WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Clarins v. Clarinsa
Case No. D2015-1473
1. The Parties
The Complainant is Clarins of Neuilly Sur Seine, France, represented by Tmark Conseils, France.
The Respondent is Clarinsa of Chongqing, China.
2. The Domain Name and Registrar
The disputed domain name <clarinscnmall.com> (the "Domain Name") is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 19, 2015. On August 20, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 21, 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 September 1, 2015. In accordance with the Rules, paragraph 5, the due date for the Response was September 21, 2015. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on September 25, 2015.
The Center appointed Jon Lang as the sole panelist in this matter on October 9, 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 is a company incorporated in France. It is a major player in the field of cosmetics.
Not much is known about the Respondent other than it appears to be based in China and it registered the Domain Name on July 17, 2015.
The Complainant has been doing business in France for more than 50 years and is also well established worldwide. The Complainant owns many trademarks for CLARINS worldwide, including in China, where the Respondent appears to be established (as well as in Hong Kong, China, Macao and the European Union). For instance, it owns Chinese trademark registration n° 796200, dated February 1, 1994, International Registration n° 208808, (designating China) since December 4, 2009, and Hong Kong, China registration n° 19701641AA, dated March 24, 1970. It also owns Community Trademark Registration n° 005394283, dated October 10, 2006.
The name CLARINS has been the registered company name of the Complainant since at least May 30, 1983, and the Complainant's domain name <clarins.com>, registered on March 16, 1997, is being used internationally, including in China and in territories such as Hong Kong, China and Taiwan, Province of China.
5. Parties' Contentions
The Domain Name is confusingly similar to the CLARINS trademark (and also the company name and domain name of the Complainant). The trademark CLARINS is reproduced entirely at the beginning of the Domain Name, the letters "cn" are the usual abbreviation for "China", and "mall" is descriptive of a shopping area enabling users to buy goods. 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 the purposes of the Policy
Rights or legitimate interests
The Respondent has no rights or legitimate interests in the Domain Name. 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 has never been known, commonly or otherwise, by the Domain Name or by the CLARINS trademark or by any name corresponding to it prior to registration of the Domain Name.
The Respondent is not making a noncommercial or a fair use of the Domain Name as it is used in relation to a website which is "completely fake and unauthorized", offering to sell cosmetic goods under the Complainant's trademark.
The Respondent clearly misleads consumers and diverts them from the Complainant's website at "www.clarins.com" (in particular its Chinese version) in order to create a commercial gain for itself. Such use, which relies on exploiting user confusion, cannot and does not constitute bona fide commercial use such as to give rise to any rights or legitimate interests in the Domain Name.
The Domain Name should be considered as having been registered and used in bad faith.
By the time of registration of the Domain Name (on July 17, 2015), the Complainant had been extensively using its trademark CLARINS, it having been used in mainland China since at least since 2001. The official Clarins website has also been active since well before July 17, 2015.
The name "CLARINS" is in Latin characters, not Chinese (the language of the Respondent's website).
The Respondent (which is called "Clarinsa") has tried to imitate the Complainant's name.
These factors render the registration of the Domain Name even more suspicious.
As to bad faith use, the Respondent owns and operates the Domain Name in relation to a website which bears the trademark CLARINS and which offers for sale cosmetic goods bearing the Complainant's trademark.
The Respondent's website is pretending to be a real and official website, even though it is a "fake". This constitutes a gross violation of the Complainant's CLARINS trademarks.
In all the circumstances, the Respondent uses the Domain Name in bad faith, primarily for the purposes of creating a likelihood of confusion with the Complainant's mark.
It is difficult to believe that registration of the Domain Name was a mere coincidence. By using the Domain Name in such an unacceptable way, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.
A. Identical or Confusingly Similar
The Complainant clearly has rights in the CLARINS trademarks.
Ignoring the generic Top-Level Domain ".com" (as the Panel may do for comparison purposes), the Domain Name comprises the Complainant's CLARINS trademark, followed by the letters "cn" and then the generic term "mall". As the CLARINS mark and Domain Name are not identical, the issue of confusing similarity must be considered. Under the UDRP, the test for confusing similarity involves a comparison between the trademark and the domain name to determine the likelihood of Internet user confusion. To satisfy the test, the trademark to which the domain name is said to be confusingly similar, would generally need to be recognizable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent Internet user confusion. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name.
The mark CLARINS is clearly recognizable within the Domain Name. It is a famous mark and the first element of the Domain Name. The only real issue is therefore whether the addition of the letters "cn" and/or the generic term "mall", renders the Domain Name something other than confusingly similar to the Complainant's CLARINS mark. The letters "cn" commonly indicate the country of China. Indeed, "cn" is the country code Top-Level Domain ("ccTLD") for China, the country which appears to be the focus of the website and the domicile of the Respondent. As such, the addition of those letters immediately after the name CLARINS, would certainly not detract from the confusing similarity of a Chinese focused website displaying the CLARINS mark. Similarly, the inclusion of the generic term "mall", being a term usually associated with retail activity, would far from detract from, but would most probably enhance, the confusing similarity of the Domain Name and CLARINS mark.
For these reasons, even if one were to adopt a possibly more stringent test and require, as some UDRP panels have done, a risk that Internet users may actually believe that there is a real connection between the Domain Name and the Complainant and/or its goods and services, the Complainant would satisfy this first element of the three part test. The impression created by the Domain Name may well give rise to the possibility that Internet users would think that the owner of the Domain Name is in fact the owner of the Complainant's CLARINS mark to which it is similar, or that there is some form of association between the Respondent and the Complainant.
The Panel finds that the Domain Name is confusingly similar to the CLARINS mark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to ask whether there would be anything inappropriate in such a finding.
The Complainant has described the Respondent's website as "completely fake and unauthorized". It also states elsewhere that "it is a fake" and is "exploiting user confusion [with the Complainant]" for commercial gain.
Given the unrebutted allegations of the Complainant, the Panel has no hesitation in concluding that the Respondent lacks rights or legitimate interests in the Domain Name.
In the circumstances, the Panel concludes that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
One way a complainant may demonstrate bad faith registration and use is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. These appear to be the circumstances of the present case.
The Respondent was clearly aware of the Complainant's CLARINS mark given the use to which the Domain Name has been put, it has not been authorized to use the CLARINS mark in any way and this Panel has found that it has no independent rights or interests in such mark. The purpose behind the registration appears to be to attract Internet users to the Respondent's website using a confusingly similar domain name in precisely the circumstances envisaged above.
The Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of 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 <clarinscnmall.com> be transferred to the Complainant.
Date: October 20, 2015