WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

L’Oréal SA v. Thomas Burns

Case No. D2014-0303

1. The Parties

The Complainant is L’Oréal SA of Paris, France, represented by Studio Barbero of Italy.

The Respondent is Thomas Burns of Chalford, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <clarisonicaustralias.biz> (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2014. On February 27, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 28, 2014, 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 March 4, 2014, 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 amendment to the Complaint on March 4, 2014.

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 the Respondent of the Complaint, and the proceedings commenced on March 5, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2014.

The Center appointed Lynda M. Braun as the sole panelist in this matter on April 9, 2014. 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 is one of the world’s largest cosmetic and beauty supply companies. The Complainant markets numerous beauty products and is also well known for its dermatological and pharmaceutical products. The Complainant’s products are marketed through a wide variety of distribution channels.

The Complainant sells its products in over 130 countries with more than 25 global brands. The Complainant’s numerous brands are well known and include, among others, L’Oréal, Garnier, Maybelline and most recently, Clarisonic, which has been used for nearly 10 years in connection with sonic skin care devices and technologies.

The Complainant acquired Pacific Bioscience Laboratories, Inc. and its trademark CLARISONIC (the “CLARISONIC Mark”) via a merger agreement on December 15, 2011. Through L’Oréal distribution channels, which include, among others, free-standing stores and e-commerce websites, Clarisonic products are marketed and sold worldwide. The Complainant has an extensive sales network of approximately 72,600 employees in 130 countries.

The Complainant is the owner of numerous registrations for the CLARISONIC Mark in the United States and throughout the world. In addition, the Complainant owns registrations for many domain names incorporating the CLARISONIC Mark, including, among others,<clarisonic.com>, clarisonicaustralia.org>, <clarisonic-australia.net>, <australiasclarisonic.com>, <clarisonic.com.au>, <clarisonic.cn>, <clarisonic.fr>, <clarisonic.co.uk> and <clarisonic.us>.

The Disputed Domain Name is used in connection with a website which looks almost identical to the Complainant’s official website, includes various of the Complainant’s official advertising campaigns, and in the “About Us” section, refers to the Complainant's initiative “Look Good…Feel Better” and states “Welcome to Clarisonic online shop! We are the authorized retailer for the Clarisonic Cleansing System.” The website offers for sale products bearing the CLARISONIC Mark.

The Respondent registered <clarisonicaustralias.biz> on May 24, 2013.

On June 27, 2013, after the Complainant discovered the Respondent’s registration and use of the Disputed Domain Name, the Complainant’s counsel sent a cease and desist letter to the Respondent. When the Respondent did not respond, the Complainant’s counsel sent a second demand letter on September 3, 2013. Again, the Respondent did not respond and instead continued to use the Disputed Domain Name to host its replica Clarisonic website.

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- The Disputed Domain Name is confusingly similar to the Complainant’s trademark.

- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

- The Disputed Domain Name was registered and is being used in bad faith

- The website to which the Disputed Domain Name resolves has the identical look and feel of the Complainant’s official website and states that the website is the authorized retailer for the Complainant’s products.

- The Respondent is selling counterfeit products bearing the Complainant’s CLARISONIC Mark, thus misleading Internet users as to the origin or source of the goods.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order for the Complainant to prevail and have the Disputed Domain Name transferred, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):

(i) The Disputed Domain Name is identical or confusingly similar to a 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 was registered and is being used in bad faith.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.

It is uncontroverted that the Complainant has established rights in the CLARISONIC Mark based on longstanding use as well as its United States and foreign trademark registrations for the CLARISONIC Mark. The Disputed Domain Name consists of the CLARISONIC Mark followed by the geographic designation “australias” and the generic Top-Level Domain (“gTLD”) “.biz”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of descriptive or geographic words. F. Hoffman-La Roche AG v. Globex Int’l, WIPO Case No. D2006-1008. The mere addition of the geographic abbreviation “australias” to the Complainant’s CLARISONIC Mark does not diminish, but rather adds to the confusing similarity between the Disputed Domain Name and the Complainant’s trademark. See Gannett Co., Inc. v. Henry Chan, WIPO Case No. D2004-0117 (a domain name incorporating a well known trademark combined with a geographically descriptive term is confusingly similar to the trademark); Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438 (the addition of the term “korea” in <ikea-korea.com> does not prevent the domain name from being confusingly similar to the Complainant’s trademark).

Finally, the addition of a gTLD such as “.biz” to a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether domain names are identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.

Accordingly, the first element of paragraph 4(a) has been met by the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.

In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, the Complainant submits that the Respondent is not a licensee, an authorized agent of the Complainant or in any other way authorized to use the Complainant’s trademark CLARISONIC. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, there is no evidence in the record that the Respondent is in any way associated with the Complainant, that the Respondent is now or was ever known by the Disputed Domain Name, or that the Respondent has other authority, license or permission to use the CLARISONIC Mark. Rather, the Respondent is using the Disputed Domain Name to offer for sale, without the Complainant’s authorization, the products bearing the CLARISONIC Mark that are likely counterfeit according to the Complainant’s unrebutted allegation.

Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.

This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.

First, based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s CLARISONIC Mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Respondent’s registration and use of the Disputed Domain Name indicate that such registration and use has been done for the specific purpose of trading on the name and reputation of the Complainant and its CLARISONIC Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain” and “[t]hat purpose is a violation of the Policy, as well as U.S. Trademark Law.”).

Second, the Respondent’s action of registering the Disputed Domain Name and using it to direct Internet traffic to its website evidences a clear intent to disrupt the Complainant’s business, deceive customers and trade off the Complainant’s goodwill by creating an unauthorized association between the Respondent and the Complainant’s CLARISONIC Mark. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552. The sale of goods bearing the Complainant’s CLARISONIC Mark also constitutes an attempt to disrupt the Complainant’s business by attracting potential customers of the Complainant’s products and offering other lower cost, and potentially counterfeit, products to them instead.

Third, the Respondent knew or should have known of the Complainant’s rights in its CLARISONIC Mark when registering the Disputed Domain Name. The Complainant’s CLARISONIC Mark is well known and widely used. It therefore strains credulity to believe that the Respondent had not known of the Complainant or its CLARISONIC Mark when registering the Disputed Domain Name or creating its website. See Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763 (a finding of bad faith may be made where Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the domain name).

Finally, the Panel finds that the Respondent's bad faith can also be inferred from its lack of reply to the cease and desist letters sent by the Complainant’s counsel prior to commencing this proceeding. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210.

Therefore, based on the foregoing, the Panel concludes that the Respondent registered and is using the Disputed Domain Name in bad faith and need not reach the issue of whether or not the Complainant has engaged in selling counterfeit goods bearing the CLARISONIC MARK.

Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.

7. Decision

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 <clarisonicaustralias.biz> be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: April 14, 2014