Complainant is L’Oréal SA, France, represented by Studio Barbero, Torino, Italy.
Respondent is Madeleine Hobbs, London Banbridge, United Kingdom of Great Britain and Northern Ireland, acting for Domain Admin/PrivacyProtect.org, Nobby Beach, Queensland, Australia.
The disputed domain name <clarisonicmia.biz> (the “Domain Name”) is registered with PDR Ltd. D/B/A PublicDomainRegistry.com (the “Registrar”). Since the registration is in the name of a privacy protection service acting as proxy for the underlying registrant, complete and correct personal data about the beneficial owner of the Domain Name is apparently not available.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2014. On February 27, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 28, 2014, the Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the Domain Name. They were differed from the named Respondent and the contact information in the Complaint. The Center thus sent an email communication to Complainant on March 7, 2014, providing registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant filed an amended version of the Complaint on the same day.
The Center verified that the Complaint, together with the amendment, 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 March 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for the Response was March 30, 2014. Respondent did not submit any response and, accordingly, the Center notified Respondent’s default on April 1, 2014.
As the Domain Name was set to expire on May 3, 2014, the Center formally requested from the Registrar on March 7, 2014 confirmation that the Domain Name is in Registrar lock status, and that the Domain Name will remain in such status after the lapse of the expiry date or until the UDRP proceeding was finished and asked whether any action was required by the Parties to keep the Domain Name under Registrar lock. On March 8, 2014, the Registrar informed that the lock will remain in effect until May 3, 2014 only, but that either Complainant or Respondent could renew the Domain Name to keep it under Registrar lock as long as required for the UDRP proceeding. On March 10, 2014, Complainant informed the Registrar that it will proceed with the payment covering the renewal fees in due course, should the Domain Name expire before the present proceeding was concluded.
On April 11, 2014, the Center appointed Bernhard F. Meyer as Sole Panelist in this matter. The Panel submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7, and finds that it was properly constituted.
Complainant’s origin dates back to 1909. Nowadays, it has become one of the world’s largest companies in the field of cosmetics and beauty.
Complainant acquired Pacific Bioscience Laboratories, Inc. on December 15, 2011, and submits in Annex 4 to the Complaint a Power of Attorney from Pacific Bioscience Laboratories, Inc., authorizing Complainant to act on the latter’s behalf.
Pursuant to evidence attached to the Complaint, Pacific Bioscience Laboratories Inc. is the registered holder of the following trademarks:
- EU Trademark CLARISONIC filed under no. 5732375 on March 05, 2007, registered on January 20, 2009 in Classes 03, 05, 21, 35 and 34;
- US Trademark CLARISONIC filed under no. 3087196 on May 27, 2004, registered on May 02, 2006 in Class 21, claiming first use in commerce as of June 23, 2004;
- US Trademark CLARISONIC filed under no. 3732137 on March 31, 2008, registered on December 29, 2009 in Class 03, claiming first use in commerce as of June 23, 2004;
- US Trademark CLARISONIC filed under no. 3880043 on May 6, 2010, registered on November 23, 2010 in Class 35, claiming first use in commerce as of May 01, 2005;
- Chinese Trademark CLARISONIC filed under no. 8275826 on May 07, 2010, registered on May 14, 2011 in Class 5;
- Chinese Trademark CLARISONIC filed under no. 8514771 on July 27, 2010, registered on September 07, 2011 in Class 35;
- Chinese Trademark CLARISONIC MIA filed under no. 8563849 on August 11, 2010, registered on August 14, 2011 in Class 10;
- Chinese Trademark CLARISONIC MIA filed under no. 8563848 on August 11, 2010, registered on August 14, 2011 in Class 21.
Furthermore, according to the Complaint, Complainant and its subsidiaries registered numerous domain names on a worldwide basis whose second level portion consists of the word or notion CLARISONIC, the words or notions CLARISONIC and MIA respectively, amongst others, <clarisonic.com>, <clarisonic.cn>, <clarisonic.fr>, <clarisonic.co.uk>, <clarisonic.us>, <clarisonicmia.com> and <clarisonicmia.net>.
First, Complainant claims that the Domain Name <clarisonicmia.biz> is confusingly similar to Complainant’s trademark CLARISONIC and identical to its trademark CLARISONIC MIA, since it fully incorporates the Complainants CLARISONIC and CLARISONIC MIA trademarks. It is a well-established principle that, in order to determine identity or confusing similarity of a domain name with a trademark, the relevant comparison is to be made with the second level portion of the domain name, while the top level domain should be disregarded for this purpose. As to the top level domain (gTLD) “.biz”, Complainant argues that it should be disregarded as it is merely instrumental to the use of the Internet.
Secondly, Complainant alleges that Respondent has no rights or legitimate interests with respect to the Domain Name as Respondent is not a licensee, authorized agent or is in any other way permitted to use Complainant’s trademarks CLARISONIC and/or CLARISONIC MIA. Complainant submits evidence that the Domain Name, prior to its (temporary) suspension by the Registrar, redirected users to a website in English language, displaying CLARISONIC trademarks and prima facie official images of CLARISONIC products, offered for sale at discounted prices thus creating the impression that Respondent was affiliated to or authorized by Complainant to do so.
As the website was presented like but was not an official website of Complainant, the use cannot constitute a bona fide offering of goods or services. Furthermore, Complainant asserts that Respondent, who is moreover hiding behind a “shield” of anonymity, is not commonly known by the Domain Name as an individual, a business or another organization. The willful conduct demonstrates that Respondent did not use the Domain Name in connection with a legitimate non-commercial or fair offering. It was undoubtedly gaining from the sales of the products bearing CLARISONIC trademarks.
Thirdly, Complainant contends that the Domain Name was registered and is being used in bad faith. Complainant submits evidence that the trademark CLARISONIC was and presently still is strongly supported by global advertising campaigns through television and other media, such as important international magazines and the Internet. Thus, Complainant argues that Respondent could not possibly have ignored the existence of the trademark when registering a confusingly similar Domain Name, which indicates bad faith. According to Complainant, the only purpose of Respondent’s conduct as described above was to create confusion with Complainant’s trademarks, thereby attracting, for commercial gain, Internet users to the website and making a profit from sale of products promoted thereon.
Lastly, Complainant sent a cease and desist letter to Respondent which was not answered. The failure to respond as well as the fact that a privacy protection service was used to disguise the true owner of the website are further evidence of bad faith.
Consequently, Complainant requests the transfer of the Domain Name to Complainant.
As mentioned above, Respondent was notified in accordance with paragraph 2(a) and 4(a) of the Rules, but failed to submit a response in accordance with the requirements under the Policy
According to paragraph 4(a) of the Policy, Complainant must prove that all of the three following elements are present:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interest in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith.
The Domain Name comprises two elements: a) the word or sequence of terms “clarisonicmia” and b) the gTLD “.biz”.
As to the registered trademark CLARISONIC MIA, Complainant’s trademark and the second-level portion of the Domain Name are identical.
With respect to the widely registered trademark CLARISONIC, the only difference is the addition of the suffix “mia” to the second level Domain Name. With respect to the registered CLARISONIC MIA trademark, the Domain Name is identical the Panel finds that the Domain Name, which fully incorporates - as dominant part – Complainant’s trademark “CLARISONIC” is confusing. The Panel also agrees with Complainant that the gTLD “.biz” is unimportant and may be disregarded under the test of confusing similarity, since it is merely a technicality of the registration.
Taking the above into consideration, the Panel considers that there is a high risk that Internet users may actually believe that there is a connection between the Domain Name and Complainant’s services (see Sports Holdings, Inc. v. Hoffman Hibbett, WIPO Case No. D2007-0283).
Complainant has established the first element of the Policy, paragraph 4(a)(i).
Complainant alleges and based on the evidence set out above, has established a prima facie case that Respondent lacks any rights or legitimate interests in the Domain Name. It is the consensus view of UDRP panelists that once a complainant has established a prima facie case, it is Respondent’s responsibility to prove otherwise (see e.g. Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252).
In this case, Respondent is not participating and, hence, has not proven any rights or legitimate interests in respect of the Domain Name. Such rights or legitimate interests are neither visible otherwise.
Thus, the Panel concludes that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(b)(iv) of the Policy provides that the following situation, amongst others, evidence registration and use of the domain name in bad faith:
“By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or services on Respondent’s website or location.”
The Panel takes account of the following facts in making its decision in this regard:
Complainant’s trademarks CLARISONIC and CLARISONIC MIA were shown to be widely known and have been intensely used by Complainant on the Internet for many years. Thus, it is reasonable to assume that Respondent had knowledge of Complainant’s trademarks when registering the Domain Name on May 4, 2013. This is particularly true in the light of the fact that the webpage appeared to have been used by Respondent from the beginning to offer Complainant’s products (albeit without authorization by Complainant and at discount rates). The facts of this case also seem to support a finding that Respondent, through the confusion created with Complainant’s trademarks, aimed to attract customers for commercial gain. This is the classic case of bad faith behavior. Finally, Respondent did neither reply to Respondent’s cease and desist letter nor did it participate in these proceedings. Such passive attitude is normally considered by panels as a further indication of bad faith on a continuing basis (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Kabushiki Kaisha Toshiba v. Shan Computers, WIPO Case No. D2000-0325; Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).
Therefore, the requirements of paragraph 4(a)(iii) of the Policy are sufficiently made out by Complainant to the Panel.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <clarisonicmia.biz> be transferred to Complainant.
Bernhard F. Meyer
Sole Panelist
Date: April 24, 2014