WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
L'Oréal v. Zhao Jiafei
Case No. D2015-1458
1. The Parties
The Complainant is L'Oréal of Paris, France, represented by Studio Barbero, Italy.
The Respondent is Zhao Jiafei of ShuYang, JiangSu, China.
2. The Domain Name and Registrar
The disputed domain name <clarisonic.info> 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 18, 2015. On August 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 18, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 24, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 14, 2015.
The Center appointed Evan D. Brown as the sole panelist in this matter on September 25, 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 following facts, relevant to the Panel's determination, are set forth in the Complaint and are not disputed by the Respondent.
The Complainant is one of the world's largest companies in the field of cosmetics and beauty. Directly or through its subsidiary company Pacific Bioscience Laboratories, the Complainant owns numerous trademark registrations around the world for the mark CLARISONIC, e.g., Community Trademark Reg. No. 5732375 (issued January 20, 2009) and United States Reg. No. 3,087,196 (issued May 2, 2006). The trademark CLARISONIC has been used for the past 15 years in connection with sonic skin care devices and technologies.
According to the WhoIs database, and as confirmed by the Registrar, the Respondent registered the disputed domain name on March 21, 2015 with GoDaddy.com, LLC.
5. Parties' Contentions
Without the Complainant's authorization, the Respondent developed a web page at the disputed domain name containing sponsored links to various commercial websites, including links to websites related to beauty products of the Complainant's competitors. In response to the Complainant's cease-and-desist letter concerning the unauthorized use of the disputed domain name, the Respondent purported to offer the disputed domain name for sale to the Complainant for USD1500, an amount much higher than the mere out-of-pocket costs the Respondent would have incurred in registering the disputed domain name.
The Complainant asserts that the disputed domain name is identical to its CLARISONIC mark in which the Complainant has rights. It further asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name because, among other things, the Respondent is not a licensee, authorized agent of the Complainant, or in any other way authorized to use the Complainant's trademark. Further, the Complainant asserts that the disputed domain name was registered in bad faith because the Complainant's prior, intensive use of the CLARISONIC mark made it inconceivable that the Respondent was not well aware of the Complainant's trademark rights at the time of registration. The Respondent's use of the disputed domain name to establish a website listing sponsored links to competitors, and its offer to sell the disputed domain name at an inflated price, demonstrate bad faith use of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel finds that all three of these elements have been met in this case.
A. Identical or Confusingly Similar
The mere addition of non-significant elements to a domain name comprising a trademark do not sufficiently differentiate the domain name from the registered trademark: "The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark." See Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505. In this case, the disputed domain name contains the Complainant's trademark CLARISONIC in its entirety.
Similarly, the addition of a generic Top-Level Domain ("gTLD") to the disputed domain name typically does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Here, the gTLD ".info" is without legal significance since use of the gTLD is technically required to operate the disputed domain name. The suffix "info" does not sufficiently distinguish the disputed domain name from the Complainant's trademark. See F. Hoffmann-La Roche AG v. Anoymous anonymous, WIPO Case No. D2009-1599.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights because it has shown that it is the owner of multiple valid and subsisting trademark registrations for the mark CLARISONIC, as noted above.
Accordingly, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent. See Canon U.S.A., Inc. v. Miniatures Town, WIPO Case No. D2014-0948, citing WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1 (after the complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to the respondent).
The Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. By failing to respond to the Complaint, the Respondent did not overcome its burden of demonstrating rights or legitimate interests, and no other facts in the record tip the balance in the Respondent's favor.
Paragraph 4(c) of the Policy instructs respondents on a number of ways they could demonstrate rights or legitimate interests ("you" and "your" in the following refers to the particular respondent):
"(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 a 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."
In this case, there are several indicators concerning the Respondent's lack of rights or legitimate interests. The Respondent is not commonly known by the disputed domain name, nor is there any evidence in the record showing the Respondent's use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute. Joining with numerous previous panels, this Panel finds that the use of the disputed domain name to establish a web page with sponsored links to websites for competitive products is not a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use of the disputed domain name.
Accordingly, the Respondent does not have any rights or legitimate interests in regard to the disputed domain name.
C. Registered and Used in Bad Faith
The Policy requires a complainant to establish that the domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent's bad faith use and registration. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent "[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent's] web site or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of [respondent's] web site or location or a product or service on [the respondent's] web site or location."
In this case, the Panel finds that the Respondent registered and is using the domain name in bad faith. Respondent could not have ignored its awareness of the Complainant's trademark rights when it registered the disputed domain name. Further, the Respondent's offer to sell the disputed domain name for an amount in excess of out-of-pocket costs and use of the web site linked to the disputed domain name to list sponsored links to the Complainant's competitors present a classic indicia of bad faith registration and use.
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.info> be transferred to the Complainant.
Evan D. Brown
Date: October 10, 2015