Complainant is L’Oréal of Paris, France, represented by Dreyfus & associés, France.
Respondent is World-shine Global Trade Co, LTD of Xiamen, Fujian, China.
The disputed domain names <clarisonic-outlet.info>, <clarisonicpaschere.com> and <soldesclarisonic.com> are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2013. On March 1, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 1, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 March 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 4, 2013.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on April 10, 2013. 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.
Complainant, L’Oréal, is a French industrial group specializing in the field of cosmetics and beauty since 1909. It is one of the world’s largest business groups in cosmetics and operates in over 130 countries, including China, with over 64,000 employees.
In 2011, Pacific Bioscience Laboratories and its famous brand CLARISONIC entered the L’Oréal group. L’Oréal SA Pacific Bioscience Laboratories owns the trademark CLARISONIC. The brand CLARISONIC is a market leader brand for sonic skin care technology and is well-known all over the world.
Complainant contends that it is aware of the registration and use of the disputed domain names <clarisonic-outlet.info>, <clarisonicpaschere.com> and <soldesclarisonic.com>.
It alleges the disputed domain names <clarisonicpaschere.com> and <soldesclarisonic.com> both resolve to websites that appear to imitate an official website of Clarisonic and includes the Clarisonic logo. The websites both display various Clarisonic products for sale. No contact data is provided on either website.
Complainant alleges that the disputed domain name <clarisonic-outlet.info> does not point to an active website.
Complainant contends that:
- The disputed domain names are identical or confusingly similar to Complainant’s trademark;
- Respondent has no rights or legitimate interests with respect to the disputed domain names; and
- The disputed domain names were registered and are being used in bad faith.
Respondent did not reply to Complainant’s contentions.
According to paragraph 4(a) of the Policy, Complainant must prove that:
(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
The Panel finds that the disputed domain names are confusingly similar to Complainant’s mark.
The disputed domain names <clarisonic-outlet.info>, <clarisonicpaschere.com> and <soldesclarisonic.com> contain sufficient identity to Complainant’s mark CLARISONIC to be confusingly similar to the mark.
UDRP panels have consistently concluded that a domain name’s inclusion of a registered mark in its entirety results in confusing similarity for purposes of paragraph 4(a)(i) of the Policy. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“[T]he fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); Playboy Enterprises International, Inc. v. Sookwan Park, WIPO Case No. D2001-0778 (<playboysportsbooks.com> was found confusingly similar to the PLAYBOY mark); and Adaptive Molecular Technologies, Inc. v. Piscilla Woodward & Charles R. Thorton, d/b/a Machines & More, WIPO Case No. D2000-0006 (the distinctive features of the domain name were the complainant’s mark).
The mere addition of descriptive words to the disputed domain names does not change this ruling since the Panel finds that those terms, “pashcere”, “outlet”, and “soldes” are not sufficient to distinguish the disputed domain names from Complainant’s trademark. Therefore the descriptive terms further represent the confusing similarity of the disputed domain names to Complainant’s mark.
The Panel finds that the first element of the Policy has been established here.
The Panel concludes that Respondent has no rights or legitimate interests in respect of the disputed domain names.
Although a complainant bears the ultimate burden of proof, UDRP panels recognize that strict compliance often requires the impossible task of proving a negative because such information is frequently within the sole possession of a respondent. See Altria Group, Inc. v. Steven Company, WIPO Case No. D2010-1762. Accordingly, Complainant needs only make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. Id. Upon such a showing, the burden shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain names. Id.
In this case the Panel finds that Complainant has made a prima facie showing that Respondent does not have rights or legitimate interests in the disputed domain names within the meaning of paragraph 4(a) of the Policy.
This finding is based on the following, non-disputed, circumstances:
- Complainant has no relationship whatsoever with Respondent and has never authorized Respondent to use the CLARISONIC mark in the disputed domain names or any other domain name.
- There is no indication in the file that Respondent is known under the disputed domain names.
- The disputed domain names are primarily representative of Complainant’s services as they incorporate Complainant’s CLARISONIC mark and sell Complainant’s branded products. Hence, Respondent’s use of the disputed domain names appears to be merely intended to divert Internet users to Respondent’s websites and cannot be considered a bona fide offering of goods and services.
Further, the Panel concludes that Respondent has not successfully demonstrated any rights or legitimate interests in the disputed domain names. Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that can be brought forward by Respondent in order to demonstrate its rights or legitimate interests. Such circumstances may be:
- demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;
- an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights or service mark rights; or
- legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.
Respondent did not reply to Complainant’s contentions. Therefore the only plausible reason, in the view of the Panel, for Respondent to register the disputed domain names was divert Internet users to Respondent’s websites to either sell Complainant’s products without Complainant’s permission or sell counterfeit products of Complainant’s brand. This is neither noncommercial nor fair use of the disputed domain names.
For the foregoing reasons, the Panel concludes that the second element of the Policy has been established.
The Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy have been sufficiently made out by Complainant and that Respondent’s bad faith registration and use of the disputed domain names has been proven.
The third element of the Policy requires that Complainant establish that the disputed domain names have been registered and used in bad faith.
Paragraph 4(b) of the Policy provides the following four (non-exclusive) circumstances which are deemed to provide evidence of bad faith in registering and using a disputed domain name:
“(i) circumstances indicating that you [respondent] have registered or you [respondent] have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark, or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you [respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you [respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Panel finds that at the minimum the circumstance set out in paragraph 4(b)(i) is fulfilled here. In the Panel’s view there is sufficient evidence that leads to the finding that Respondent acquired the disputed domain names primarily for the purpose of diverting Internet users to Respondent’s websites to either sell Complainant’s products without Complainant’s permission or sell counterfeit products of Complainant’s brand.
In the Panel’s view, further proof of bad faith is that Respondent provides no contact information on its websites and has not responded to Complainant’s Complaint.
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 names <clarisonic-outlet.info>, <clarisonicpaschere.com> and <soldesclarisonic.com> be transferred to Complainant.
Maxim H. Waldbaum
Sole Panelist
Date: April 19, 2013