Complainant is Clarins of Neuilly Sur Seine, France, represented by Tmark Conseils, France.
Respondent is Online Management of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland / Registration Private of Scottsdale, Arizona of United States of America (“USA”).
The disputed domain name <clubclarinsusa.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2013. On October 31, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 31, 2013, 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 November 1, 2013 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 November 5, 2013.
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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 27, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 28, 2013.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on December 3, 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 is a corporation that has been doing business in France for more than 50 years in the field of cosmetics. The company was founded in 1954. At the beginning of the year 1970, Complainant started to expand internationally. The first subsidiary of Complainant in the USA was created in 1981. At the end of 2005, Complainant had 19 subsidiary companies and distribution in more than 150 countries.
Complainant has registered CLARINS as a trademark for various goods and services in France, the European Union, Canada, USA, and China among others. Complainant owns also a domain name <clarins.com> registered and in use since March 16, 1997 and a website under the domain name <clarinsusa.com> registered on November 12, 1997.
The disputed domain name was registered on March 10, 2013.
The disputed domain name resolves to a web page which contains links to various websites and pages promoting products competing with those of Complainant. The web page also carries the statement “The domain clubclarinsusa.com is for sale! To purchase, call at +1 […] or […] or click here to BUY NOW!”.
Complainant is the owner of the CLARINS trademark as explained above.
Complainant has registered and used the domain name <clarins.com> since March 16, 1997. In addition, Complainant also has registered the domain name <clarinsusa.com> since November 12, 1997.
The disputed domain name is confusingly similar to Complainant trademark.
The words “club” and “USA” are not distinctive for cosmetics and make-up goods. Therefore the disputed domain name is confusingly similar to Complainant’s trademark.
Respondent is not affiliated in any manner to the Complainant and has never been authorized to use or register in any way the name CLARINS, including as a domain name.
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”. In fact Respondent only uses it to enable Internet users to browse through sponsored links in English or French. In addition the related webpage indicates that the domain name is for sale. Finally the offending webpages display links related to Complainant’s field of activity: cosmetics and make-up products. Complainant states that some of these links enable Internet users to browse through websites which offer Complainant’s direct competitors goods such as Unt, Hugo Boss, Caron, Issey Miyake, etc.
According to the Complaint, Respondent clearly misleads the consumers and diverts them from the real and official Complainant websites “www.clarins.com” and “www.clarinsusa.com” in order to create commercial gain for itself.
The disputed domain name was registered and is used in bad faith.
The disputed domain name was registered on March 10, 2013 and at that time Complainant was already extensively using the CLARINS trademark. Complainant states that its trademark is well known in different countries including France, the United Kingdom and the USA where Complainant opened its first subsidiary in the year 1981.
Complainant also states that Respondent has taken steps to cover its identity, which raises suspicions on Respondent real intentions. Complainant concludes that there would be no need to hide someone’s identity if a genuine use of the domain name was in play.
The disputed domain name displays sponsored links to commercial websites offering goods identical to those covered by Complainant’s trademark and more particularly links to Complainant’s direct competitor’s goods.
Respondent is exploiting Complainant’s trademark in order to gain click through commissions from the diversion of Internet users which is a common example of registration and use in bad faith.
Complainant also points out that Respondent has been recently involved in Net-A-Porter Group Limited v. Online Management LTD., a/k/a Online Resource Management Ltd., WIPO Case No. D2013-1403 and that the circumstances of that case were identical to the current case.
Complainant requests the transfer of the disputed domain name.
Respondent did not reply to Complainant’s contentions.
Paragraph 4(a) of the Policy lists three elements which Complainant must satisfy in order to succeed. Complainant must satisfy that:
(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 interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel finds that Complainant has established trademark rights in CLARINS as evidenced by the trademark registrations submitted with the Complaint, as mentioned above.
The Panel finds also that the disputed domain name <clubclarinsusa.com> is confusingly similar to Complainants’ trademark CLARINS. The name “Clarins” is clearly the dominant element of the disputed domain name. The Panel has had little difficulty in finding that the disputed domain name is confusingly similar to the trademark CLARINS, as the additional elements are, in a trademark sense, generic or common.
The addition of the term “club” before the trademark CLARINS and the geographical designation “USA” after the trademark does not serve to distinguish the disputed domain name from Complainant’s trademark. The addition of the generic top-level domain suffix “.com” does not change this finding. These elements are insufficient to distinguish the disputed domain name as referring to an entity other than Complainant. On the contrary, many Internet users would suppose that the disputed domain name has been registered by Complainant or an affiliate of Complainant to promote its business in the USA.
Therefore, the Panel finds that Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence of the existence of any of those rights or legitimate interests. Complainant has not authorized, licensed, or permitted Respondent to register or use the disputed domain name or to use the trademark. Complainant has prior rights in the trademark, which precede Respondent’s registration of the disputed domain name by several decades. Complainant has therefore established a prima facie case that Respondent has no rights and legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
Respondent has failed to show that it has acquired any trademark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
Therefore, the Panel finds that Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
The Panel finds on the undisputed evidence that Respondent has used the disputed domain name intentionally to attract Internet users to a web page containing sponsored links to competing third party websites for commercial gain by creating a likelihood of confusion with Complainant’s trademark as to its source, sponsorship, affiliation or endorsement.
In accordance with paragraph 4(b)(iv) of the UDRP, this constitutes evidence of registration and use of the disputed domain name in bad faith. There is no material in the file which displaces this presumption.
Several additional circumstances also suggests in combination with other factors bad faith registration and use on the part of Respondent:
- The disputed domain name is for sale as evidenced by the statement on the web page.
- Respondent is the same respondent as the one in Net-A-Porter Group Limited v. Online Management LTD., a/k/a Online Resource Management Ltd., WIPO Case No. D2013-1403. The use of the name in this case is “Online Management” but the domicile is also in Grand Cayman and the contact email is […]@onlineresourcesmanagement.com. The panel in that case found that the registration and use of the domain name was in bad faith.
- The failure of Respondent to answer Complainant’s allegations in the Complaint and take any part in these proceedings also suggests in combination with other factors bad faith on the part of Respondent (see Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).
Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that Respondent has registered and is using the disputed domain name in bad faith.
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 <clubclarinsusa.com> be transferred to Complainant.
Pablo A. Palazzi
Sole Panelist
Date: December 16, 2013