WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Clarins v. Cui Long
Case No. DRO2020-0005
1. The Parties
The Complainant is Clarins, France, represented by Tmark Conseils, France.
The Respondent is Cui Long, China.
2. The Domain Name and Registrar
The disputed domain name <clarins.ro> is registered with ROTLD (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2020. On July 31, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 2020, 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 August 4, 2020 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 amended Complaint on August 6, 2020.
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 August 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 1, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 11, 2020.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on September 23, 2020. 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 operates on a world-wide basis in the cosmetics field and has been doing business for over 50 years in association with its CLARINS trademark and trade name.
The Complainant owns many trademarks around the world, including the following:
France Trademark Registration no. 1637194 for CLARINS filed on January 7, 1991; European Union Trade Mark Registration no. 005394283 for CLARINS dated October 5, 2006; United Kingdom Trademark Registration no. 997617 for CLARINS registered on August 29, 1972; Canada Trademark Registration no. TMA645123 for CLARINS registered on July 29, 2005; United States of America Trademark Registration no. 935002 for CLARINS registered on May 30, 1972 and no. 1574179 for CLARINS registered on January 2, 1990; China Trademark Registration no. 796200 for CLARINS, dated December 7, 1995.
For more than 20 years, the Complainant has used the principal domain name <clarins.com>, registered on March 16, 1997, to host its international website.
The disputed domain name was registered on June 4, 2019 and it currently resolves to a parked webpage offering the disputed domain name for sale.
5. Parties’ Contentions
Apart from the “.ro” country code Top Level Domain (“ccTLD”), which is inherent to the operation of the domain name system, the disputed domain name <clarins.ro> is identical to the above-cited trademarks, company name and domain name. CLARINS is not a generic term but a registered distinctive trademark owned by the Complainant in multiple jurisdictions. Past UDRP decisions have held that, when a domain name wholly incorporates a complainant’s registered trademark, it is sufficient to establish confusing similarity for the purpose of the Policy. To support this assertion the Complainant cites: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, 9 L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615.
The respondent has no legitimate reason to incorporate the Complainant’s well-known mark, company name and domain name in the disputed domain name. The CLARINS trademark, company name and domain name have been used for a long time and enjoy world-wide recognition in the cosmetic field. Furthermore, the Complainant has never licensed or otherwise authorized in any way the Respondent to use the CLARINS mark as a domain name or as an element of a domain name or for any other kind of purpose.
The disputed domain name was registered in bad faith. When the disputed domain name was registered on June 4, 2019, the Complainant had already been using its CLARINS trademark for many years throughout the world. The Complainant also had a long-standing operating website under the <clarins.com> domain name. The Respondent registered the disputed domain name in bad faith in order to take advantage of the confusion created by its registration. The Respondent acquired the disputed domain name primarily for the purpose of selling it to the Complainant or to one of the Complainant’s competitors for valuable consideration in excess of the Respondent’s out-of-pocket costs. The Respondent contacted the Complainant three times in an attempt to sell the disputed domain name at the price of EUR 2,000, far in excess of the Respondent’s out-of-pocket expenses in purchasing the disputed domain name. Finally, the Respondent has registered in the past domain names that infringe registered trademarks and was found to be acting in bad faith (see for example Neste Oyj v. Cui Long, WIPO Case No. DCH2016-0021, and Ruby Life Inc v. Cui Long, WIPO Case No. D2019-0358).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant does have registered trademark rights in the trademark CLARINS by virtue of the registrations referenced in paragraph 4 of this Decision.
The Panel finds that the disputed domain name <clarins.ro> is identical to the Complainant’s trademark. The disputed domain name replicates the Complainant’s registered trademark in its entirety.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Useful commentary relating to the burden of proof for rights or legitimate interests can be found at the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1:
“While the overall burden of proof in UDRP proceedings is on the complainant, 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”.
Based on the evidence filed in this proceeding, the Panel finds that the Complainant has made out a prima facie case with respect to the Respondent’s lack of rights or legitimate interests. The Complainant clearly owns rights in the CLARINS trademark as noted in section 4 of this Decision. The Panel acknowledges that the Complainant’s CLARINS trademark is well-known and distinctive, and accordingly it is unlikely that the Respondent was unaware of the Complainant’s trademark rights when he registered the disputed domain name.
In the circumstances of this case, the composition of the disputed domain name, incorporating the entirety of the Complainant’s trademark reveals an intention to capitalize on the Complainant’s goodwill and reputation. See WIPO Overview 3.0, section 2.5.1.
In this situation, the burden of production shifts to the Respondent to bring forward evidence of rights or legitimate interests. The Respondent did not respond to the Complaint.
Accordingly, the Panel finds that the Complainant is deemed to have satisfied the requirements under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Respondent’s conduct indicates an intention to register the disputed domain name for the purposes of selling it to either the Complainant or one of the Complainant’s competitors. The Respondent attempted to sell the disputed domain name to the Complainant on three separate occasions, and the disputed domain name resolves at the time of this Decision to a page offering to sell the disputed domain name for EUR 2,000. The registration and use of the disputed domain name was clearly abusive, targeting the Complainant’s famous CLARINS trademarks that were well-known long before the registration of the disputed domain name. The circumstances of this case justify a finding of registration and use in bad faith, particularly in the absence of any explanation or response from the Respondent.
The Complainant has therefore satisfied the requirements under paragraph 4(a)(iii) of 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.ro> be transferred to the Complainant.
Christopher J. Pibus
Date: October 7, 2020