WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Clarins v. Tarkan Guler
Case No. DCO2014-0035
1. The Parties
Complainant is Clarins of Neuilly Sur Seine, France, represented by Tmark Conseils, France.
Respondent is Tarkan Guler of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <clarins.co> 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 November 24, 2014. On November 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 24, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On November 26, 2014 and on December 1, 2104, the Respondent sent informal email communications to the Center and to the Complainant.
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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2014. The Response was filed with the Center on December 22, 2014.
The Center appointed Stephanie Hartung as the sole panelist in this matter on January 12, 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
Complainant is a company with legal domicile in France and one of the major actors in the field of cosmetics, makeup and perfumery goods. Complainant has been doing business in France for more than 50 years and is well established world-wide.
Complainant has provided evidence that it is the owner of a number of trademarks relating to the term "Clarins", e.g.:
- Word Mark CLARINS, French Trademark Office (INPI), Registration No. 1637194, Registration Date: June 14, 1991, Status: Active;
- Word Mark CLARINS, Office for Harmonization in the Internal Market (OHIM), Registration No. 005394283, Registration Date: October 5, 2010, Status: Active;
- Word Mark CLARINS, United States Patent and Trademark Office (USPTO), Registration No. 4061968, Registration Date: November 29, 2011, Status: Active;
- Word Mark CLARINS, Turkish Patent Institute (TPI), Registration No. 78288, Registration Date: December 31, 1993, Status: Active.
Complainant, moreover, has also registered since 1999 the domain name <clarins.com>.
The disputed domain name <clarins.co> was registered on October 28, 2014. It redirects to a website at "www.clarins.co" which is a typical pay-per-click (PPC) website provided for by the Registrar where the disputed domain name is also offered for sale.
Complainant requests that the disputed domain name be transferred to Complainant.
5. Parties' Contentions
Complainant suggests that the disputed domain name is at least confusingly similar to Complainant's CLARINS trademark since, apart from the ".co" country code extension, which is inherent to the operation of the domain name system, and which can also be perceived as an abbreviation of "corporation" or "company", the disputed domain name is identical to Complainant's CLARINS trademarks.
Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Respondent is not affiliated in any manner to Complainant and has never been authorized to use or register in any way the name "Clarins", including as a domain name, (2) Respondent is not making a noncommercial or fair use of the disputed domain name since it is not used in relation with a real proper website but rather to show sponsored links which even enable Internet users to browse for websites offering goods of Complainant's direct competitors and (3) Respondent clearly misleads consumers and diverts them from the real and official Complainant's website at "www.clarins.com" in order to create a commercial gain for himself.
Finally, Complainant contends that the disputed domain name was registered and is being used in bad faith by Respondent since (1) Complainant was already extensively using its well-known CLARINS trademark before the disputed domain name was created and (2) Respondent is exploiting Complainant's CLARINS trademark in order to gain click-through-commissions from diverted Internet users, thereby offering sponsored links under the disputed domain name to the goods of Complainant's direct competitors.
Respondent does not deny that the disputed domain name is similar to Complainant's CLARINS trademark, however points to the fact that he is in a different business, namely in the area of programming.
Moreover, Respondent argues that he himself never used the disputed domain name for advertisement, but that the website to which the disputed domain name redirects was set up by the Registrar alone.
Respondent also points to the fact that Complainant could have bought the disputed domain name before Respondent if it was so important, but does not explain as to why he himself bought the disputed domain name except that he is doing business under a very new company, working in the programming and IT area with the main interest being related to server, storage and network solutions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name is identical to the CLARINS trademark in which Complainant has shown to have rights.
It has been held in numerous UDRP decisions and has meanwhile become a consensus view among panelists (see WIPO Overview of Panel Views on Selected UDRP-Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2) that the applicable Top-Level suffix in the disputed domain name (e.g., in this case ".co") would usually be disregarded for purposes of the threshold test under the first element of the UDRP.
Therefore, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel is further convinced that Respondent apparently has neither made use or demonstrable preparations of use of the disputed domain name in connection with a bona fide offering of goods or services, nor is Respondent commonly known by the disputed domain name, nor can it be found that Respondent makes a legitimate, noncommercial or fair use thereof without intent for commercial gain.
Complainant has set up a coherent and traceable case scenario according to which Respondent has used the disputed domain name in order to generate pay-per-click-commissions from those diverted Internet consumers who were looking to find Complainant's original website at "www.clarins.com", but finally ended up with Respondent's almost identical website at "www.clarins.co". It is a consensus view among UDRP panelists that using a domain name to redirect to a PPC website may be permissible in some circumstances, but usually would not of itself confer rights or legitimate interests arising from a bona fide offering of goods or services (see WIPO Overview 2.0, paragraph 2.6).
The Panel has well noted Respondent's line of argumentation that he should not be held liable for the PPC links on the website apparently set up by the Registrar. Still, Respondent has not offered any suggestion whatsoever as to why he should be entitled to using Complainant's well-known CLARINS trademark as a domain name under the circumstances provided for by paragraph 4(c)(i) through (iii) of the Policy (e.g. because "Clarins" has any kind of meaning to Respondent other than representing Complainant's famous trademark). The mere fact that Respondent apparently is active in the IT area, and not on the cosmetics market, is certainly not against the finding of a lack of rights or legitimate interests of Respondent in the disputed domain name, since this fact alone again does not provide for any reasonable explanation as to why Respondent would need to rely on the term "Clarins" for any (business) purpose.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and thus the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
The Panel takes the view that the redirection of the disputed domain name, which is identical with Complainant's CLARINS trademark, to a standardized PPC parking page in order to generate "pay-per-click" commissions without Complainant's permission to do so is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website, by creating a likelihood of confusion with Complainant's CLARINS trademark as to the source, sponsorship, affiliation or endorsement of Respondent's website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Again, the Panel concludes that Respondent has nothing brought forward that would reasonably explain as to why he registered the disputed domain name, except that he points to the fact of being a very new company, working in the programming and IT area with the main interest being related to server, storage and network solutions. Against this background, the Panel in fact is convinced that the disputed domain name was registered and is being used by Respondent in full knowledge of Complainant's well-known CLARINS trademark and that Respondent wishes to benefit from the identity of the disputed domain name therewith. Even if Respondent did not expressly instruct the Registrar to set up a respective PPC website under the disputed domain name, Respondent still must accept the consequences of the actions of his deliberately chosen Registrar who at least is financially benefiting from the sponsored links on Respondent's website (see, e.g.: Get Away Today.Com Inc. v. Warren Gilbert, WIPO Case No. DCO2010-0021). The fact that the disputed domain name was locked on November 24, 2014 as a consequence of Complainant's filing of this UDRP Complaint, would not prevent Respondent from setting up a website with any kind of content other than a PPC website or even from instructing the Registrar to set the PPC sponsored links aside.
Therefore, the Panel finds that also the third element under the Policy set forth by paragraph 4(a)(iii) is fulfilled and, thus, that Complainant has satisfied all of the three requirements of paragraph 4(a) under the Policy.
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.co> be transferred to Complainant.
Date: January 26, 2015