WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Clarins v. Bob Pham / Domain Admin, Privacy Protection Services Inc d/b/a Privacyprotect.org
Case No. D2014-0823
1. The Parties
The Complainant is Clarins of Neuilly Sur Seine, France, represented by Tmark Conseils, France.
The Respondent is Bob Pham of Hanoi, Ha Noi, Vietnam / Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, Nobby Beach, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <ventepriveeclarins.com> is registered with Media Elite Holdings Limited (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 19, 2014. On May 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 2014, the Registrar transmitted by email to the Center its verification 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 May 21, 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 May 22, 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 May 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 16, 2014.
The Center appointed Cherise Valles as the sole panelist in this matter on June 24, 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.
The language of the Registration Agreement, a copy of which is provided as Annex 3 to the Complaint, is English. Therefore, the language of proceedings is English.
4. Factual Background
The Complainant is one of the major actors in the field of cosmetics and make-up goods. It has been doing business in France for more than 50 years where it is well-known, and is also well-established worldwide. The Complainant is the owner of multiple trademark and design registrations throughout the world, including in Australia and Viet Nam, for the mark CLARINS. These include the following:
-French trademark registration No. 1637194 for CLARINS, registered on January 7, 1991, in classes 03 and 44;
-Community trademark registration No. 005394283 for CLARINS, registered on October 10, 2006, in classes 03 and 44;
-Canadian trademark registration No. TMA645123 for CLARINS, registered on June 3, 2004, in class 03;
-U.S trademark registration No. 935002 for CLARINS, in the name of the Complaint's subsidiary Clarins Groupe SARL, registered on June 2, 1970, in class 03;
-American trademark registration No. 1574179 for CLARINS, in the name of the Complaint's subsidiary Clarins Groupe SARL, registered on June 2, 1970, in class 03;
-Chinese trademark registration No. 796200 for CLARINS, registered on February 1, 1994, in class 03
-U.S trademark registration No. 272254 for CLARINS, registered on September 13, 1973, in class 03
-International trademark registration No. 398589 for CLARINS, registered on April 27, 1973, in class 03 and having effect in many countries including in Viet Nam.
The disputed domain name <ventepriveeclarins.com> was registered on April 5, 2014.
5. Parties' Contentions
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:
The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights:
- The disputed domain name is confusingly similar or identical to the Complainant's registered trademark, CLARINS, in light of the fact that it wholly incorporates the Complainant's mark.
The Respondent lacks rights or legitimate interests in the disputed domain name:
- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.
The disputed domain name has been registered and is being used in bad faith:
- The Complainant asserts that the disputed domain name was registered and is used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:
-the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights;
-the respondent has no rights or legitimate interests in respect of the disputed domain name; and
-the disputed domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file a response in these proceedings and is therefore in default and the Panel may draw appropriate inferences from the available evidence submitted by the Complainant.
A. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant's trademark.
The Complainant is the sole and exclusive owner of the CLARINS mark. The Complainant has submitted evidence in Annex 5 to the Complaint demonstrating that it is the owner of multiple trademark and design registrations in Australia and Viet Nam, as well as globally, for the mark CLARINS, as indicated in Section 4 above. Moreover, the name "Clarins" constitutes the registered company name of the Complainant, and the domain name <clarins.com> registered since March 16, 1997, is being used internationally.
The Panel finds that the Complainant's marks are distinctive. The Panel notes that the disputed domain name entirely incorporates the Complainant's mark CLARINS. Numerous earlier UDRP decisions have held that when a domain name wholly incorporates a complainant's registered trademark, it is typically sufficient to establish confusing similarity for purpose of the Policy. See, among others, Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
Apart from the words "vente privee", which mean "private sale" and which are purely descriptive, and the ".com" generic extension, which is inherent to the operation of the domain name system, the disputed domain name <ventepriveeclarins.com> is identical to the above-cited trademarks, CLARINS.
In light of the foregoing, the Panel finds that the disputed domain name <ventepriveeclarins.com> is identical or confusingly similar to the Complainant's registered mark and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production of evidence shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates three nonexclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name: "Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
The Complainant submits that the Respondent is not in any way associated with the Complainant and has never sought nor received authorization or a license to use the Complainant's distinctive CLARINS mark in any way or manner, including as a domain name. The Respondent has not demonstrated that it has ever made any legitimate offering of goods or services under the Complainant's CLARINS mark. The Respondent simply utilizes a domain name that is very similar to the Complainant's mark, with the clear intent to confuse Internet users and improperly redirect consumer traffic. See, e.g., Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge, WIPO Case No. D2009-1017.
Furthermore, the Respondent is not making a noncommercial or a fair use of the disputed domain name, since it is not used in relation with a real website. The Respondent uses the disputed domain name to provide Internet users to browse through sponsored links in English and French languages. These sponsored links relate to the Complainant's field of activity (cosmetics and make-up products). In one instance, clicking on a sponsored link directs the user to the website of ÜNT company, one of the Complainant's direct competitors. The website and links are reproduced in Annex 7 of the Complaint.
The Respondent clearly misleads the consumers and diverts them from the official website "www.clarins.com" of the Complainant in order to create a commercial gain for the Respondent. Such use, which relies on exploiting user confusion, cannot and does not constitute bona fide commercial use, sufficient to legitimize any rights and interests the Respondent might have in the contested domain name.
In the light of the foregoing, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name <ventepriveeclarins.com> and that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on its website or location.
It appears that the Respondent is based in Viet Nam. The Complainant's trademarks are well known in Viet Nam and in many other countries in the world, as indicated in Section 4 above. In addition, the Complainant has a long-standing worldwide operating website at "www.clarins.com" (details of which can be found in Annexes 4 and 6 to the Complaint). The Respondent must therefore have been aware of the Complainant's rights in the CLARINS mark.
The Complainant further submits the registration and use of a domain name to re-direct Internet users to websites of competing organizations constitute bad faith registration and use under the Policy. Where a respondent is found to be diverting users to its website (and/or the websites of associated third parties) to generate traffic and sales commissions for its own commercial benefit by creating a likelihood of confusion with a complainant's mark, such conduct is uniformly recognized by UDRP panels as constituting bad faith under the Policy. See Edmunds.com v. Ultimate Search, Inc., WIPO Case No. D2001-1319 ("Registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy").
The Respondent appears to have utilized a WhoIs protection service for the registration. It is clear to the Panel that the Respondent has intentionally hidden its true identity and contact information. Per The Saul Zaentz Company d/b/a Tolkein Enterprises v. Eurobox Ltd. / "The Saul Zaentz Company", WIPO Case No. D2008-0156, "the use of a proxy service would more usually (although not necessarily always) be indicative that the respondent is seeking to hide its activity from scrutiny in proceedings under the Policy. The natural inference from this is a negative one – that the respondent has "something to hide". In this case, the Panel draws a negative inference from the Respondent's use of the privacy registration service.
Finally, it is worth noticing that the Respondent has already been involved in a UDRP case where the panel ordered the transfer of the disputed domain name (see in AlliedBarton security LLC v. Privacyprotect.org, Domain Admin / Bob Pham, WIPO Case No. D2013-2109, which can be found in Annex 8 to the Complaint). This suggests the Respondent did not register the disputed domain name by coincidence, but that he has intentionally attempted to attract Internet users to the Respondent website for commercial gain by creating a likelihood of confusion with the Complaint's mark.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name 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 disputed domain name, <ventepriveeclarins.com> be transferred to the Complainant.
Date: July 7, 2014