WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
L'Oréal SA v. Xigeng Gne
Case No. D2015-0308
1. The Parties
The Complainant is L'Oréal SA of Paris, France, represented by Studio Barbero, Italy.
The Respondent is Xigeng Gne of Xian, China.
2. The Domain Name and Registrar
The disputed domain name <clarisonic-mall.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 February 24, 2015. On February 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 26, 2015, 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 February 26, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 18, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 19, 2015.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on March 30, 2015. 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 either directly or through its subsidiaries owns numerous trademark registrations for the mark CLARISONIC, including Community Trademark No. 5732375, filed on March 5, 2007, and registered on January 20, 2009 in Classes 03, 05, 21, 35 and 34; US trademark registration No. 3087196 filed on May 27, 2004, and registered on May 2, 2006 in Class 21; and Chinese Registration No. 8275826, filed on May 7, 2010, and registered on May 14, 2011, in Class 5.
The disputed domain name was registered on October 6, 2013. The disputed domain name resolves to a website featuring sponsored links.
5. Parties' Contentions
The Complainant asserts that it is the registered owner of the trademark CLARISONIC in a number of jurisdictions, either by itself or its subsidiary Pacific Bioscience Laboratories Inc, which has also granted the Complainant power of attorney to act on its behalf in this matter.
The Complainant also asserts that it is one of the largest cosmetics companies in the world and is also active in the dermatological and pharmaceutical fields. It uses a wide variety of distribution channels for its related products. The Complainant states that it is active in over 130 countries and has more than 25 luxury cosmetics brands in the field of beauty care, including L'OREAL, GARNIER, MAYBELLINE, and KERASTASE. The Complainant asserts that it acquired Pacific Bioscience Laboratories Inc., the market leader in the areas of skin cleansing devices and technology, on December 15, 2011 as well as its trademark CLARISONIC, which had been in use for 10 years, by way of a merger agreement. The Complainant contends that the CLARISONIC trademark soon became one of the leading brands of its luxury product division.
Clarisonic skincare devices are sold through the Complainant's worldwide network consisting of approximately 72,600 employees in 130 countries. The Complainant contends that sales of Clarisonic products amounted to about USD 200 million in 2012, and already amounted to USD 104 million in 2010 prior to when the Complainant acquiring the brand. The Complainant asserts that its Clarisonic devices have won various awards and also benefited from very extensive advertising by way of global media campaigns, including in high profile magazines such as Vanity Fair, Elle, Cosmopolitan, People, and Marie Claire. They have also been heavily promoted on the Internet, and through charitable donations and sponsorships.
The Complainant contends that in light of the above, the CLARISONIC trademark is an "undisputedly famous and well-known trademark worldwide in the field of sonic skin care".
The Complainant also asserts that it has registered numerous domain names such as <clarisonic.com>, <clarisonic.cn>, <clarisonic.fr>, <clarisonic.co.uk>, and <clarisonic.us>.
According to the Complainant, the website to which the disputed domain names resolves redirects to sites where Internet users can find a number of sponsored links to various commercial websites. According to the Complainant, a "sponsored link" by definition generates revenues for the registrar and/or for the domain name holder.
The Internet user is directed to such websites in various ways, where both competing and unrelated products are displayed, as well as Clarisonic trademarks and articles. An "[e]nquire about this domain name" link also redirects to a domain name broker by whom the disputed domain name is offered for sale for USD 799.00.
Through its agent the Complainant established contact with the Respondent seeking an indication of the latter's intentions and offering to have the disputed domain name assigned to it for a sum representing out-of-pocket expenses. However, the Respondent sought USD 1,000.00 in consideration which the Complainant refused to entertain. The Complainant proceeded to issue a cease-and-desist letter, to which the Respondent answered with some, according to the Complainant, incomprehensible indication of a plan related to the disputed domain name and trademark registration in China. In the course of correspondence the Respondent made a renewed offer to assign, this time for USD 500.00. Further correspondence followed with an apparent agreement by the Respondent to transfer the disputed domain name for USD 100.00 which was in fact never implemented, the Respondent indicating that a higher offered was received from another party. In the circumstances the Complainant initiated these proceedings.
The Complainant contends that the disputed domain name is confusingly similar to its CLARISONIC trademark. It contains that mark in its entirety with only the addition of the generic term "mall" and a dash. The term "mall" is, the Complainant asserts, apt to increase the confusion resulting from the similarity between the disputed domain name and the Complainant's trademark, since it recalls the online shopping malls operated by the Complainant. The Complainant cites a number of relevant UDRP panel decisions in its favour.
The Complainant also asserts that the Respondent is not a licensee, an authorized agent or in any way authorized to use the trademark CLARISONIC, nor is he commonly known by the disputed domain name.
Further, according to the Complainant using a disputed domain name for redirection to a website with sponsored links to products of third parties as well as of the Complainant does not amount to a bona fide offering of goods or services or to a legitimate noncommercial or fair use of the disputed domain name without commercial intent. In any case, according to the Complainant the Respondent is gaining click-through commissions from the sponsored links. The Respondent also never provided any evidence of legitimate use or activity concerning the disputed domain name, despite his assertions to that effect. In any case, given the well-known nature of the trademark in question, no right to or legitimate use of the disputed domain name can be envisaged.
Further, given the reputation and goodwill attaching to the trademark CLARISONIC, the Respondent could not, according to the Complainant, have registered the disputed domain name in ignorance of the Complainant's trademark rights. Rather, registration of the disputed domain name was, according to the Complainant, intended to capitalize on the reputation of the CLARISONIC trademark by diverting Internet users to the Respondent's website, where sponsored links are listed. So seeking to generate income amounts to bad faith, according to the Complainant. In light of the correspondence and actions relating to the assignment of the disputed domain name, the Complainant also asserts that paragraph 4(b)(i) of the Policy applies because the Respondent registered the disputed domain name with the purpose of selling it to the legitimate trademark owner for valuable consideration, in excess of out-of-pocket costs.
Finally the Complainant asserts that the Respondent intentionally supplied incorrect contact details, further evincing bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established to the satisfaction of the Panel that it holds rights in the trademark CLARISONIC sufficient for it to act as a complainant in this matter.
The disputed domain name is not identical to the Complainant's trademark CLARISONIC. However, the disputed domain name incorporates that trademark in its entirety, with the addition only of the generic term "mall", a dash, and the generic Top-Level Domain (gTLD) ".com".. UDRP panels have commonly held that the addition of a generic term to a distinctive trademark, such as the Complainant's trademark cited in this matter, does not prevent a finding of confusing similarity. The combination of "clarisonic" and "mall" has no meaning other than a mall or shopping place where Clarisonic branded products are available. As the Complainant submits, the term also evokes online malls such as those the Complainant operates. The Complainant has a considerable presence on the Internet. Therefore the addition of the term "mall" does nothing if not reinforce the suggestion of a legitimate connection between the disputed domain name and the Complainant's CLARISONIC trademark. Such a connection does not in fact exist.
Likewise, the dash and the gTLD ".com" do not sufficiently distinguish the disputed domain name from the Complainant's CLARISONIC trademark.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant's CLARISONIC trademark.
B. Rights or Legitimate Interests
The Respondent has received no authorization from the Complainant to use the distinctive trademark CLARISONIC in any way, including incorporating it in the disputed domain name. The trademark is inherently distinctive and has no generic meaning. The Respondent is not known personally or in a business sense by the disputed domain name or the mark CLARISONIC, and provides no evidence of any rights or legitimate interests in the disputed domain name. The Respondent's contention in correspondence with the Complainant that he intends to make a legitimate use of the disputed domain name or seek a relevant trademark registration in China is not supported by any evidence. Nor did the Respondent choose to make any submission in response to the Complaint, for the benefit of the Panel. The material before the Panel indicates that the Respondent has used the disputed domain name to generate click-through income, deriving financial gain in that manner from the goodwill attaching to the relevant trademark, without having any legitimate basis for doing so. The Respondent's attempts to sell the disputed domain name to the Complainant for a sum exceeding out-of-pocket expenses is also not consistent with rights or legitimate interests vesting in him.
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 material put before the Panel by the Complainant establishes that a considerable reputation vests in its CLARISONIC trademark in numerous jurisdictions. The trademark has been in use for a considerable amount of time and advertising expenditure and product turnover is, according to the Complainant, quite extensive. The CLARISONIC trademark is also inherently distinctive with no generic meaning. There appears to be no reason to choose the terms "clarisonic" and "mall" and incorporate them in a domain name other than to derive some illegitimate advantage from consumer recognition of and goodwill towards the Complainant's trademark. It is inconceivable that the Respondent would have sought to register this combination of terms as a domain name in ignorance of the Complainant's trademarks and its rights and goodwill.
The Respondent has also used the disputed domain name to generate click-through income, as discussed above. Further he has sought to sell it to the legitimate rights holder, the Complainant in this matter. The sums requested far exceed out-of-pocket expenses. The Respondent seems to have reneged on an agreement to assign the disputed domain name for USD 100.00. The conclusion is unavoidable that the Respondent is simply seeking to gain financial advantage from the Complainant's known interest in the relevant trademark, without any legitimate rights or interests to support his approach whatsoever.
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 <clarisonic-mall.com> be transferred to the Complainant.
William A. Van Caenegem
Date: April 12, 2015