WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CLARINS v. Andre Schneider/ DomCollect AG
Case No. D2014-0595
1. The Parties
The Complainant is CLARINS of Neuilly Sur Seine, France, represented by Tmark Conseils, France.
The Respondent is Andre Schneider/ DomCollect AG of Zug, Switzerland.
2. The Domain Name and Registrar
The disputed domain name <clarins-kosmetikinstitut.com> is registered with 1&1 Internet AG (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 11, 2014. On April 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 14, 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 April 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 8, 2014.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on May 26, 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 the owner of the trademark CLARINS, registered in numerous jurisdictions in relation to cosmetics, beauty care products and services, and make-up goods, including in France (n° 1637194, filed on January 7, 1991); the European Union (n° 005394283, dated October 10, 2006); and the United States, registered in the name of a subsidiary company (Clarins Groupe SARL: n° 935002, filed on June 2, 1970; and n° 1574179 filed on June 2, 1970).
The disputed domain name was registered on September 10, 2012.
5. Parties' Contentions
The Complainant is the owner of the registered trademark CLARINS in a number of jurisdictions. It also uses Clarins as a registered business name and operates the websites "www.clarins.com" and "www.clarins.ch".
The Complainant contends that the words 'kosmetik' and 'institut' are purely descriptive elements of the disputed domain name, so that the latter is identical or at least confusingly similar to the Complainant's trademark, business name and domain names. The Complainant asserts that numerous panels have decided that when a disputed domain name incorporates the complainant's trademark in its entirety, this is sufficient to establish confusing similarity.
The Complainant asserts that the Respondent is neither affiliated with it nor has received any authorization to use or register the name Clarins either in a domain name or otherwise. The Complainant also contends that the Respondent is not making a fair or noncommercial use of the disputed domain name as the website to which it resolves only provides sponsored links for internet users to browse through. Some of the sponsored links identified by the Complainant lead to websites where competing goods are offered. According to the Complainant the Respondent is relying on consumer confusion to generate a commercial gain for himself; such actions do not constitute bona fide commercial use that is apt to vest rights or legitimate interests in the registered owner of a domain name.
The Complainant contends that the Clarins trademark is well-known around the world. It asserts that it has a longstanding web presence by virtue of the "www.clarins.com" and "www.clarins.ch" websites. Furthermore, the Complainant asserts that the sponsored links at the website to which the disputed domain name resolves direct internet users to websites that offer goods identical to those covered by the Complainant's trademarks, and more particularly, links to the goods of the Complainant's direct competitors.
According to the Complainant, the Respondent is seeking to generate "click through" commissions from the diversion of Internet users, which it says is a common example of registration and use in bad faith, as panels have repeatedly held. The fact that the disputed domain name is also offered for sale on the relevant website, further reinforces the allegation of bad faith use, as it indicates the Respondent's purpose of registering the disputed domain name for financial gain.
The Complainant also asserts that the Respondent has engaged in a pattern of registering domain names that bear a resemblance to famous and/or well-known marks, and has been involved in several UDPR cases where the panel has ordered the transfer or cancellation of the disputed domain name. As an example the Complainant cites Facebook, Inc. v. Andre Schneider / DomCollect AG, WIPO Case No. D2013-1183, involving several domain names including the famous trademark "Facebook". This pattern reinforces the inference of bad faith, according to the Complainant.
In conclusion, the Complainant asserts that it is difficult to believe that the filing of the disputed domain name was a mere coincidence. By using the domain name in the aforementioned unacceptable manner, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is not identical to the Complainant's CLARINS trademark. However, it incorporates the Complainant's trademark in its entirety as its initial and most striking part. The Complainant's trademark is distinctive and has no inherent or generic meaning. The addition of the word 'kosmetik' further evokes the Complainant's trademark, which is registered and used for cosmetic products. The further generic term 'institut' also evokes the Complainant's business, as this is a common term used in relation to premises offering beauty products and services. The addition of these generic terms does not diminish the suggestion of a connection with the Complainant, but rather reinforces it. In any case it has been regularly decided by panels that the inclusion of a distinctive trademark in its entirety in a disputed domain name requires a finding of confusingly similarity. Nothing that has been added by the Respondent detracts from such a finding in this case.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant's CLARINS trademark.
B. Rights or Legitimate Interests
The Complainant confirms that it has not authorized or licensed the Respondent to use its CLARINS trademark in any way, including its incorporation in a domain name for registration. The Respondent is not known by the term 'Clarins' and does not carry on any legitimate business under that name. Rather, on the material before the Panel it appears that the Respondent has sought to make a financial gain from click-through licenses, including by way of hyperlinks directed at rivals of the Complainant, and by offering the disputed domain name for sale on the website to which it resolves. It is apparent that by its actions the Respondent seeks to benefit from the confusing suggestion to consumers, that there is a legitimate connection between the Complainant and the disputed domain name. Such actions are not apt to vest any rights or legitimate interests in the Respondent, quite the contrary. The Respondent has also not filed any material to the contrary.
Therefore, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant's trademark CLARINS has an extensive reputation in a number of jurisdictions in relation to cosmetics and beauty products and services. The trademark itself is distinctive and has no relevant inherent meaning or significance. It is inconceivable that the Respondent was unaware of the Complainant's trademark and its attendant goodwill when the disputed domain name was registered. Further, using a domain name incorporating a well reputed trademark to which the registrant has no rights, for the purpose of establishing a website on which click-through licenses can be generated, supports a finding of bad faith. It relies on the false suggestion to Internet users that the domain name refers to a genuine website operated by the Complainant. The fact that the Respondent offers the disputed domain name, incorporating the Complainant's distinctive and well established trademark, for sale is further supportive of a conclusion of bad faith registration.
Therefore, the Panel holds that the disputed domain name was registered and used in bad faith.
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 <clarins-kosmetikinstitut.com> be transferred to the Complainant.
WiIliam A. Van Caenegem
Date: June 9, 2014