. The Domain Name is redirected to a commercial website where products under the Complainant's trademark CLARISONIC are offered for sale. This shows that the Respondent did not intend to use the Domain Name for any legitimate purpose and its use cannot be considered as a legitimate noncommercial or fair use without intent for commercial gain, since the Respondent has been gaining from sales or the unauthorized products bearing the CLARISONIC trademark. Furthermore, the Respondent's website is designed to give the impression that it is an official website owned by the Complainant. "Clarisonic" is an invented word, with no meaning in any languages, which wouldn´t be chosen unless the purpose is to be associated with the Complainant.
The Domain Name was registered and is being used in bad faith according to the Policy, paragraphs 4(a)(iii), 4(b) and the Rules, paragraph 3(b)(ix)(3). The Respondent could not have possibly ignored the existence of the trademark registration confusingly similar to the Domain Name when it was registered. The Respondent had knowledge about the CLARISONIC trademark at the time of the registration of the Domain Name since the Complainant's trademarks are visible on the website and products with the CLARISONIC trademark are being sold. The Domain Name is used in connection with a website generating the impression to be a website belonging to the Complainant. Such conduct demonstrates that the only purpose of the Respondent was and is to use the Domain Name to attract Internet users to the website and to gain profit by taking advantage of the goodwill and reputation of the Complainant's trademark.
According to the reasons described above, the Complainant requests the Administrative Panel to issue a decision that the Domain Name <iclarisonicaustralia.biz> be transferred to the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to Paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant does have trademark rights in the mark CLARISONIC as trademark registrations have been provided.
The Domain Name is <iclarisonicaustralia.biz> and therefore contains the entire word "Clarisonic", which is the Complainant's registered trademark. The fact that the Domain Name also contains generic elements, as in this case "i" and "australia", shall be disregarded when determining whether a domain name and a trademark are identical or confusingly similar. The Panel therefore finds that the Domain Name <iclarisonicaustralia.biz> is confusingly similar to Complainant's trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has not consented to, licensed, or otherwise authorized the Respondent to use or register the Domain Name and sell products bearing the CLARISONIC trademark at a discounted price. Furthermore, the Respondent has not answered any of the Complainant's attempts to get in touch by e-mail and has therefore not provided any evidence of rights or legitimate interests in the Domain Name.
According to the above mentioned, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name and the Complainant has therefore met the requirement under Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the Complainant's trademark CLARISONIC is well-known, and further that it is highly unlikely that the Respondent, by mere accident, would have registered the Domain Name. As the website to which the Domain Name leads sells products with the CLARISONIC trademark at a discounted price also denounces that the Respondent cannot have registered the Domain Name completely unaware of the CLARISONIC trademark. Accordingly, in the Panel's assessment the Respondent must have chosen the Domain Name deliberately to benefit from the Complainant's good-will and reputation in order to gain commercial benefit, which the Panel concludes is evidence of bad faith registration and use under the Policy.
The Panel thus finds that the Complainant has fulfilled the requirement under 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 Domain Name <iclarisonicaustralia.biz> be transferred to the Complainant.
Date: May 7, 2014