WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
L'Oréal v. Andrey A
Case No. D2018-1100
1. The Parties
The Complainant is L'Oréal of Paris, France, represented by Dreyfus & Associés, France (hereinafter "Complainant").
The Respondent is Andrey A of Moscow, Russian Federation (hereinafter "Respondent).
2. The Domain Name and Registrar
The disputed domain name <clarisonic.store> is registered with Hostinger, UAB (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 16, 2018. On May 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 17, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 "Uniform 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 Respondent of the Complaint, and the proceedings commenced on May 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 7, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 8, 2018.
The Center appointed M. Scott Donahey as the sole panelist in this matter on June 12, 2018. 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.
The Complaint was filed in English.
Paragraph11(a) of the Rules provides that "(u)nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding." The Registrar in its verification response of May 17, 2018, confirmed that English was the language of the Registration Agreement for the disputed domain name. Accordingly, the language of the proceedings is English.
4. Factual Background
Complainant was created in 1909 by a French chemist and is now one of the largest providers of cosmetic products in the world. Complainant has a presence in more than 140 countries and markets more than 30 brands of beauty products, including under the brand Clarisonic.
Clarisonic was founded in Seattle, Washington, United States of America and in 2004 created the first sonic cleansing device. Presently, Clarisonic has sold over 15 million of its patented sonic cleansing devices worldwide and is the top seller of beauty cleansing devices. Complaint, Annex 4. Clarisonic devices are distributed through dermatologists, cosmetic surgeons, spas, prestige retailers, Amazon, and online at "www.clarisonic.com". Id. Complainant obtained an international trademark on the mark CLARISONIC on February 15, 2013.
Respondent registered the disputed domain name on February 26, 2018. Complaint, Annex 1. The disputed domain name resolves to a website on which Complainant's CLARISONIC trademark is displayed, and on which Respondent purports to offer Complainant's products for sale. The language on the website is Russian. Complaint, Annex 1. The website has an email server embedded.
5. Parties' Contentions
Complainant contends that the disputed domain name is identical to its registered trademark in that it consists of Complainant's registered mark together with the generic Top-Level Domain ("gTLD") ".store". Complainant argues that Respondent has no rights or legitimate interests in respect of the disputed domain name in that Complainant registered its trademark more than three years before Respondent's registration of the disputed domain name and in that Complainant has never authorized the use of its mark by Respondent. Respondent has registered and is using the disputed domain name in bad faith in that Complainant's trademark is a fanciful term, Complainant's trademark was registered more than three years prior to Respondent's registration of the disputed domain name, and Respondent is using the disputed domain name to confuse Internet users into believing that it is authorized to market Complainant's goods online and that it is Complainant's online dealer for users who are fluent in the Russian language.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:
"A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the 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. Identical or Confusingly Similar
The disputed domain name consists of Complainant's registered international mark and the gTLD suffix ".store". Previous UDRP panels have long held that in such a situation a disputed domain name is identical to the trademark. The Panel finds that the disputed domain name is identical to Complainant's mark.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent is not commonly known by the disputed domain name, and is not using the disputed domain name for any legitimate noncommercial or fair use. As noted below, Respondent's use of the disputed domain name in connection with a website that purports to be operated by or associated with Complainant is not a bona fide use of the disputed domain name. Respondent has failed to assert any such rights or legitimate interests. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel finds that Respondent registered the disputed domain name in order to take commercial advantage of the goodwill attached to Complainant's trademark by creating confusion amongst Internet users as to the source of the website at the disputed domain name. Respondent is using the disputed domain name to resolve to a website on which Complainant's trademark is displayed and on which pictures of products identical to those marketed by Complainant under its trademark are displayed and offered for sale. Moreover, the very use of the gTLD ".store" suggests to the Internet user that Respondent is authorized to market online the goods identified and displayed on the website to which the disputed domain name resolves. There is nothing on the website at the disputed domain name in the form of a disclaimer to indicate that Respondent is not an authorized reseller of Complainant's products. On the contrary, the website gives the misleading impression of being operated by Complainant, or by an authorized affiliate. Accordingly, the Panel finds that the disputed domain name has been registered and is being 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.store>, be transferred to Complainant.
M. Scott Donahey
Date: June 26, 2018