Clarins v Ronald Malcolm

WIPO Case No. DAE2025-0007

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Clarins v. Ronald Malcolm

Case No. DAE2025-0007

1. The Parties

The Complainant is Clarins, France, represented by Tmark Conseils, France.

The Respondent is Ronald Malcolm, United States of America.

2. The Domain Name and Registrar

The disputed domain name <clarinsuae.ae> is registered with AE Domain Administration (.aeDA).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2025. registrant verification in connection with the disputed domain name. On April 22, 2025, .aeDA transmitted by email to the Center its verification response confirming the registrant and contact information for the disputed domain name.

The Center verified that the Complaint satisfied the formal requirements of the UAE Domain Name Dispute
Resolution Policy for – UAE DRP approved by .aeDA (the “Policy”), the Rules for UAE Domain Name
Dispute Resolution Policy – UAE DRP (the “Rules”), and the Supplemental Rules for UAE Domain Name
Dispute Resolution Policy – UAE DRP (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 May 5, 2025. In accordance with the Rules, paragraph 5(a), the due date for Response was May 25, 2025. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on June 3, 2025.

The Center appointed Torsten Bettinger as the sole panelist in this matter on June 10, 2025. 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

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4. Factual Background

The Complainant is French cosmetics and skincare company founded in 1954 and headquartered in Paris,

France.

The Complainant is the owner, amongst others, of the following trademark registrations for CLARINS:

- French trademark Reg. No.1637194, registered on June 14, 1991, and covering notably cosmetics in class 3 and beauty care services in class 44;

- European Union trademark Reg. No. 005394283, registered on October 5, 2010, and covering notably cosmetics in class 3 and cosmetic and beauty care services in class 44;
- United Kingdom trademark Reg. No. UK00905394283 registered on October 5, 2010, and covering notably cosmetics in class 3 and cosmetic and beauty care services in class 44;

- United States of America Trademark Reg. No. 73746658, registered on January 2, 1990 and covering cosmetics and make-up goods in class 3,

The Complainant has registered and uses the domain name <clarins.com> to promote its goods around the
world as well as country-code domain names like <clarins.fr>, <clarinsusa.com>, <clarins.es> and
<clarins.ae>.

All that is known about the Respondent is the name and contact information provided by the Registrar to the prices.

Center. The disputed domain name currently resolves to a website that prominently displays the

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

The Complainant states that the Complainant has been doing business in France for more than 60 years and is well-known in France and well-established worldwide.

With regard to the requirement of “identity or confusing similarity between the trademark and the domain name” pursuant to paragraph 4(a)(i) of the Policy, the Complainant submits that:

- the country-code top-level domain (“.ae”) should be disregarded for the purpose of assessing the similarity between the disputed domain name and the Complainant’s trademark;

- the addition of the term “uae” in the disputed domain name does not dispel the confusing similarity

with the Complainant’s mark;

- on the contrary, “uae” is merely a geographic and descriptive abbreviation referring to the United Arab

Emirates and is commonly understood as such. It merely indicates that the website targets consumers located in that region;

- the inclusion of the term “uae” may actually exacerbate user confusion, as the Complainant is also

active in the UAE, including through its official domain <clarins.ae>;

- as a result, Internet users are likely to believe that the disputed domain name resolves to an online

store operated by the Complainant or by one of its official authorized distributors.

With regard to the Respondent having no rights or legitimate interests in the disputed domain name, the

Complainant submitted that:

- the Respondent is not affiliated with the Complainant in any way and has never been authorized to

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use or register the name “Clarins,” including as a domain name;
- the Respondent is not making fair use of the disputed domain name, as it is being used in connection with an unauthorized website offering infringing cosmetic products bearing the CLARINS trademark;
- the website available under the disputed domain name is a blatant imitation of the Complainant’s official website, prominently displaying the CLARINS trademark;

- the Respondent reproduces the same visual elements found on the Complainant’s official website;

- a comparison of both websites reveals that the layout, product images, and presentation are

substantially similar;

- the Respondent offers infringing cosmetic products at prices lower than those of the genuine

CLARINS products;
- by reproducing the Complainant’s well-known trademarks and imitating the look and feel of the official website, the disputed domain name creates a strong risk of implied affiliation;
- this risk is particularly high because the Respondent is not related to the Complainant in any way, nor
is the Respondent authorized or capable of offering products of the same quality as those of the
Complainant;

- the Respondent deliberately misleads consumers and diverts them from the Complainant’s official

website in order to generate commercial gain;
- the website is likely to deceive Internet users and may be used to collect login credentials and other
sensitive information, including banking details, under the guise of a phishing scam. Such conduct cannot
constitute a bona fide offering of goods or services;

- the website includes a login page that may mislead users into believing they are accessing their official CLARINS accounts.

Finally, with regard to the disputed domain name having been registered or being used in bad faith, the

Complainant argues that:

- the Respondent could not have been unaware of the existence of the Complainant, CLARINS, its

trademarks, and commercial activities, particularly as the Respondent reproduces the Complainant’s CLARINS logo identically on its website, along with visual depictions of the Complainant’s products;

- the Respondent was clearly aware of the Complainant’s trademark rights and reputation at the time of registering the disputed domain name;

- the numerous similarities between the website at <clarinsuae.ae> and the Complainant’s official

website are too extensive to be coincidental;
- these circumstances clearly demonstrate that the Respondent is using the domain name in bad faith,
primarily to create a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship,

affiliation, or endorsement of the website;

- the Respondent is exploiting the Complainant’s trademark in order to mislead consumers, potentially
harvest usernames and passwords, and generate “click-through” commissions from the diversion of Internet
users — conduct that is commonly recognized as evidence of bad faith registration and use.

- the fact that the website was deliberately designed to create the false impression that users have

reached the Complainant’s official website demonstrates the Respondent’s intent to deceive and defraud the information via the login interface;

- this conduct constitutes clear evidence that the Respondent is using the disputed domain name as

part of phishing attempts targeting the Complainant’s customers. It is well established that the use of a
domain name to facilitate phishing scams is indicative of bad faith registration and use;

- it is highly likely that the Respondent seeks to attract and confuse Internet users into believing that the website is operated by, or authorized by, the Complainant to sell CLARINS products at discounted prices

B. Respondent

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

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6. Discussion and Findings

Paragraph 6(a) of the Policy states that the Complainant must prove each of the three following elements:

(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 has been registered or is being used in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. 1

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The disputed domain name incorporates the Complainant’s mark CLARINS in its entirety and merely appends the geographic abbreviation “uae,” along with the country code Top-Level Domain (“ccTLD”) “.ae” for the United Arab Emirates.

It is well established under the .aeDA that the mere addition of a geographic abbreviation such as “uae” to a trademark does not avoid a finding of confusing similarity. Furthermore, the addition of the ccTLD “.ae” is a standard registration requirement and is typically disregarded when assessing confusing similarity under the first element.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s

CLARINS trademark within the meaning of paragraph 6(a)(i) of the Policy.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 6(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the material in the Complaint and its annexes, the Panel finds that the Complainant has established prior and extensive rights in the CLARINS mark. The Complainant has stated that it has not licensed or authorized the Respondent to use those mark in any capacity, including in connection with the

1Given the similarities between the Policy and Rules on the one hand, and the Uniform Domain Name Dispute Resolution Policy

(“UDRP”) and associated rules on the other hand, the Panel considers some UDRP precedents as well as the applicable sections of the
WIPO Overview 3.0, relevant to the present proceeding and will refer to them where appropriate.

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disputed domain name.

The Complainant provided evidence that the disputed domain name has been used for a website which is a blatant imitation of the Complainant’s official website, prominently displaying the CLARINS trademark and reproducing the same visual elements found on the Complainant’s official website.

A comparison of both websites reveals that the layout, product images, and presentation are substantially similar and that the Respondent offers cosmetic products at prices lower than those of the genuine CLARINS products.

Such use of the disputed domain name does not confer any right or legitimate interest under the Policy. To the contrary, it demonstrates an attempt to misleadingly profit from the Complainant’s trademark by trading on its reputation and goodwill.

Although given the opportunity, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 6(c) of the Policy or otherwise, any rights or legitimate interests in respect of the disputed domain name.

The Respondent has not submitted any evidence indicating that it is the owner of any trademark or that it is commonly known by the disputed domain name. Furthermore, there is no evidence indicating that the Respondent intends to make 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.

Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel finds that the Complainant has also proven the requirement under paragraph 6(a)(ii) of the Policy.

C. Registered or is Being Used in Bad Faith

The Panel notes that, for the purposes of paragraph 6(a)(iii) of the Policy, paragraph 6(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration or use of a domain name in bad faith.

In the present case, the Complainant provided evidence of multiple trademark registrations for the CLARINS mark. The Complainant’s trademark CLARINS is distinctive and has been extensively used for many years.

The disputed domain name incorporates the Complainant’s mark CLARINS in its entirety and merely appends the geographic abbreviation “uae”. The Panel therefore finds that the Respondent had actual knowledge of the Complainant’s trademark rights when registering the disputed domain name and therefore registered the disputed domain name in bad faith.

The Complainant has provided evidence that indicates that the disputed domain name has been used for a website which imitates the Complainant’s official website, prominently displaying the CLARINS trademark and reproducing the same visual elements found on the Complainant’s official website and cosmetic products at prices lower than those of the genuine CLARINS products.

This conduct is disruptive to the Complainant’s business and misleads consumers for commercial gain. It constitutes bad faith use under paragraph 6(b)(iv) of the Policy, as the Respondent has intentionally attempted to attract Internet users to its website for commercial benefit by creating a likelihood of confusion with the Complainant’s mark.

Additionally, the Respondent’s conduct satisfies paragraph 6(b)(iii) of the Policy, as the Respondent’s attempt to impersonate an official CLARINS website is clearly disruptive of the Complainant’s legitimate business.

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Accordingly, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, within the meaning of paragraph 6(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <clarinsuae.ae> be transferred to the Complainant.

/Torsten Bettinger/
Torsten Bettinger
Panelist
Date: June 24, 2025