n° 796200, dated February 1, 1994, in class 03, notably for cosmetics,The Complainant is Clarins of Neuilly Sur Seine, France, represented by Tmark Conseils, France.
The Respondent is DomCollect AG/ Andre Schneider of Zug, Switzerland.
The Disputed Domain Name <clarinslondon.com> is registered with 1&1 Internet AG (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2013. On November 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 18, 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 21, 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 22, 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 the Respondent of the Complaint, and the proceedings commenced on November 27, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 17, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 18, 2013.
The Center appointed Isabel Davies as the sole panelist in this matter on December 30, 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.
The Complainant is a leader in the cosmetics field. It has been doing business for more than 50 years and is well known internationally.
It has registered trademarks in many countries of the world dating back to at least 1958.
The Complainant’s company name is Clarins and it owns domain names including <clarins.com> dating from 1997 and <clarins.ch> in Switzerland.
The Disputed Domain Name was registered February 4, 2010.
(Policy, paragraph 4(a)(i); Rules, paragraphs 3(b)(viii), (b)(ix)(1))
The Complainant states that it is one of the major players in the field of cosmetics and has been doing business for more than 50 years where it is well-known worldwide.
It states that he Complainant owns many trademarks worldwide, and relies upon the following CLARINS trademarks having effects in France, European Union, Canada, United States of America, China, Hong-Kong China, United-Kingdom of Great Britain and Northern Ireland, as well as in Switzerland where the Respondent appears to be established:
France:
- French trademark Registration CLARINS n° 1637194, filed on January 7, 1991, and covering notably cosmetics in class 03 and beauty care services in class 44,
European Union:
- Community trademark Registration CLARINS n° 005394283, dated October 10, 2006, and covering notably cosmetics in class 03 and cosmetic and beauty care services in class 44,
Canada:
- Canadian Trademark Registration CLARINS n° TMA645123, filed on June 3, 2004 and covering cosmetic products in class 03,
China:
- Chinese trademark registration n° 796200, dated February 1, 1994, in class 03, notably for cosmetics,
Hong-Kong:
- Registration CLARINS n° 19701641AA, dated March 24, 1970, covering notably class 03 for cosmetics,
- Registration CLARINS n° 199705441, dated July 4, 1992, in class 42 for beauty care related services,
United-Kingdom:
- Registration CLARINS n° 997617, dated August 29, 1972, covering notably class 03 for cosmetics,
Switzerland:
- International Registration CLARINS n° 208808, dated April 10, 1958, covering notably class 03 for perfumes and cosmetic products, having effects in Switzerland.
The Complainant states that these trademarks, which predate the registration of the Disputed Domain Name, are in force and are the exclusive property of the Complainant.
The Complainant also states that the name CLARINS constitutes the registered company name of the Complainant, and the domain name <clarins.com> registered since March 16, 1997, is being used internationally, including in Switzerland under the “.ch” extension accessible notably from the <clarins.com> website.
The Complainant states that apart from the “London” which is descriptive of the location where the goods are sold and the “.com” generic extension, which is inherent to the operation of the domain name system, the contested domain name <clarinslondon.com> is identical or at least confusingly similar to the above-cited trademarks, company and domain names CLARINS.
(Policy, paragraph 4(a)(ii); Rules, paragraph 3(b)(ix)(2))
The Complainant states that the 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.
The Respondent, has never been known, commonly or otherwise, by the Disputed Domain Name or by the trademark or by any name corresponding to it, prior to the registration of the Disputed Domain Name.
Furthermore, the Respondent is not making a noncommercial or a fair use of the Disputed Domain Name, since it is for sale and it used in relation with a web page displaying sponsored links, offering to sell cosmetics and perfumes goods of the Complainant’s direct competitors.
The Complainant evidences that a link leads to “www.shopunt.com” the Unt company’s website, one of the Complainant’s direct competitors.
The menus present on top of one page “soins” (“care” in English), “maquillage” (“make-up”), “ongles” (“nails”), “conseils beauté” (“beauty advices”) on the website show that the activity of the Unt company is identical to the one of the Complainant and the link to “Perfumdo” a multi-brand cosmetics and perfumes store, enable Internet users to purchase competitors goods such as Dolce Gabbana, Guerlain, etc.
The Complainant avers that the Respondent clearly misleads the Internet consumers and diverts them from the real and official complainant’s websites “www.clarins.com” and “www.clarins.ch” (referred-to above in paragraph A), in order to create a commercial gain for himself. It states that such use, which relies on exploiting user confusion, cannot and does not constitute bona fide commercial use, sufficient to legitimize any rights and interests the Respondent might have in the Disputed Domain Name.
The Complainant therefore submits that the Respondent should be considered as having no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
The Disputed Domain Name was created on February 4, 2010.
The Complainant states that it was already extensively using its trademark CLARINS well before that date, including in Switzerland. In this respect, the Complainant reiterates that the Complainant’s trademark has a well-known character world-wide and has been operating its own website for a long time, in particular in Switzerland, through it’s <clarins.com> and <clarins.ch> domain names.
Furthermore, the Complainant states that the offending webpage displays sponsored links to commercial websites offering goods identical to those covered by the Complainant’s trademarks, and more particularly, links to Complainant’s direct competitors’ goods.
In any case, the Complainant avers, the Respondent is exploiting the 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.
Registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy”.
The Complainant draws the Panel’s attention to the fact that, at the time this Complaint had been initially filed, the Disputed Domain Name used to direct users to an offending website, which offered for sale goods of the Complainant’s direct competitors such as Roger & Gallet, Floris etc.
The Complainant states that it was the informed of a sudden change of identity of the Respondent, which they state is a gross case of cyber flight.
This, the Complainant states raises major concerns on the real intentions of the previous and current Respondent at the time the Disputed Domain Name was filed, thus showing bad faith.
The Complainant also points out that the Disputed Domain Name is for sale, thus showing further bad faith registration and use of the Disputed Domain Name.
Finally, the Complainant states, the Respondent has engaged in a pattern of registering domain names that bear a resemblance to famous and/or well-known marks, such as “facebook”, and has been involved in UDPR cases where the Panel has ordered the transfer or cancellation of the disputed domain names. The Complainant refers to various such cases including Facebook Inc. v. Andre Schneider/Domcollect AG, WIPO Case No. D2013-1183).
Therefore, the Complainant avers, it is hard to believe that the filing of the Disputed Domain Name was a mere coincidence, and these circumstances clearly indicate that the Respondent registered and used the Disputed Domain Name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the sponsorship of or affiliation of Complainant with Respondent’s website.
Accordingly, the Disputed Domain Name should be considered as having been registered and is being used in bad faith by the Respondent.
The Respondent did not reply to the Complainant’s contentions.
The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief. These elements are:
(i) The Disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the Disputed Domain Name;
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
Each of these elements will be addressed below.
The Complainant must establish these elements even if the Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of or requirement under, the Rules, including the Respondent’s failure to file a Response.
In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009)).
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. As the proceeding is an administrative one, the Complainant bears the onus of proving its case on the balance of probabilities. The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the Disputed Domain Name.
(Policy, paragraph 4(a)(i); Rules, paragraphs 3(b)(viii), (b)(ix)(1))
The Panel accepts that the Complainant is one of the major players in the field of cosmetics and that it has been doing business for more than 50 years is well-known internationally. The Panel also accepts that the Complainant has an extensive international trademark portfolio including the trademarks referred to above and that these trademarks, which predate the Disputed Domain Name, are in force and are the exclusive property of the Complainant.
The Panel accepts that the name “Clarins” constitutes the registered company name of the Complainant, and the domain name <clarins.com> registered since March 16, 1997, is being used internationally, including in Switzerland under the “.ch” extension accessible notably from the “www.clarins.com” website.
The Panel accepts that the Disputed Domain Name <clarinslondon.com> is confusingly similar to the above-cited trademarks, company and domain names CLARINS in spite of the addition of “London” to the Disputed Domain Name.
Earlier UDRP decisions have held that when a domain name wholly incorporates a complainant’s registered trademark, it is sufficient to establish confusing similarity for purpose of the Policy (see Wal-Mart Stores Inc v. Walmart Canada, WIPO Case No. D2000-0150; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, 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 Panel accepts that the 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.
The Panel accepts that the Respondent has never been known, commonly or otherwise, by the Disputed Domain Name or by the trademark or by any name corresponding to it, prior to the registration of the Disputed Domain Name.
The Panel further accepts that the Respondent is not making a noncommercial or a fair use of the Disputed Domain Name, since it is for sale and it used in relation with a web page displaying sponsored links, offering to sell cosmetics and perfumes goods of the Complainant’s direct competitors including Guerlain and Dolce and Gabbana.
The Panel accepts that the Respondent misleads the consumers and diverts them from the real and official Complainant’s websites “www.clarins.com” and “www.clarins.ch” (referred-to above in paragraph A), in order to create a commercial gain for himself. Such use, which relies on exploiting user confusion, cannot and does not constitute bona fide commercial use, sufficient to legitimize any rights and interests the Respondent might have in the Disputed Domain Name.
The Panel accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
The Disputed Domain Name was created on February 4, 2010.
The Panel accepts that the Complainant was already extensively using its trademark CLARINS well before that date, including in Switzerland. The Panel accepts that the Complainant’s trademark is well-known internationally and that the Complainant has been operating its own website for several years in particular in Switzerland, through its <clarins.com> and <clarins.ch> domain names.
Furthermore, the Panel accepts that the offending webpage displays sponsored links to commercial websites offering goods identical to those covered by the Complainant’s trademarks, and more particularly, links to Complainant’s direct competitors’ goods.
The Panel also accepts that the Respondent is exploiting the 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. (see Edmunds.com, Inc. v. Ult. Search, Inc., WIPO Case No. D2001-1319:
“Registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy”.
The Panel accepts that at the time this Complaint had been initially filed the Disputed Domain Name used to direct users to an offending website, which offered for sale goods of the Complainant’s direct competitors such as Roger & Gallet, Floris etc. from the evidence which the Complainant has submitted.
The Panel accepts that the sudden change of identity of the Respondent contributes to the bad faith arguments submitted by the Complainant and that this raises further issues about the real intentions of the previous and current Respondent at the time the Disputed Domain Name was filed, adding to the contentions of bad faith.
The fact that the Disputed Domain Name is for sale, is a further indication of bad faith registration and use. (See Parfums Christian Dior v. QTR Corporation, WIPO Case No. D2000-0023: “This mention [This domain name is for sale] clearly indicates that the Respondent registered the domain name primarily for the purpose of selling the domain name registration for valuable consideration”).
The Panel also accepts that the Respondent has engaged in a pattern of registering domain names that bear a resemblance to famous and/or well-known marks as listed by the Complainant including “facebook”, and has been involved in UDPR cases where the panel has ordered the transfer or cancellation of the disputed domain names (see Facebook Inc. v. Andre Schneider/Domcollect AG, WIPO Case No. D2013-1183).
The Panel considers that it is inconceivable that the filing of the Disputed Domain Name was a mere coincidence, and finds that these circumstances indicate that the Respondent registered and used the Disputed Domain Name intentionally to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the sponsorship of or affiliation of Complainant with Respondent’s website.
Accordingly, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith by the Respondent.
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 <clarinslondon.com> be transferred to the Complainant.
Isabel Davies
Sole Panelist
Date: January 13, 2014