WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

L’Oréal v. Privacy protection service - whoisproxy.ru / Denis Mishin

Case No. D2015-1091

1. The Parties

The Complainant is L’Oréal of Paris, France, represented by Dreyfus & associés, France.

The Respondent is Privacy protection service - whoisproxy.ru of Moscow, Russian Federation / Denis Mishin of Moscow, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <clarisonic.moscow> is registered with RU-CENTER-MSK (Regional Network Information Center, JSC dba RU-CENTER) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2015. On June 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 26, 2015, 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 July 1, 2015 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 July 3, 2015.¹ On July 1, 2015, the Center sent an email communication to the Parties regarding the language of proceedings. The Complainant has submitted a request that English be the language of the proceedings, to which the Respondent has not replied.

The Center verified that the Complaint and 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 July 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2015.

The Center appointed Natasha Lisman as the sole panelist in this matter on August 21, 2015. 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. Language of the Proceedings

According to the Registrar, the Registration Agreement for the disputed domain name is in Russian. Under paragraph 11(a) of the Rules, “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The Complainant has requested that the present proceedings be conducted in English, arguing, among other things, that since it has no knowledge of Russian, to proceed in that language would impose on it an excessive burden of the cost of specialized translation services and would unduly delay the proceeding. Writing in both English and Russian, the Center notified the Respondent that the Complaint was submitted in English and that the Complainant requested that the language of the proceeding be English. In the same notice, the Center instructed the Respondent that if he objects, he should submit his objections and supporting arguments/documents by July 6, 2015 and, further, advised him that “if we do not hear from you by this date, we will proceed on the basis that you have no objection to the Complainant’s request that English be the language of proceedings.” As noted above, the Respondent did not reply to this notice, did not submit a Response to the Complaint, and has not in any other way indicated any intent to participate in the present proceedings.

In the Panel’s view, the considerations of expense and delay invoked by the Complainant, the Center’s instructions and advice to the Respondent in both English and Russian, and the Respondent’s total silence constitute circumstances warranting the exercise of its authority to determine that the language of the proceeding be other than the language of the Registration Agreement. See, e.g., Aktiebolaget Electrolux v. Domain Admin, whoisprotection.biz / Emrecan ARSLAN, WIPO Case No. D2015-0298 (and cases cited therein). Accordingly, the Panel grants the Complainant’s request that English be the language of these proceedings.

5. Factual Background

The Complainant, L’Oreal, has been for over 100 years engaged in the cosmetics and beauty business. It conducts operations and product sales in numerous countries around the world, including Russia. It has a wide portfolio of brands, including, since 2004, a growing line of Clarisonic skin care and treatment systems and products. The Complainant’s trademarks include Community trademark CLARISONIC no. 005732375, registered on January 20, 2009 and International trademark CLARISONIC no. 1153893 designating also Russia, registered on February 15, 2013. In addition, the Complainant’s promotion of its products and services includes the websites “www.clarisonic.com”, registered on May 25, 2004 and “www.clarisonic.fr”, registered on July 16, 2010.

The disputed domain name <clarisonic.moscow> was registered on April 6, 2015. As depicted in the screenshot submitted by the Complainant, the website to which <clarisonic.moscow> resolves has the following features:

- at the top, the logo Clarisonic in the Latin alphabet and the same phone number as that listed by the Registrar for Respondent Denis Mishin;

- three links titled in Russian “Что такое Clarisonic?”; “Продукция”; and “Оплата и доставка” [in English, respectively: “What is Clarisonic”; “Production”; and “Payment and delivery”]

- below the links, a photograph of a young woman and to the right, in Russian: “Запатентованный. Проверенный. Умный. Эффективный» [in English: “Patented. Tested. Smart. Effective”]

- photographs of a variety of brushes and below each, all in Russian, a description of its particular skin care use and a button to click “Купить” [“Buy”].²

6. Parties’ Contentions

A. Complainant

The Complainant contends that the complete reproduction of the term “clarisonic” in the disputed domain name renders it identical or at least confusingly similar to its CLARISONIC mark, which, as has been found in previous cases, is well-known and famous. The addition of the “.moscow” general Top-Level-Domain (“gTLD”) is irrelevant to the determination of whether a disputed domain name is confusingly similar, and in any event, in this case, serves only to compound the confusing effect as it indicates a location where the Complainant operates. The Complainant further asserts that it is in no way affiliated with the Respondent and has never authorized him to use its mark or register any domain name incorporating it; hence, the Respondent does not and cannot have any rights or legitimate interests in respect to the disputed domain name. Furthermore, the Complainant argues, given the registration of its mark CLARISONIC considerably before the disputed domain name and the notoriety of the Complainant and its mark throughout the world, including Russia, the Respondent could not plausibly have been unaware of the Complainant’s proprietary rights in the mark when he registered the disputed domain name. This awareness, combined with the fact that the Respondent’s website mimics the Complainant’s official websites and purports to offer for sale the Complainant’s products or unauthorized products bearing the Complainant’s trademark, evidence not only his lack of rights or legitimate interests in the domain name but also his registration and use of it in bad faith.

B. Respondent

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

7. Discussion and Findings

A. Introduction

Paragraph 4(a) of the Policy requires that in order to prevail, a complainant must establish each of the following elements:

(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 domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A respondent's default does not relieve the complainant from having to establish these elements and, thus, does not in and of itself entitle the complainant to a decision in its favor. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.2 (and cases cited therein). However, paragraph 14(b) of the Rules authorizes a panel, in the absence of exceptional circumstances, to draw from a party’s failure to comply with a provision of the Rules such inferences as it deems appropriate. There is no evidence in this case of any exceptional circumstances justifying the Respondent’s default. On the contrary, the Center diligently communicated the pendency of the Complaint to the Respondent in both English and Russian. Consequently, the Panel draws the inference that Respondent does not and cannot dispute any of the specific facts alleged in the Complaint or the documentary evidence submitted in support of thereof.

The fairness of this inference is buttressed by the inherent disadvantage between the parties with respect to the second and third elements of paragraph 4(a) of the Policy. Evidence of the Respondent’s interests in the disputed domain name and of his state of mind in registering and using it by its very nature, primarily or exclusively in his possession. Recognizing this disadvantage, UDRP panels have held that a complainant need only make a prima facie showing of the Respondent’s lack of rights or legitimate interests and bad faith. It then becomes the Respondent’s burden to proffer evidence of a right or legitimate interest and good faith. See Val de France Informatique v. Eric Verdot, WIPO Case No. D2014-0990. See also, American Council on Education and GED Testing Service LLC v. Direct Privacy ID 6CAE0, 46597, 605D8, Universal Academic Services / Domainadmin, Universal Academic Services, WIPO Case No. D2013-0983; AREVA v. N/A, Alex Makarov / Domain Project LLC, WIPO Case No. D2012-1057; Allianz, Compañia de Seguros y Reseguros S.A. v. John Michael, WIPO Case No. D2009-0942 (citing Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441); LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contac, WIPO Case No. D2003-0994; RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540).

A. Identical or Confusingly Similar

In view of the Complainant’s demonstrated record of registration and use of the CLARISONIC trademark worldwide and, in particular, in Russia, its rights in the mark are indisputable. The Panel finds that the incorporation of the term “clarisonic” in its entirety in the disputed domain name rendered the latter identical to the Complainant’s mark. See Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150; American Council on Education, GED Testing Service LLC v. Registrant [4065093]: Domain Manager, Technology Online LLC, WIPO Case No. D2012-2287; PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696. The Panel agrees with the Complainant that the addition of “.moscow” gTLD is of no relevance and, in any event, at the very least, renders the disputed domain name confusingly similar to the CLARISONIC mark.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has shown that its CLARISONIC mark had been registered and had acquired broad prominence well before the registration of the disputed domain name, that the Respondent’s website is obviously imitative, commercial, and misleadingly suggestive of an association with the Complainant and its products, notwithstanding the fact that Complainant has never been affiliated with the Respondent or authorized him to use the CLARISONIC mark for any purpose. Taken together, these facts and reasonable inferences to which they give rise are sufficient to make out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. As noted, the Respondent failed to avail himself of his right to either affirmatively show his rights or legitimate interests or to rebut the Complainant’s evidence and inferences. Consequently, Complainant’s prima facie case stands unrefuted. See LEGO Juris A/S v. Domain Administrator, Rich Premium Limited / c/o WHOIStrustee.com Limited, WIPO Case No. D2014-1565; AREVA v. N/A, Alex Makarov / Domain Project LLC, WIPO Case No. D2012-1057; AREVA v. St James Robyn Limoges, WIPO Case No. D2010-1017.

Therefore, the Panel finds that the Complainant has also satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel concludes that all of the above recited facts and circumstances also support a finding that the disputed domain name was registered and is being used in bad faith. Most notably, at the time the Respondent registered the domain name incorporating the CLARISONIC mark, he had to have known, or, at the very least, could and should have ascertained, that the Complainant had well-established pre-existing proprietary rights in the mark, including in Russia. He certainly knew that he had not been granted any permission to use the mark. He created a “copycat” website and gave it a false appearance of being a commercial enterprise operated by or affiliated with the Complainant to sell the Complainant’s products. Once again, the Respondent’s choice to forego his right to participate in these proceedings and offer direct evidence bearing on his purpose or state of mind in registering and using the disputed domain name further reinforces the combined effect of Complainant’s claim and evidence of bad faith. See Val de France Informatique v. Eric Verdot, WIPO Case No. D2014-0990; AREVA v. N/A, Alex Makarov / Domain Project LLC, WIPO Case No. D2012-1057; Jay Leno v. St Kitts Registry, Domain Names Administration, WIPO Case No. D2009-0571; L’OREAL v. Lewis Cheng, WIPO Case No. D2008-0437); Fifth Third Bancorp. v. Secure Whois Information Service, WIPO Case No. D2006-0696.

Accordingly, the Panel finds that the Complainant has likewise satisfied paragraph 4(a)(iii) of the Policy.

8. 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 <clarisonic.moscow> be transferred to Complainant.

Natasha Lisman
Sole Panelist
Date: September 9, 2015

¹ While the amened Complaint names and treats Privacy protection service - whoisproxy.ru and Denis Mishkin as separate Respondents, it appears from the record that there was only one Registrant for the disputed domain name. Accordingly, the Panel shall refer to the Respondent in the singular.

² The translations of the Russian text are supplied by the Panelist, who is fluent in Russian.