WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CLARINS v. Jayson Jones
Case No. D2014-1138
1. The Parties
The Complainant is CLARINS of Neuilly Sur Seine, France, represented by Tmark Conseils, France.
The Respondent is Jayson Jones of Conwy, United Kingdom of Great Britain and Northern Ireland, self-represented.
2. The Domain Name and Registrar
The disputed domain name <clarins.center> (the "Domain Name") is registered with Crazy Domains FZ-LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 1, 2014. On July 2, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 7, 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 July 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2014. The Response was filed with the Center on July 29, 2014.
The Center appointed Nicholas Smith as the sole panelist in this matter on August 5, 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 a cosmetics company based in France, selling cosmetics, makeup and perfumery goods. It has been trading in its industry for over 50 years. It owns the domain name <clarins.com> which it first registered in 1997 and operates a UK website at "www.clarins.co.uk". In 2010 the Complainant had annual revenue of 178 million EUR and distributed its products in more than 150 countries.
The Complainant has held trade mark registrations for CLARINS (the "CLARINS Mark") since at least 1972, when it filed for the registration of the CLARINS Mark in the UK, covering class 3 goods.
The Domain Name <clarins.center> was created on April 3, 2014. The Domain Name is currently inactive, however prior to the first contact between the parties, the Domain Name resolved to a website ("Respondent's Website") that comprised of the words "For Sale" in large font, and in smaller font "The Domain is for sale. Please contact domain administrator using the following email for more details […]"
5. Parties' Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant's CLARINS Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the CLARINS Mark having owned registrations for the CLARINS Mark in France, the UK, Europe and in United States of America. The Domain Name consists of the CLARINS Mark and the generic extension ".center". According to the Complainant, the ".center" generic extension will be perceived as referring to a place, such as a beauty institute, dedicated to CLARINS goods and services. Numerous earlier UDRP decisions have held that when a domain name wholly incorporates a Complainant's registered trademark, it is sufficient to establish confusing similarity for purposes of the Policy (for instance, see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615).
The Respondent has no rights or legitimate interests in the Domain Name. The Complainant has never authorized the Respondent to register or use the CLARINS Mark in any manner. Furthermore, the Respondent is not making a non-commercial or a fair use of the Domain Name, since it is not used in relation with a real proper website. In fact the Respondent has simply disregarded the Complainant's prior rights and registered the Domain Name only for the purpose of reselling it. Such use of the Domain Name cannot and does not constitute bona fide commercial use, sufficient to legitimize any rights and legitimate interests the Respondent might have in the Domain Name and therefore Respondent has no rights or legitimate interests in the Domain Name under paragraph 4(c)(ii) of the Policy.
The Domain Name has been registered and is being used in bad faith. The only possible motive held by the Respondent in registering the Domain Name is for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant or to a competitor of that Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name. In the present case, the Respondent's Webpage indicates that the Domain Name is for sale although it has been recently acquired by the Respondent which shows that the latter had primarily the intention to sell it for valuable consideration, and not to use it for a real and proper web site. Furthermore as CLARINS is a well-known mark and not a descriptive or dictionary word it is hard to believe that the registration of the Domain Name was by a mere coincidence.
The Respondent states it owns a business called "Nationwide Driveway" and offers a product called "Resin Bound Aggregate". The Respondent is preparing to launch a new product called "Clear Installations" or "CLARINS" for short.
The Respondent is not a direct or an indirect competitor to the Complainant. It does not offer similar services or products and has no plans to do so in the future. Its logo, font and colouring does not look anything similar to the Complainant and the Respondent has no plans or intensions to ever copy them in any way or to use their reputation or pretend to be them or use their products or any other beauty products. The Respondent's industry is paving and DIY, which could not be more different to the Complainant's Industry.
The Complainant has its domain names and if they wanted the Domain Name they should have purchased it. The Domain Name was available on the open market for some time before the Respondent purchased it. At one point the Respondent changed its mind about the brand of its Resin Bound Aggregate products and put this domain for sale. The Respondent changed its mind shortly after and removed it from sale. This was prior to receiving the Complaint.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant's trade or service mark.
The Complainant is the owner of the CLARINS Mark, having registrations for CLARINS as a trade mark in numerous jurisdictions including the UK, where the Respondent is located. As the generic Top-Level Domain (such as ".center") may be discarded in considering the similarity between a domain name and a mark, the Domain Name is identical to the CLARINS Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates several 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 non-commercial 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 is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the CLARINS Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name nor does it appear that the Respondent is making legitimate non-commercial or fair use of the Domain Name. There is no evidence that the Domain Name, or a name corresponding to the Domain Name is being used in connection with a bona fide offering of goods and services; the Domain Name has at all times been either inactive or resolved to a site indicating that it was "for sale".
The key question in this particular case is whether the Respondent has shown that it has made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods and services. The Respondent asserts that it is operating a business that, among other things, develops products from Resin Bound Aggregate technology and that it plans to develop a new product branded "Clear Installations" or "Clarins" for short and it intends to use the Domain Name for this purpose. It also says that its branding is completely different to the Complainant's.
The Respondent has provided no evidence, in the form of documents, e-mails or otherwise of the following:
a) that it works in a business known as Nationwide Driveway;
b) that it develops products from Resin Bound Aggregate;
c) that it plans to develop a new product from Resin Bound Aggregate;
d) that it plans to name the product "Clear Installations";
e) why it chose to name its product "Clear Installations";
f) that it plans to shorten the name of this product to "Clarins";
g) why it chose to shorten the name of its product to "Clarins", as "Clarins" is not an obvious shortening of the words "clear installations" ("arins" is not an obvious shortening of "installations");
h) that it has made any preparations to use the Domain Name, including engaging a web-design company or designing a web-page; and
i) that it actually did decide to change the branding of the product, put the Domain Name up for sale, and then changed it back prior to any notice of the proceeding.
While the burden of proof under each element of the Policy rests with the Complainant, the Complainant's evidence, and the lack of any use of the Domain Name is sufficient for the established prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. It is then up to the Respondent to make submissions supported by evidence that it has rights or legitimate interests. In this case the Respondent has made submissions that it has made a legitimate interest, but its submissions are entirely unsupported by evidence and rely on the Panel accepting a number of assertions, including that "clarins" is a logical shortening of "Clear Installations" and that the Respondent's decision to put the Domain Name up for sale was unrelated to the reputation of the CLARINS Mark. The Respondent has not shown that it has made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods and services. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b) provides that for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
- circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name' registration to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
- The Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
- The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
- by using the 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 the Respondent's website or location. (Policy, paragraph 4(b))
The Panel finds that the circumstances of the present case indicate that the Respondent registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name's registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name.
The Panel finds on the balance of probabilities that the Respondent, at the time of registration of the Domain Name, knew of the existence of the CLARINS Mark. The Panel, in the absence of any evidence in the Response, does not accept the Respondent's explanation for why it registered the Domain Name. The CLARINS mark is not a descriptive or generic term and the Panel cannot identify any other reason why any entity would register the Domain Name, other than by reason of the reputation of the Complainant's CLARINS Mark.
At some point, either immediately after or shortly after the Domain Name was registered, the Respondent placed an advertisement on the website indicating that the Domain Name was for sale. The presence of an advertisement indicating that the Domain Name was sale within 2 months of the registration of the Domain Name, along with the lack of any evidence supporting any other explanations as to the possible use of the Domain Name leads the Panel to conclude that the Respondent registered the Domain Name for the purpose of selling the Domain Name for an amount in excess of the out-of-pocket costs. Pursuant to 4(b)(i) of the Policy the Respondent has registered and used the Domain Name 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 Domain Name <clarins.center> be transferred to the Complainant.
Date: August 8, 2014