WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
L'Oréal SA v. Aaliyah Bull, Aaron Greenwood, Abby Jordan, Alicia Wells, Andrew May, Billy Kent, Bradley Bond, Bradley Whitehouse, ca uang, Charlie Khan, Christopher James, Daniel Holland, Daniel Pickering, Ethan Long, Ethan Morris, Eva Bartlett, Evan Warren, Ewan Cooke, Ewan Giless, Ewan McDonald, Finlay Hayward, Finley Farmer, Harriet Webb, Harvey Richards, Henry Stephenson, Hollie Harper, Hollie Schofield, Jasmine Bull, Jessica Peacock, Kai Sin, Kate Hunter, Katherine Cooke, Kieran Charlton, Lara Berry, Lara Foster, liuyund rodd, Lola Burns, Louie Ali, Louie Harrison, Lucas Brooks, Lucas Short, Lucy Griffiths, Luke Abbott, Maddison Knowles, Madeleine Bartle, Maisie Sheppard, Megan Duffy, Natasha Payne, Nicholas Tyler, Paige Read, Poppy Wallis, Quahs aiv, Rachel Wilkins, Sam Walsh, Samuel Rose, Scarlett Davies, Scott Tucker, Sean Holland, Shannon North, Spencer Faulkner, Taylor Harris, Taylor Hunter, Toby Rahman, Zak Sims
Case No. D2013-1416
1. The Parties
The Complainant is L'Oréal SA of Paris, France, represented by Studio Barbero, Italy.
The Respondents are Aaliyah Bull, Aaron Greenwood, Abby Jordan, Alicia Wells, Andrew May, Billy Kent, Bradley Bond, Bradley Whitehouse, ca uang, Charlie Khan, Christopher James, Daniel Holland, Daniel Pickering, Ethan Long, Ethan Morris, Eva Bartlett, Evan Warren, Ewan Cooke, Ewan Giless, Ewan McDonald, Finlay Hayward, Finley Farmer, Harriet Webb, Harvey Richards, Henry Stephenson, Hollie Harper, Hollie Schofield, Jasmine Bull, Jessica Peacock, Kai Sin, Kate Hunter, Katherine Cooke, Kieran Charlton, Lara Berry, Lara Foster, liuyund rodd, Lola Burns, Louie Ali, Louie Harrison, Lucas Brooks, Lucas Short, Lucy Griffiths, Luke Abbott, Maddison Knowles, Madeleine Bartle, Maisie Sheppard, Megan Duffy, Natasha Payne, Nicholas Tyler, Paige Read, Poppy Wallis, Quahs aiv, Rachel Wilkins, Sam Walsh, Samuel Rose, Scarlett Davies, Scott Tucker, Sean Holland, Shannon North, Spencer Faulkner, Taylor Harris, Taylor Hunter, Toby Rahman, Zak Sims of Beijing, China.
2. The Domain Names and Registrar
The disputed domain names, <clarisonicmia-nz.com>, <clarisonicskincareus.com>, <ukclarisonic.net>, <sgclarisonics.com>, <australiasclarisonic.com>, <clarisonic-ireland.com>, <clarisonic-nz.com>, <clarisonicaumia.com>, <clarisonicaus.com>, <clarisonicaustraliasale.com>, <clarisonicmia-australia.com>, <clarisonicmia-cannada.com>, <clarisonicmia-vip.com>, <clarisonicmiaaus.com>, <clarisonicmianz.com>, <clarisonicmiasalesuk.com>, <clarisonicnzshop.com>, <clarisonics-australia.com>, <clarisonics-canada.com>, <clarisonics-singapore.com>, <clarisonicsg.com>, <clarisonicsaumia.com>, <clarisonicsaustralias.com>, <clarisonicsingaporemia.com>, <clarisonicsingaporesmia.com>, <clarisonicsonicau.com>, <clarisonicsmia-au.com>, <clarisonicsmianz.com>, <clarisonicsmias.com>, <clarisonicukonline.com>, <clarisonicuks.com>, <iclarisonicaustralia.com>, <miaclarisonicnz.com>, <officialclarisonicau.com>, <shopclarisonicau.com>, <sgclarisonic.com>, <clarisonic-aus.com>, <clarisonic-sg.com>, <clarisonicauonsale.com>, <clarisonicausmia.com>, <clarisonic-australia.net>, <clarisonicmiasg.com>, <auclarisonicmia.com>, <clarisonicsingaporemia2.com>, <clarisonics-sg.com>, <clarisonicnzsale.com>, <clarisonicsalesg.com>, <clarisonicsaus.com>, <clarisonicsgstore.com>, <clarisonicsnz.com>, <clarisonicssingapores.com>, <officialclarisonic-nz.com>, <clarisonicssg.com>, <clarisonics-aus.com>, <clarisonicsmiasg.com>, <clarisonicsmia-nz.com>, <nzclarisonics.com>, <clarisonicsgstores.com>, <ausclarisonic.com>, <clarisonic-nz.net>, <clarisonics-australia.net>, <clarisonicshopnz.com>, <clarisonic-singapore.net>, <singaporeclarisonic.com> (the “Disputed Domain Names”) are registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2013. On August 9, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On August 16, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details. On August 21, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On August 21, 2013, the Complainant confirmed its request that English be the language of the proceeding. The Respondents did not comment on the language of the proceeding by the specified due date.
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 Respondents of the Complaint, and the proceedings commenced on August 28, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 17, 2013. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on September 18, 2013.
The Center appointed Peter J. Dernbach as the sole panelist in this matter on October 1, 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.
4. Factual Background
The facts pertinent to the decision in this case are:
(i) The Complainant is authorized to act on behalf of the owner of the CLARISONIC trademark, which has been registered in many countries, inter alia:
- The U.S. Trademark No. 3087196, registered on May 2, 2006 in Class 21.
- The China Trademark No. 8275826, registered on May 14, 2011 in Class 5.
- The China Trademark No. 8514771, registered on September 7, 2011 in Class 35.
(ii) The Complainant has used the trademark CLARISONIC, on which the Complaint is based, on its sonic skin care devices.
(iii) The Disputed Domain Names were registered between February and June, 2013.
5. Parties’ Contentions
A. Complainant
The Complainant’s contentions could be summarized as follows:
(i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Disputed Domain Names incorporate the whole of the Complainant’s CLARISONIC trademark. In fact, the terms “sale”, “vip”, “shop”, “online”, “official”, “store/s” refer to the Complainant’s online sales, the words “skincare” and “sonic” are descriptive of products made by the Complainants and the geographical indications “Australia”, “Australias”, “Au”, “Aus”, “Singapore”, “Singapores”, “Sg”, “Uk”, “Uks”, “Us”, “Nz”, “Ireland”, “Canada”, “Cannada” are apt to make Internet users mistakenly believe that the web sites might be the Complainant’s official web sites in such countries. The generic Top-Level Domain “.com” and “net” are merely instrumental to the use of the Internet so the Disputed Domain Names remain confusingly similar despite their inclusion.
(ii) The Respondents have no rights or legitimate interests in respect of the Disputed Domain Names.
The Respondents are not licensees, authorized agents of the Complainant or in any other way authorized to use the Complainant’s CLARISONIC trademark. The Respondents are not commonly known by the Disputed Domain Names as an individual, business or other organization since “Clarisonic” is not their family name. The majority of the Disputed Domain Names are or were redirected to commercial web sites where, in the absence of any disclaimer of non-affiliation, the Complainant’s trademark features prominently and unauthorized products under the CLARISONIC trademark, which are prima facie counterfeit, are or were offered for sale. The Respondents obviously use or intend to use the Disputed Domain Names for commercial gain.
No evidence shows the Respondents use, or made demonstrable preparations to use, the Disputed Domain Names with a bona fide offering of goods or services before any notice of the dispute. The Respondents also fail to accurately and prominently disclose their relationship with the trademark holder, and thus cannot claim rights or legitimate interests according to the Oki Data principles. As an additional element within the frame of rights or legitimate interests, the Respondents did not reply to the Cease and Desist letter sent by the authorised representative of the Complainant.
(iii) The Disputed Domain Names were registered and are being used in bad faith.
The Complainant’s trademark has been extensively used on its products since 2004 and the well-known character of the CLARISONIC trademark has been recognized by prior UDRP panels. The Respondents could not have possibly ignored the existence of the Complainant’s CLARISONIC trademark while registering these confusing similar Disputed Domain Names. The Respondents registered all of the 64 Disputed Domain Names within less than six months. On the majority of the corresponding web sites, the CLARISONIC trademark features prominently and products bearing the trademark are sold. The Respondents were certainly aware of the Complainant’s rights in the CLARISONIC trademark and intentionally registered the Disputed Domain Names to capitalize on the goodwill of the CLARISONIC trademark. Therefore, the Respondents registered the Disputed Domain Names in bad faith.
With reference to the use of the domain names in bad faith, the majority of the Disputed Domain Names are used in connection with web sites generating the impression to be the Complainant’s official web sites, publishing the CLARISONIC trademark and official images and offering for sale unauthorized products bearing the CLARISONIC trademark, which are prima facie counterfeit. The Respondents are intentionally attracting Internet users for commercial gain to their web sites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondents’ web sites. The postal address of the Respondents is incorrect. The Respondents failed to reply to the Complainant’s Cease and Desist letter. These are also factors to be taken into consideration of the Respondents’ bad faith. Furthermore, the Respondents registered 64 Disputed Domain Names confusingly similar to Complainant’s trademarks. The Respondents have engaged in a pattern of conduct preventing the owner of the trademark from reflecting the mark in a corresponding domain name. Therefore, the Disputed Domain Names are being used in bad faith.
B. Respondents
The Respondents did not reply to the Complainant’s contentions.
6. Preliminary Procedural Issues
A. Consolidation of Multiple Domain Names and Respondents
Paragraph 3(c) of the Rules provides that “[t]he complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.” Paragraph 10(e) of the Rules provides that “[a] Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.” It is established that the consolidation of multiple disputed domain names under paragraph 3(c) or 10(e) of the Rules may be appropriate, even where differently named disputed domain name registrants are involved, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the web sites to which the disputed domain names resolve. Common control has been found by UDRP panel based on commonalities, such as shared administrative or technical contacts and shared postal or email addresses in registrant information, or other circumstances in the record indicating that the respondents are related, and also, substantially identical content of the web sites to which multiple disputed domain names resolve (see paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”); Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,
WIPO Case No. D2010-0281).
In the present case, the Panel finds that the Complainant has established that the Disputed Domain Names are subject to the common control of the Respondents based on the following facts:
(i) All of the 64 Disputed Domain Names were registered to the same fictitious address, the same Registrar and the same domain name servers (ns13.dns.com.cn, ns14.dns.com.cn) (Adobe Systems Incorporated v. Domain OZ,
WIPO Case No. D2000-0057, where common control has been found based on the same post office box number and email address in the registration information of the disputed domain names.).
(ii) Except for two Disputed Domain Names, <clarisonicmiasg.com> and <clarisonicsingaporemia2.com>, the remaining 62 of the 64 Disputed Domain Names sell or sold the same sonic skin care device of the Complainant. These web sites, to which 62 of the 64 Disputed Domain Names resolve, use or used identical pictures, substantially similar web site content and descriptions. Moreover, 60 of these 62 Disputed Domain Names resolve or resolved to web sites on which the CLARISONIC trademark is consistently and prominently used in an identical fashion either shown as the screenshots in the Annex 7.2 to the Complaint or shown as those in the 4.b part of Annex 7.4 thereto. 53 of these 62 Disputed Domain Names even share the same contact email address, […]@safeonlinesales.com, revealed to the Internet users (General Electric Company v. Marketing Total S.A,
WIPO Case No. D2007-1834; Balenciaga v. Ni Hao, Shen Dan, Wu Dan, Zhu Qin, Yan Wei,
WIPO Case No. D2011-1541).
(iii) In relation to the Disputed Domain Names, <clarisonicmiasg.com> and <clarisonicsingaporemia2.com>, they are both inactive and therefore no commonality to be found between the web sites to which these two Dispute Domain Names resolve and those to which this other 62 Disputed Domain Names resolve. However, these two Disputed Domain Names were also registered to the same fictitious address as the other 62 Disputed Domain Names. The email addresses and facsimile numbers registered to these two Disputed Domain Names all fail to receive emails or facsimiles and appear to be fictitious. The fictitious email addresses and facsimile numbers reveals that it is not a coincidence that these two Disputed Domain Names were also registered to the same fictitious address in Beijing, China. Therefore, these two Disputed Domain Names also appear to be subject to the common control as the other 62 Disputed Domain Names named in the Complaint.
On the basis of the evidence provided by the Complainant, the Panel concludes on the preponderance of that evidence that all 64 of the Disputed Domain Names are either the creation of one entity (identity unknown or are under the common control of that entity). Either way, the Panel finds that the Complaint is properly formulated against the Respondents and all of the 64 Disputed Domain Names. All of the Respondents failed to respond to the Complaint. The Panel is satisfied that in so concluding the Panel is causing no disadvantage or unfairness to either party or any of the parties, as the case may be (Apple Inc. v. Fred Bergstrom, LottaCarlsson, Georges Chaloux and Marina Bianchi,
WIPO Case No. D2011-1388). Moreover, the Respondents of the Disputed Domain Names, <clarisonicmiasg.com> and <clarisonicsingaporemia2.com>, failed to provide accurate contact information, difficulties in respect to notification in this case are due to its own actions. Because the Respondents of these two Disputed Domain Names have also defaulted in providing a response to the Complaint, the Panel considers that it would place an unjustifiable economic burden on the Complainant to require it to initiate separate administrative proceedings against each of these Respondents (Adobe Systems Incorporated v. Domain OZ,
WIPO Case No. D2000-0057). Therefore, the Panel finds that the Disputed Domain Names are subject to common control and it is fair and equitable to consolidate 64 Disputed Domain Names and the Respondents into one administrative proceeding under paragraph 3(c) or 10(e) of the Rules, and the Respondents are collectively referred to as the “Respondent” unless otherwise indicated hereinafter.
B. Language of Proceeding
Paragraph 11(a) of the Rules provides that “unless 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 Rules allow the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,
WIPO Case No. D2008-0293). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl,
WIPO Case No. DCC2006-0004). WIPO Overview 2.0 further states: “in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (See paragraph 4.3 of WIPO Overview 2.0).
The Complainant requested that the language of the proceeding be English. The Registration Agreements for the Disputed Domain Names are all in Chinese. In determining the appropriate language of the proceedings, the Panel notes the following facts:
(i) The web sites under the active 62 Disputed Domain Names are all in English. English is used extensively on the web sites to which these Disputed Domain Names resolve, and they accept payment in GBP, Euros, USD, Canadian, New Zealand and Australian dollars, which indicates that the Respondent’s business on the web sites under the Disputed Domain Names are not exclusively directed to Chinese speakers.
(ii) The Respondent has chosen generic English words in conjunction with the Complainant’s CLARISONIC trademark in different variations to form the Disputed Domain Names.
(iii) The Respondent did not respond to the bilingual email communication or submit any reply or response to the Complainant’s language request.
Given to the foregoing facts, the Panel is satisfied that the Respondent has sufficient familiarity with English that the Respondent should be able to understand the language of the Complaint and has chosen not to respond. The Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding and the decision will be rendered in English.
7. Discussion and Findings
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules, that (i) [the disputed domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]”
The Complainant has produced registration certificates of the CLARISONIC trademark herein and the power of attorney issued by the CLARISONIC trademark owner establishing that the Complainant is authorized to act on the behalf of the CLARISONIC trademark owner. Therefore, the Panel finds that the Complainant has rights in the CLARISONIC trademark sufficient to file this UDRP Complaint.
The threshold test for confusing similarity under paragraph 4(a)(i) of the Policy involves a comparison between the trademark and the domain name itself to determine the likelihood of confusion by Internet users. The trademark at issue generally needs to be recognizable as such within the domain name, and the addition of common, dictionary, descriptive or negative terms are typically not regarded as sufficient to prevent threshold confusion by Internet users (see paragraph 1.2 of WIPO Overview 2.0).
All of the Disputed Domain Names incorporate the Complainant’s CLARISONIC trademark in its entirety, with other descriptive words, such as “mia” (which means “my” in Italian), “skin”, “care”, “sale”, “on sale”, “sales”, “vip”, “sonic”, “shop”, “official”, “store” and “stores”, geographical terms (including misspelled one) or abbreviations, such as “nz”, “us”, “uk”, “sg”, “australia”, “ireland”, “au”, “aus”, “cannada”, “canada”, “singapore”, meaningless letters, such as “s” and “i”, or/and the symbol “-”, all of which does not mitigate the likelihood of confusion between the Disputed Domain Names and the Complainant’s CLARISONIC trademark (J. Choo Limited v. Weng Huangteng,
WIPO Case No. D2010-0126; J. Choo Limited v. Hui Wang aka Wang Hui,
WIPO Case No. D2010-0534).
As for the applicable top-level suffix such as “.com” or “.net” in the Disputed Domain Names, it is a consensus view that it could usually be disregarded under the confusing similarity test (MADRID 2012, S.A. v. Scott Martin-MadridMan Websites,
WIPO Case No. D2003-0598; also see paragraph 1.2 of the WIPO Overview 2.0).
Accordingly, the Panel finds that all of the Disputed Domain Names are confusingly similar to the Complainant’s trademark and the condition of paragraph 4(a)(i) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules, that […] (ii) [the respondent has] no rights or legitimate interests in respect of the [disputed] domain name[.]”
Paragraph 4(c) of the Policy sets out the following several circumstances “[which], in particular but without limitation, if found by the Panel, shall demonstrate [the respondent’s] rights or legitimate interests to the [disputed] domain name for the purposes of Paragraph 4(a)(ii) [of the Policy]:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of the WIPO Overview 2.0, which states:
“[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
The consensus view of UDRP panels on the rights or legitimate interests of a reseller or distributor under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.3 of the WIPO Overview 2.0, whereby:
“[n]ormally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. […].” (See also, Oki Data Americas, Inc. v. ASD, Inc.,
WIPO Case No. D2001-0903; National Association of Realtors v. John Fothergill,
WIPO Case No. D2010-1284).
The Complainant confirms that the Respondent is not licensed or authorized to use the CLARISONIC trademark in any form. The mere registration of the Disputed Domain Names does not establish rights or legitimate interests in the Disputed Domain Names herein.
According to the WhoIs database record, none of the registered names of the Respondent is in any way related to the Complainant’s CLARISONIC trademark. There is no further evidence indicating that the Respondent is commonly known by the Disputed Domain Names or the name “Clarisonic” (Dolce & Gabbana S.r.l. v. Cheng Mingchun,
WIPO Case No. D2013-1104).
The web sites under the active, or once active, Disputed Domain Names (i.e. 62 of the Disputed Domain Names other than <clarisonicmiasg.com> and <clarisonicsingaporemia2.com>) all show images and/or descriptions of the Complainant’s sonic skin care devices with the CLARISONIC trademark for sale of these sonic skin care devices. It is obvious that the Respondent uses the Disputed Domain Names for commercial gain.
The Complainant claims that the products sold on the active, or once active, Disputed Domain Names are prima facie counterfeit due to their low prices. The web sites selling the Complainant’s sonic skin care devices with the CLARISONIC trademark under the active, or once active, Disputed Domain Names do not actually and prominently disclose the Respondent’s relationship with the Complainant. Therefore, the Panel needs not decide whether the goods sold on the web site are genuine, since the Respondent cannot claim rights or legitimate interests to the Disputed Domain Names when it fails to accurately and prominently disclose the relationship between the parties (Oki Data Americas, Inc. v. ASD, Inc.,
WIPO Case No. D2001-0903).
Therefore, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in respect of the Disputed Domain Names. The burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Names.
The Respondent has not filed any allegation or evidence indicating any rights or legitimate interests as demonstrated in paragraph 4(c) of the Policy.
For those inactive Disputed Domain Names, if the Respondent was engaged in or preparing to engage in a bona fide offering of goods or services, it should be able to provided evidence to that effect. The term “demonstrable preparations to use” requires real preparations “that are calculated to result in deployment of an operational web site addressed by that name” (Groupe Auchan v. Gan Yu,
WIPO Case No. D2013-0188). The Respondent does not submit such evidence.
Since the Respondent did not provide any allegation or evidence indicating that it has rights or legitimate interests in the Disputed Domain Names, given the evidence provided by the Complainant, it is reasonable to conclude that the Respondent deliberately chose to include the Complainant’s trademark in the Disputed Domain Names for the purpose of achieving commercial advantage by misleadingly diverting Internet users to the web sites at the Disputed Domain Names and that such use cannot be considered a bona fide offering of goods or legitimate noncommercial or fair use.
Having considered the above, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy explicitly states, in relevant part, that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
In relation to bad faith at the time of registration, the Panel notes that the Complainant’s CLARISONIC trademark has been registered in many countries around the world and was well known in many countries prior to the registrations of the Disputed Domain Names in 2013. The Respondent’s choice to incorporate the CLARISONIC trademark as the only distinctive element of the 64 Disputed Domain Names suggests that the Disputed Domain Names were registered in bad faith. No allegation or evidence was put forth to suggest that the Respondent selected the CLARISONIC trademark as used in the Disputed Domain Names for any reason other than the reputation of the Complainant’s CLARISONIC trademark. The screenshots of the web sites under the Disputed Domain Names also reveal the Respondent’s knowledge of the CLARISONIC trademark. Therefore, the Panel finds that the Respondent registered the 64 Disputed Domain Names in this case in bad faith.
In relation to use in bad faith, the Panel notes that the Respondent uses CLARISONIC trademark on the prominent part of the web sites under the active, or once active, Disputed Domain Names. These web sites all sell the sonic skin care devices with the Complainant’s CLARISONIC trademark. There is no accurate and prominent indication of the relationship between the Respondent and the Complainant on the web sites. The Respondent deliberately designs the web sites under the active, or once active, Disputed Domain Names to create the impression that these web sites are official, affiliated or endorsed web sites of the Complainant for the Respondent’s commercial gain. It is obvious that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web sites by creating a likelihood of confusion. Therefore, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web sites by creating a likelihood of confusion as per paragraph 4(b)(iv) of the Policy.
For those inactive Disputed Domain Names, <clarisonicmiasg.com> and <clarisonicsingaporemia2.com>, the fact that the Respondent passively holds these two inactive Disputed Domain Names does not prevent the Panel from a finding of use in bad faith. The Panel looks into the present case in its entirety and finds that the Respondent has engaged in a large scale registration of domain names that incorporate the CLARISONIC trademark as the only distinctive part. Many of the Disputed Domain Names are currently being used in bad faith as described above. The address, email address and facsimile number registered to these inactive Disputed Domain Names are fictitious. It is a fair inference that the Respondent passively holds these inactive Disputed Domain Names for some future abusive use detrimental to the Complainant (Jupiters Limited v. Aaron Hall,
WIPO Case No. D2000-0574).
Having considered the above, the Panel finds that the Disputed Domain Names have been registered and are being used in bad faith, and thus the Complainant fulfills the condition provided in 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 Names, <clarisonicmia-nz.com>, <clarisonicskincareus.com>, <ukclarisonic.net>, <sgclarisonics.com>, <australiasclarisonic.com>, <clarisonic-ireland.com>, <clarisonic-nz.com>, <clarisonicaumia.com>, <clarisonicaus.com>, <clarisonicaustraliasale.com>, <clarisonicmia-australia.com>, <clarisonicmia-cannada.com>, <clarisonicmia-vip.com>, <clarisonicmiaaus.com>, <clarisonicmianz.com>, <clarisonicmiasalesuk.com>, <clarisonicnzshop.com>, <clarisonics-australia.com>, <clarisonics-canada.com>, <clarisonics-singapore.com>, <clarisonicsg.com>, <clarisonicsaumia.com>, <clarisonicsaustralias.com>, <clarisonicsingaporemia.com>, <clarisonicsingaporesmia.com>, <clarisonicsonicau.com>, <clarisonicsmia-au.com>, <clarisonicsmianz.com>, <clarisonicsmias.com>, <clarisonicukonline.com>, <clarisonicuks.com>, <iclarisonicaustralia.com>, <miaclarisonicnz.com>, <officialclarisonicau.com>, <shopclarisonicau.com>, <sgclarisonic.com>, <clarisonic-aus.com>, <clarisonic-sg.com>, <clarisonicauonsale.com>, <clarisonicausmia.com>, <clarisonic-australia.net>, <clarisonicmiasg.com>, <auclarisonicmia.com>, <clarisonicsingaporemia2.com>, <clarisonics-sg.com>, <clarisonicnzsale.com>, <clarisonicsalesg.com>, <clarisonicsaus.com>, <clarisonicsgstore.com>, <clarisonicsnz.com>, <clarisonicssingapores.com>, <officialclarisonic-nz.com>, <clarisonicssg.com>, <clarisonics-aus.com>, <clarisonicsmiasg.com>, <clarisonicsmia-nz.com>, <nzclarisonics.com>, <clarisonicsgstores.com>, <ausclarisonic.com>, <clarisonic-nz.net>, <clarisonics-australia.net>, <clarisonicshopnz.com>, <clarisonic-singapore.net>, <singaporeclarisonic.com> be transferred to the Complainant.
Peter J. Dernbach
Sole Panelist
Date: October 15, 2013
