WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Clarins v. Local Produce Australia Pty. Ltd.
Case No. DAU2015-0036
1. The Parties
The Complainant is Clarins of Neuilly Sur Seine, France, represented by Tmark Conseils, France.
The Respondent is Local Produce Australia Pty. Ltd. of Healesville, Victoria, Australia.
2. The Domain Name and Registrar
The disputed domain name <clarins.com.au> is registered with Netfleet.com.au (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 14, 2015. On October 14, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 27, 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 .au Dispute Resolution Policy (the "Policy" or ".auDRP"), the Rules for .au Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .au 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 October 30, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 20, 2015.
The Center appointed Andrew F. Christie as the sole panelist in this matter on November 27, 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 one of the major enterprises in the field of cosmetics, make-up and perfumery goods. It has been doing business in France for more than 50 years, and is well-known worldwide. The Complainant owns many trademark registrations around the world for the trademark CLARINS. These trademark registrations include Australian trademark registration number 272254, registered September 13, 1976, for the trademark CLARINS in class 3 in respect of cosmetics. In addition, the name "Clarins" constitutes the registered company name of the Complainant. The Complainant has been the registrant of the domain name <clarins.com> since March 16, 1997.
The disputed domain name was registered on July 21, 2013. It currently resolves to a website seemingly operated by "NetAlliance Pty Ltd", at which the disputed domain name is stated to be a "Premium domain name up for sale. Be quick to grab it.", with a "Buy It Now" price of AUD 799.
5. Parties' Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights because, apart from the generic extension ".com" and the ".au" country code extension, the disputed domain name is identical to the Complainant's CLARINS trademark, and to its company name "Clarins".
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) it 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; (ii) it has never been commonly known by the disputed domain name; (iii) it is offering the disputed domain name for sale as a "premium" domain name and therefore is neither making a non-commercial or fair use of the disputed domain name, nor using the disputed domain name in connection with an offering of goods and services; and (iv) it clearly misleads consumers and diverts them from the real and official website of the Complainant at "www.clarins.com", in order to create a commercial gain for itself by selling the disputed domain name.
The Complainant contends that the disputed domain name was registered or is subsequently being used in bad faith because: (i) the Complainant was extensively using its trademark CLARINS worldwide, including in Australia, well before the registration of the disputed domain name; (ii) the disputed domain name is for sale; (iii) the Registrant contact, Mr. Gary Dean, has already been involved in a similar case under the Uniform Domain Name Dispute Resolution Policy ("UDRP") with the Complainant concerning the same CLARINS trademark in relation to the domain name <clarinsaustralia.com>, which was ordered by a UDRP panel to be transferred to the Complainant; (iv) the Respondent owns almost 700 domain names and seems to be a professional of the domain name sector who is well aware of what he is doing and from whom one would expect a higher standard of carefulness, notably by ascertaining whether or not the disputed domain name was infringing someone else's trademark; (v) the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to another person, for valuable consideration in excess of the Respondent's out-of-pocket costs; (vi) the registration of the disputed domain name consisting solely of the Complainant's trademark or name has the effect of preventing the Complainant from reflecting its mark or name in that domain name, and of disrupting the business of the Complainant, so long as the Complainant is actively involved in business in Australia, as this Complainant is.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
When the country code Top-Level Domain ("ccTLD") identifier ".au" and the second-level extension ".com" are ignored, the disputed domain name consists of the Complainant's CLARINS trademark. Accordingly, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its CLARINS trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name was used to resolve to a website at which it was offered for sale for AUD 799. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate non-commercial or fair use. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered or Subsequently Used in Bad Faith
The disputed domain name was registered many years after the Complainant first registered its CLARINS trademark. The evidence on the record provided by the Complainant with respect to the use of its trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the disputed domain name was registered, the Respondent knew of the Complainant's trademark and knew that it had no rights or legitimate interests in the disputed domain name. Furthermore, the evidence on the record provided by the Complainant with respect to the Respondent's use of the disputed domain name indicates that the Respondent has used the disputed domain name solely for the purpose of attempting to sell it for an amount in excess of the Respondent's out‑of-pocket costs directly related to the disputed domain name. For all these reasons, the Panel is satisfied that the disputed domain name has been registered and is being used in bad faith.
D. Complainant's Eligibility
The Complainant has requested transfer of the disputed domain name. Given that the Complainant owns an Australian registered trademark that is identical to the disputed domain name, the Complainant appears to satisfy the eligibility requirements for registration of the disputed domain name.
For all 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.com.au> be transferred to the Complainant.
Andrew F. Christie
Date: December 10, 2015