WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CLARINS v. Alexandr Wlyapik
Case No. D2021-0005
1. The Parties
The Complainant is CLARINS, France, represented by Tmark Conseils, France.
The Respondent is Alexandr Wlyapik, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <clarins.uno> is registered with Hostinger, UAB (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2021. On January 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 5, 2021, 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 January 13, 2021, 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 amendment to the Complaint on January 14, 2021.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 10, 2021. The Respondent did not submit a formal response. Accordingly, the Center notified the parties of Commencement of Panel Appointment on February 12, 2021.
The Center appointed Mihaela Maravela as the sole panelist in this matter on February 25, 2021. 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 one of the major actors in the field of cosmetics and make-up goods, it has been doing business in France for more than 50 years and it is also well established worldwide.
The Complainant is the exclusive owner of a number of registered trademarks consisting of the word “clarins”, including:
- United Kingdom trademark registration No. 997617 for CLARINS (word), filed on August 29, 1972 and registered for goods in international class 3;
- French trademark registration No. 1637194 for CLARINS (word), filed on January 7, 1991, and registered for goods and services in, inter alia, classes 3 and 44; and
- European Union trademark registration No. 005394283 for CLARINS (word), filed on October 17, 2006 and registered for goods and services in, inter alia, classes 3 and 44.
The Complainant is also the owner of the domain names <clarins.com> registered on March 16, 1997 and <clarins.co.uk> registered on January 22, 1998. The name CLARINS is also the registered name of the Complainant.
The disputed domain name was registered on December 6, 2020. The disputed domain name directs to an inactive website.
5. Parties’ Contentions
The Complainant argues that the disputed domain name is identical to the Complainant’s trademarks CLARINS, apart from the “.uno” extension, which is inherent to the operation of the domain name system.
With regard to the second element, the Complainant argues it has never licensed or otherwise authorized in any way the Respondent to use the CLARINS trademark as a domain name or for any other purpose. Moreover, the Respondent performs no genuine activity under the disputed domain name as it is not redirecting toward any active website.
In what concerns the third element, the Complainant argues that its trademark is well-known worldwide and the Respondent was aware of the Complainant’s prior rights and use and this was the only reason for which the Respondent registered the disputed domain name. In addition, the Complainant contends that an email server has been apparently configurated on the disputed domain name which may constitute a risk that the Respondent engages in a phishing scheme.
The Respondent did not reply to the Complainant’s contentions. However, in a number of email communications of January 21 and 22, 2021, the Respondent indicated that he is a student and his email was hacked and that he did not register the disputed domain name. The Respondent also indicated that he has not used the disputed domain name and asked for it to be deleted. In subsequent email communications of January 22, 2021, the Respondent indicated that his previous communications were in fact a joke, and asked for the case to be closed, indicating also that the disputed domain name is not active.
Further to the Respondent’s communication above, the Center sent a possible settlement email to the Parties. However, the Complainant was not willing to explore this option.
6. Discussion and Findings
Notwithstanding the fact that no Response has been filed, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.
“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 15(a) of the Rules.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:
(i) that the disputed domain name 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 disputed domain name; and
(iii) that the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.
Given the evidence put forward by the Complainant, the Panel is satisfied that the Complainant has proved its rights over the CLARINS trademark.
As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name with the trademarks in which the Complainant holds rights. According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “this test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”.
Also, according to section 1.7 of the WIPO Overview 3.0, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
Here the disputed domain name consists of the Complainant’s CLARINS trademark. It is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.uno”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark. See section 1.11 of the WIPO Overview 3.0.
This Panel concludes that the disputed domain name is identical to the Complainant’s trademark and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] 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.”
In the present case, the Complainant has established a prima facie case that it holds rights over the trademark CLARINS and claims that the Respondent has no legitimate interests or rights to acquire and use the disputed domain name.
There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services or that the Respondent has been commonly known by the disputed domain name.
By not submitting a formal Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. See for a similar finding Cash Converters Pty Ltd v. Mirriam Musonda-salati, WIPO Case No. D2014-1839. In its informal communication of January 21 and 22, 2021, the Respondent provided no explanation or evidence to demonstrate preparations for a bona fide offering of goods or services or other circumstances that could rebut the prima facie case made by the Complainant.
With the evidence on file, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the requirement of paragraph 4(a)(ii) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
To fulfill the third requirement of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.
According to the unrebutted assertions of the Complainant, its CLARINS trademark is widely used in commerce well before the registration of the disputed domain name in December 2020. The disputed domain name is identical with the Complainant’s trademark apart from the relevant gTLD. Under these circumstances, it is most likely that the Respondent was aware of the Complainant’s trademark at the registration date of the disputed domain name.
The Respondent provided no explanations for why he registered the disputed domain name.
Section 3.3 of the WIPO Overview 3.0 describes the circumstances under which the passive holding of a domain will be considered to be a bad faith registration: “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
The Panel finds that passive holding of the disputed domain name does not in the circumstances of this case prevent a finding of bad faith. There is no evidence in the record of a legitimate use of the disputed domain name.
The Complainant’s trademark CLARINS has been extensively used by the Complainant in various countries and had significant goodwill and reputation at the registration of the disputed domain name (see Clarins v. rene yomgne, WIPO Case No. D2019-2631). The Respondent has registered the disputed domain name that is identical to the Complainant’s well-known trademark. UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.
Moreover, the Respondent has not formally participated in these proceedings and has failed to rebut the Complainant’s contentions (Awesome Kids LLC and/or Awesome Kids LLC. v. Selavy Communications, WIPO Case No. D2001-0210, Accenture Global Services Limited v. WhoIs Privacy Protection Service, Inc./ ROBERT GREEN/ GOOGLE TEAM, WIPO Case No. D2013-2100) and to provide any evidence of actual or contemplated good-faith use.
In addition, the Respondent apparently provided false contact details at the registration of the disputed domain name.
Based on the evidence and circumstances of this case, the Panel concludes 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 <clarins.uno> be transferred to the Complainant.
Date: March 11, 2021