F.C.F., Inc.
415 Madison Avenue
New York, New York. 10017

Domain Name Clearing Company
4640 Jewell, Suite 202A
San Diego, California 92109

Domain Name: clarins.com Domain Name Registrar: Network Solutions Date of Domain Name Registration: March 16, 1997

Response filed: March 23, 2000.     PROCEDURAL FINDINGS

On March 23, 2000m, the date of its response, Respondent also commenced proceedings in the San Diego County Superior Court against the complainant (Case No. 745530). In that proceeding, Respondent seeks $30,000 plus interest and attorney’s fees, alleging breech of contract to settle the domain name dispute. The Complainant obtained a trademark CLARINS^® January 2, 1990. The trademark is used in the marketing of products including skin cleansers and other skin care products. The Complainant licensed CLARINS^® USA, Inc. to use its trademark in connection with the sale of CLARINS^® products in the United States. On March 16, 1997, the Respondent registered the domain name clarins.com with Network Solutions, Inc., a registrar of domain names. Network Solutions verified that the Respondent is the registrant for the domain name clarins.com. By registering the domain name "clarins.com" with Network Solutions, the Respondent agreed to resolve any dispute regarding its domain name through ICANN’s Uniform Domain Name Dispute Resolution Policy. The above captioned matter came on for an administrative hearing on March 30, 2000 before the undersigned presiding panelist. The Complainant was represented by Charles V. Berwanger and S. Wayne Rosenbaum, 401 West A Street, Suite 2600, San Diego, California, 92101. The Respondent was represented by Chris Truax, Esquire, PO Box 2127, La Mesa, California, 91943. This matter was submitted for decision in accordance with ICANN’s Uniform Domain Name Dispute Resolution and Policy and Rules. A draft decision was prepared on March 30, 2000. On March 31, 2000 the Complainant caused to Provider herein to submit to the undersigned presiding panelist a REQUEST TO PANEL THAT FURTHER STATEMENT FROM F.C.F. SET FORTH BE CONSIDERED. Rule 12 of the Policy provides, "In addition to the complaint and the response, the Panel may request, in its sole discretion further statement or documents from either parties." The Panel concluded that the matter should be considered on the basis of the original complaint and response. The additional materials were not considered. The original draft decision prepared March 30, 2000 is issued herein without other reference or consideration of the agreements or exhibits set forth in Complainant’s "REQUEST." The Respondent sought a dismissal on several grounds. First, that the Respondent and the Complainant reached a settlement in this dispute, and that the Complainant was attempting to leverage its position in a contract dispute by use of the ICANN process. It was also urged that the panel should dismiss the complaint because of litigation begun to resolve the matter in San Diego County Superior Court. Finally it was maintained that the matter should be dismissed because Exhibit #1 of the complaint consisted of a photocopy of the trademark registration for "CLARINS^®", it was maintained that the original registration had been granted for a term of 10 years from January 2, 1990 and that "In other words the CLARINS^® trademark expired on January 3, 2000". With regard to the contention that the domain name dispute has been settled, the greater weight of the evidence did not support that conclusion. The purported settlement agreement, which was dated and signed by Mr. Truax December 3, 1999 on behalf of the Respondent, was not signed by the Complainant. While the panel understands that a general policy of law in favor of resolving disputes by settlement, the panel is also mindful of its responsibilities to issue a timely decision and one in compliance with the rules for Uniform Domain Name Dispute Resolution Policy. This decision is issued prior to having completely executed settlement agreements, and, as such, does not rely on any purported settlement agreement. The Respondent commenced proceedings against the Complainant in San Diego County Superior Court seeking money, damages and other relief based on breech of contract. Ruling 18(a) provides in part "In the event of any legal proceedings initiated prior to or during the administrative proceeding…the panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision." Having reviewed the complaint and the response discretion was exercised in favor of proceeding to a decision. The greater weight of the evidence did not support a finding that the Complainant and Respondent had entered into a contract to settle the domain name dispute.

On March 16, 1997, the Respondent registered clarins.com as a domain name. On October 15, 1997, the Complainant wrote the Respondent demanding that it cease use of the CLAIRNS^® name and mark and further that the domain name clarins.com be assigned and transferred to the Complainant. On October 24, 1997, the Complainant proceeding under the Network Solutions Domain Name Dispute Policy Complainant asserted that the domain address clarins.com was registered in violation of the legal rights of the Complainant. The clarins.com domain name was subsequently placed on hold pending resolution of the dispute by the parties. The Respondent has not developed a website using the domain name at issue. The domain name at issue is not, identified with or related to a business or other interest of the Respondent. The Complainant contends that the Respondent has registered as a domain name a mark which is identical to the service mark and trademark registered and used by the Complainant, that Respondent has no right to legitimate interest in respect to the domain name at issue, and that the Respondent has registered and is using the domain name at issue in bad faith. The domain name clarins.com is identical to the trademark and service mark registered and used by the Complainant. It was also apparent that the Respondent has no rights or legitimate interests with respect to the domain name. Since the domain name was registered the Complainant has communicated by telephone, by mail, and eventually by legal proceeding that Respondent’s domain name registration was an imposition on its exclusive use of CLARINS^®. The Respondent has offered to assign its rights to the Complainant for $30,000. The panel concluded that the name was registered in bad faith. However, the name must not only be registered in bad faith, but it must be used in bad faith. The issue to be determined is whether the respondent used the domain name in bad faith. It is not disputed that the Respondent did not establish a website corresponding to the registered domain name. The policy at paragraph 4(b)(i) provides that

Having reviewed the evidence submitted by the parties, it was concluded that the Respondent registered the domain name clarins.com for the primary use of selling, renting or otherwise transferring it to the Complainant owner of the CLARINS^® trademark and service work for valuable consideration in excess of the documented out of pocket costs directly related to the domain name.   DECISION   It was concluded by the panel that the domain name registered by the Respondent is identical or confusingly similar to the trademark and service mark in which the Complainant has rights, and that the Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondent’s domain name has been registered and is being used in bad faith. Accordingly, pursuant to paragraph 4.i of the Policy, the panel requires that the registration of the domain name clarins.com be transferred to the Complainant.

Dated: April 5, 2000 James A. Crary, Presiding Panelist