WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Clarins v. Margriet Swart
Case No. DNL2020-0053
1. The Parties
Complainant is Clarins, France, represented by Merkenbureau Knijff & Partners B.V., the Netherlands.
Respondent is Margriet Swart, the Netherlands.
2. The Domain Name and Registrar
The disputed domain name <clarins-online.nl> (the “Domain Name”) is registered with SIDN through Nameshield (the “Registrar”).1
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2020. On November 20, 2020, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On November 23, 2020, SIDN transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 1, 2020, providing the registrant and contact information disclosed by SIDN, and requesting Complainant to submit an amendment to the Complaint in this light. Complainant filed amended Complaints on December 3 and 4, 2020. The Center verified that the Complaint together with the Amended Complaints satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 4, 2020. In accordance with the Regulations, article 7.1, the due date for Response was December 24, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 25, 2020.
The Center appointed Remco M.R. van Leeuwen as the panelist in this matter on January 26, 2021. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.
In response to a request by Complainant received by the Center by email on February 19, 2021, the Panel on that date issued Administrative Panel Procedural Order No. 1, suspending the proceedings for thirty days from the date of this Administrative Panel Order (on the basis of article 19.3 of the Regulations) in order to give the Parties the opportunity to agree and implement a settlement. On March 19, 2021, at Complainant’s request received by the Center by email on March 18, 2021, the Panel issued Administrative Panel Procedural Order No. 2, extending the suspension of the proceedings for thirty more days (i.e. through April 20, 2021). Upon expiry of this date, the Center reinstituted the proceedings, as the Parties did not reach a settlement, nor did the Center receive a request to terminate the proceedings.
4. Factual Background
Complainant is a French joint stock company which manufactures and sells well-known luxury skin care, cosmetics, make-up, and perfume. The company was founded in 1954. Complainant’s products are usually sold through high-end department store counters and selected pharmacies.
Complainant is the proprietor of many trademarks, including an European Union Trade Mark registration for the word mark CLARINS, registered on October 5, 2010, with registration number 005394283, for goods and services in classes 3, 5, 10, 16, 21, and 44 (the “Trademark”).
Complainant is also the proprietor of the domain name <clarins.com> which is registered as of March 16, 1997, and has been used internationally by Complainant.
SIDN informed the Center that the Domain Name was first registered on June 24, 2008, and that the date of the current registration is February 4, 2020, by change of registrant. The Domain Name resolves to a parking page.
5. Parties’ Contentions
A. Complainant
Complainant states that it has rights in the Trademark and that the Domain Name is confusingly similar to the Trademark.
Complainant asserts that the Trademark predates Respondent’s registration of the Domain Name, and that while the Domain Name includes the addition of the element “online”, this element is entirely descriptive as it refers to services and goods offered on the Internet. Complainant argues that the Trademark is recognizable within the Domain Name and that the mentioned addition does not prevent a finding of confusing similarity.
Complainant further asserts that there is a considerable risk that Internet users will perceive that the Domain Name is owned by Complainant or that some kind of commercial relationship exists with Complainant.
Complainant argues that Respondent, who is unknown to Complainant, has no rights or legitimate interest in the Domain Name since Complainant never licensed or otherwise authorized Respondent to use the Trademark in any way, nor has Respondent been given permission to use the Trademark in any manner.
Last, Complainant asserts that Respondent registered the Domain Name in bad faith, as Respondent knew of Complainant’s prior rights when Respondent registered the Domain Name, and Respondent is not actively using the Domain Name, which in the circumstances constitutes passive holding of the website in bad faith.
Complainant requests the transfer of the Domain Name.
B. Respondent
The Center has not received a Response.
6. Discussion and Findings
The Panel notes that, in accordance with article 16.4 of the Regulations, the Center has fulfilled its obligation to employ reasonably available means to achieve actual notice of the Complaint to Respondent.
As Respondent has not filed a response, the Panel shall rule on the basis of the Complaint. In accordance with article 10.3 of the Regulations, the Complaint shall in that event be granted, unless the Panel considers it to be without basis in law or fact.
Pursuant to article 2.1 of the Regulations, Complainant’s request to transfer the Domain Name must meet three cumulative conditions:
a. the Domain Name is identical or confusingly similar to:
I. a trademark, or trade name, protected under Dutch law in which Complainant has rights; or
II. a personal name registered in the General Municipal Register (“gemeentelijke basisadministratie”) of a municipality in the Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in the Netherlands under which complainant undertakes public activities on a permanent basis; and
b. Respondent has no rights to or legitimate interests in the Domain Name; and
c. the Domain Name has been registered or is being used in bad faith.
Considering these conditions, the Panel rules as follows.
A. Identical or Confusingly Similar
Complainant has submitted a copy of the registration of the Trademark demonstrating that Complainant is the holder of the Trademark. The Trademark consists of the word mark CLARINS. The Trademark is protected under Dutch law. The unrebutted evidence provided in the Complaint regarding the Trademark constitutes prima facie evidence that Complainant has trademark rights for purposes of the Regulations, and accordingly the Panel will review the Complaint on this basis.
The Panel notes that it is established “.nl” case law that the country code Top-Level Domain “.nl” may be disregarded in assessing confusing similarity between the relevant trademark on the one hand, and the disputed domain name on the other hand (see, e.g., Caterpillar Inc. v. H. van Zuylen Materieel, WIPO Case No. DNL2011-0073; Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).
The Domain Name includes the Trademark in its entirety, with the addition of the suffix “-online”. There is broad consensus that the addition of such a term would not prevent a finding of confusing similarity for purposes of the Regulations (see, e.g., Playboy Enterprises International, Inc. v. Tonya Flynt Foundation, WIPO Case No.. D2001-1002; Sanofi-aventis v. Iqbal Hans, WIPO Case No. D2007-0538, and section 1.8 of WIPO Overview 3.0).2
Consequently, the Panel finds that the Domain Name is confusingly similar to the Trademark for purposes of the Regulations. Therefore, the first requirement of article 2.1(a)(I) of the Regulations is met.
B. Rights or Legitimate Interests
Article 2.1(b) of the Regulations requires Complainant to demonstrate that Respondent has no rights to or legitimate interests in the Domain Name. This condition is met if Complainant makes out a prima facie case that Respondent has no such rights or legitimate interests and if Respondent fails to rebut this with appropriate allegations or evidence demonstrating rights to or legitimate interests in the Domain Name (see, e.g., Technische Unie B.V. and Otra Information Services v. Technology Services Ltd., WIPO Case No. DNL2008-0002).
Complainant alleges that Respondent lacks rights to or legitimate interests in the Domain Name for the reasons set out in section 5.A above.
The Panel finds that Complainant has fulfilled the obligation to establish prima facie that Respondent has no rights to or legitimate interests in the Domain Name. Because of its failure to submit a response, Respondent has not refuted the arguments of Complainant and/or shown rights to or legitimate interests in the Domain Name.
The Panel could not establish any indication that any of the circumstances as described in article 3.1 of the Regulations apply, or that Respondent in any plausible other way has rights to or legitimate interests in the Domain Name.
Consequently, the Panel concludes that Complainant has met the second requirement of article 2.1(b) of the Regulations.
C. Registered or Used in Bad Faith
When Respondent registered the Domain Name, the Trademark had already been registered and was being used by Complainant for its products.
Considering the distinctiveness and reputation of the Trademark and Complainant’s prior rights, the Panel finds that Respondent knew or should have known of Complainant’s rights at the time of registration of the Domain Name. This is also suggested by the fact that Respondent registered a domain name which includes Complainant’s Trademark in its entirety.
According to Complainant, at the time the Complaint was filed, the Domain Name linked to a parking page. The Panel also established this at the time of drafting this decision. It is well-established that non-use of a domain name does not prevent a finding of bad faith use under the doctrine of passive holding (see section 3.3 of WIPO Overview 3.0). Here, the circumstances of the case, including the incorporation of the Complainant’s Trademark as a whole in the Domain Name, the Trademark’s wide renown, and Respondent’s failure to submit a response, support a finding of bad faith.
This conclusion is reinforced by the fact that it is established that terms with an “inherent Internet connotation” (e.g., <e-trademark.com>, <buy-trademark.com>, or <trademark.online>), such as the term used in the Domain Name, are seen as tending to suggest sponsorship or endorsement by the trademark owner (see section 2.5.1. of WIPO Overview 3.0). However, Complainant has apparently never sponsored nor endorsed Respondent, nor otherwise authorized the use of the Trademark in the Domain Name.
The Panel finds that the requirement of registration and use in bad faith of the Domain Name pursuant to article 2.1(c) of the Regulations has been met.
7. Decision
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name, <clarins-online.nl>, be transferred to Complainant.
Remco M.R. van Leeuwen
Panelist
Date: April 26, 2021
1 On February 11, 2021, the Domain Name moved from Metaregistrar B.V. to NAMESHIELD and remained under “lock”.
2 In view of the fact that the Regulations are to an extent based on the Uniform Domain Name Dispute Resolution Policy (“UDRP”), it is well established that both cases decided under the Regulations and cases decided under the UDRP, and therefore WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), are relevant to this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V., WIPO Case No. DNL2008‑0050).