WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Clarins v. Registration Private,Domains By Proxy, LLC / Online Management LTD, Online Resource Management Ltd
Case No. D2014-1485
1. The Parties
The Complainant is Clarins of Neuilly sur Seine, France, represented by Tmark Conseils, France.
The Respondent is Registration Private, Domains By Proxy, LLC of Arizona, United States of America / Online Management LTD, Online Resource Management Ltd of Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name And Registrar
The disputed domain name <myclarins.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2014. On August 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 30, 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 September 1, 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 September 2, 2014.
The Center verified that the Complaint together with 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 September 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 28, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 29, 2014.
The Center appointed Antonio Millé as the sole panelist in this matter on October 2, 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
As per the Complainant’s allegations, Clarins company “is one of the major actors in the field of Cosmetics, make-up and perfumery goods … has been doing business in France for more than 50 years and it is well-known worldwide”.
With the copies annexed to the Complaint, the Complainant proved that it is the owner of CLARINS trademark registrations in France (No. 1637194, filed on January 7, 1991); the European Union (No. 005394283, dated October 10, 2006); the United States of America (No. 4061968, filed on September 29, 2010); Canada (No. TMA645123, filed on June 3, 2004); China (No. 796200, dated February 1, 1994) and Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (No. 997617, filed on August, 29, 1972).
The Complainant also alleges and demonstrates that “the name CLARINS constitutes the registered company name of the Complainant”, and that “the domain name “clarins.com” registered since March 16, 1997, is being used internationally”.
As the Panel verified, the disputed domain name resolves to a webpage displaying sponsored links to commercial websites offering goods identical to those covered by the Complainant’s trademark, some of them marketed by direct competitors of the Complainant. The Panel verified also that this webpage publicized that the disputed domain name is for sale.
Through limited factual research on the Center’s website, the Panel verified that the Respondent appears to have been a respondent in a number of other previous UDRP cases involving well-known trademarks and that in all the cases the transfer of the domain name to the complainant was ordered. All these cases are very recent and one of them involves the same trademark and the same parties (see Clarins v. Online Management / Registration Private, WIPO Case No. D2013-1862).
The disputed domain name <myclarins.com> was registered on July 20, 2014.
5. Parties’ Contentions
The Complainant made the following submissions in the Complaint:
a) The disputed domain name is confusingly similar to the well-known trademark owned by the Complainant, in a way that consumers will be highly likely induced to expect an association between the disputed domain name and CLARINS trademark, confusion that is not reduced by the addition of the word “my”, “which directly refers to the Complainant’s trademark”.
b) The Respondent “is not affiliated in any manner to the Complainant, and has never been authorized to use or register in any way the name “Clarins”, including as a domain name”. “The Respondent is not making a non-commercial or a fair use of the disputed domain name, since it is not used in relation with a real proper website”. “The Respondent clearly misleads the consumers and diverts them from the real and official complainant’s websites … in order to create a commercial gain for himself. 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”.
c) Bad faith registration may be inferred from the registration of a trademark as a domain name which has acquired distinctiveness through long and extensive use by its owner. “The Respondent is exploiting the Complainant’s trademark, in order to gain “click through” commissions from the diversion of Internet users, which is a common example of registration and use in bad faith”. On the web page at the disputed domain name, sponsored links are being displayed and an indication saying that the disputed domain name is for sale, an offer that constitutes another proof of bad faith. The Complainant concluded that “by using the domain name in such unacceptable way, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his webpage”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion And Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant has used and registered its trademark in different countries and for a long period of time, all the trademark registrations predating the date of registration of the disputed domain name.
The relevant part of the disputed domain name wholly incorporates the Complainant’s trademark, and the addition of the word “my” does not make any difference to eliminate the confusing similarity, as per the doctrine consistently held by UDRP panels. In this sense, it is proper to quote the decision in the previous case brought by the same Complainant against the same Respondent on the basis of the same trademark (in connection with the domain name <clubclarinsusa.com>) were the panel said: “the additional elements are, in trademark sense, generic or common” (Clarins v. Online Management / Registration Private, supra).
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s CLARINS trademark and holds that the Complainant fulfills the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, rights or legitimate interests in a domain name may be demonstrated by showing that:
(i) before any notice of the dispute, the respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) the respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain or to misleadingly divert customers or to tarnish the trademark at issue.
In the present case, the Respondent has not answered to the Complaint and therefore, it has not given any basis to a right or legitimate interest in respect of the use of the trademark CLARINS in the disputed domain name. The use of the disputed domain name to convey the consumers to a website with “sponsored links” and the evident possibility of confusion for those consumers has been alleged by the Complainant and supported by convincing evidence.
Furthermore, the Panel has taken into consideration: a) the complete difference between the Respondent’s denomination and the disputed domain name; b) that the Respondent does not appear to be using the disputed domain name in connection with a bona fide offering of goods or services; c) that there is no evidence that the Respondent is commonly known by a denomination similar to the disputed domain name; and d) that all the factual circumstances suggest that the Respondent is making a commercial use of the disputed domain name, with the intent for commercial gain by means of misleadingly diverting consumers.
It is well established that the Complainant must show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, after which the burden of production shifts to the Respondent (see, e.g., Belupo d.d. v. WACHEM d.o.o., , WIPO Case No. D2004-0110). The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent files no response (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005). Previous UDRP panel decisions in cases where no sign of rights or legitimate interests in the domain name was apparent, and the respondent did not make any attempt to rebut the prima facie case made by the complainant, have stated that the panel will decide the dispute on the basis of the complainant’s undisputed contentions of facts. Although the respondent’s default does not automatically result in a decision in favour of the complainant, the panel may draw negative inferences from the same (see Unilever N.V. v. Kentech, WIPO Case No. D2005-1021).
On this basis, the Panel finds that the Respondent failed to produce any evidence to establish rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the second requirement of paragraph 4(a) of the Policy is met.
C. Registered and Used in Bad Faith
The Complainant based the Complaint on this point on the existence of the circumstances set out in paragraph 4(b) of the Policy regarding the registration and use of the disputed domain name in bad faith.
The disputed domain name was registered by the Respondent long after the Complainant’s trademarks were registered in different countries.
The registration and use of a well-known trademark as domain name seems to the Panel a typical expression of the conduct of those that “intentionally attempted to attract, for commercial gain, Internet users to a web site 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 this web site or location or of a product or service on such web site or location” (Policy, paragraph 4(b)(iv)). This conviction is reinforced by the fact alleged by the Complainant, not refuted by the Respondent and verified by the Panel that, Internet users entering the disputed domain name as address in a browser, access a website displaying sponsored links.
In these circumstances, and considering that the Respondent did not provide any legitimate reason that could drive the Respondent into registering and using <myclarins.com>, the Panel cannot find any justification for such registration and use of the disputed domain name, which clearly and univocally evokes the Complainant’s trademark.
The Panel considers that the Respondent is also “engaged in a pattern of conduct” that constitutes “evidence of the registration and use of a domain name in bad faith”.
The Panel confirmed the existence of a number of similar cases in which the Respondent registered different domain names, reflecting prestigious international trademarks of third parties, for the purpose of selling them (see, among others: Comerica Bank v. Online Management / Registration Private, Domains By Proxy, LLC, WIPOCase No. D2014-1018; Investor’s Business Daily and Data Analysis, Inc. v. Registration Private / Domains By Proxy, LLC / Billy Campbell, WIPOCase No. D2014-0901; Avid Dating Life Inc. v. Registration Private, Domains by Proxy, LLC / Online Management, WIPOCase No. D2014-0460; AlliedBarton Security Services LLC v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com; Domain Admin, PrivacyProtect.org / Online Management; ICS INC., WIPOCase No. D2014-0036; Thierry Mugler v. Registration Private, Domains By Proxy, LLC / Online Management; WIPOCase No. D2013-2011).
The Respondent’s offer for sale of the disputed domain name combined with its pattern of illicit behaviour, “so-called cyber-squatting”, is a further indication of registration and use in bad faith (see, e.g, Det Berlingske Officin A/S v. BWI Domain Manager, WIPO Case D2007-1717).
Based on the above, the Panel finds that the Complainant has met the third requirement under paragraph 4(a) 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 <myclarins.com> be transferred to the Complainant.
Date: October 6, 2014