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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Procter & Gamble Company and Braun GmbH v. YongHoon Lee, SoftTech

Case No. D2020-2890

1. The Parties

The Complainant is The Procter & Gamble Company, United States of America and Braun GmbH, Germany, represented by Studio Barbero, Italy.

The Respondent is YongHoon Lee, SoftTech, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <braunshop.com> is registered with Domain.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2020. On November 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 2, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2020.

The Center appointed Alistair Payne as the sole panelist in this matter on December 3, 2020. 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 Proctor and Gamble company (“First Complainant”) is the well-known manufacturer of a wide range of consumer goods. Braun GmbH (“Second Complainant”) has since 2005 been a subsidiary and member of the Proctor & Gamble group of companies. The Second Complainant operating since the 1920’s produces a range of small household appliances with a particular current focus on business segments concerned with electronic appliances for personal grooming. The Second Complainant’s business operates worldwide and is very substantial. In the 2018/2019 year it sold USD 1030.2 million of products, including USD 26 million of products in the Republic of Korea.

The Second Complainant owns numerous trade mark registrations worldwide for the BRAUN trade mark, including in particular Korean trade mark registration 365667 filed on November 24, 1995. and registered on June 18, 1997. The First Complainant owns the majority of the portfolio of domain names used by both complainants including those that incorporate the BRAUN trade mark. The primary domain name for BRAUN products is at <braun.com> and the website dedicated to Republic of Korea is located at “www.braun.kr/ko-kr”.

The disputed domain name was registered on October 27, 2005, by the Respondent. At the time of filing the Complaint it resolved to a website hosting sponsored links mainly related to BRAUN trademarks and hair removal products and those of its competitors.

5. Parties’ Contentions

A. Complainants

The Complainants note that they have brought a single proceeding against the Respondent on the basis that they are part of the same corporate group and the disputed domain name incorporates the BRAUN trade mark owned by the Second Complainant but the First Complainant is the parent company and owns the majority of domain names owned by the group that incorporates the BRAUN trade mark. The Complainants say that they have a common grievance against the Respondent and that it is procedurally efficient to consolidate their complaints into this proceeding. References after this point to the Complainant, will be to both the First and Second Complainants as a single entity, unless otherwise noted.

The Complainant submits that it owns registered trade mark rights as set out above in its BRAUN trade mark. It says that the disputed domain name wholly incorporates its mark and is therefore confusingly similar to it. It submits that the additional word “shop” in the disputed domain name is non-distinctive and in reality only increases the degree of confusion with the well-known BRAUN mark.

The Complainant says that the Respondent is not a licensee or authorised agent of the Complainant and is not otherwise permitted to use the Complainant’s BRAUN trade mark. The Complainant submits that it is not in possession of, nor aware of the existence of any evidence demonstrating that the Respondent might be commonly known by a name corresponding to the disputed domain name, as an individual, business, or other organisation. Neither, says the Complainant, has the Respondent provided any evidence of use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.

The Complainant says that the disputed domain name has always resolved to webpages displaying several sponsored links, which generate revenues, via the pay per-click (”PPC”) system, to the Respondent as owner of the disputed domain name. In addition, the Complainant notes that the sponsored links published on this webpage make explicit reference to well-known trademarks of the Complainant. This use says the Complainant is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. It further notes that the Respondent’s offer for sale of the disputed domain name for at least USD 2,500 and subsequent offer to transfer it for USD 5,000, being amounts far in excess of the Respondent’s out of pocket costs, is not consistent with legitimate rights or bona fide use. Finally, in this regard the Complainant notes that the Respondent did not reply to cease and desist letter which it says is also not consistent with the Respondent having rights or legitimate interests in the disputed domain name.

The Complainant submits that the BRAUN mark is well-known worldwide, including in the Republic of Korea and has been used for approximately the last century. It notes that the degree of renown attaching to the BRAUN mark has been recognized in various past decisions including by panels in: The Procter & Gamble Company and Braun GmbH v. Domain Admin, FBS INC, Whoisprotection.biz / Erol Çakir, WIPO Case No. D2020-1959; Procter & Gamble Business Services Canada Company, The Gillette Company LLC, Braun GmbH and The Procter & Gamble company v. Whois privacy protection service, Internet Invest, Ltd. dba Imena.ua / Artem Shostak, Private person 66478, Whois privacy protection service, Internet Invest, Ltd. dba Imena.ua / Artem Shostak, Private person 53397, Privacy Protection, HOSTING UKRAINE LTD / Коваленко Валерий/Konovalenko Valeriy, Privacy Protection, HOSTING UKRAINE LLC / Коваленко Валерий/Konovalenko Valeriy, WIPO Case No. D2017-1493; and Braun GmbH v. Do Van Tuan, WIPO Case No. D2014-0832. On this basis the Complainant submits that the Respondent must have been aware of the BRAUN mark when it registered the disputed domain name. Indeed, says the Complainant, the registration in a disputed domain name of a well-known trade mark is of itself evidence of bad faith registration under the Policy.

As far as use in bad faith is concerned, the Complainant essentially submits that paragraph 4(b)(iv) of the Policy is applicable to the present case since the Respondent is intentionally attracting Internet users for commercial gain to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Having been attracted to the Respondent’s website by trading off the use of the BRAUN mark in the disputed domain name, then Internet users are diverted to any of the sponsored PPC-links which may lead them to competitors of the Complainant.

In addition, the Complainant notes that it approached the Respondent to purchase the disputed domain name and was requested to pay USD 5,000, twice the amount quoted as the offer price on the website to which the disputed domain name resolves. This says the Complainant is well in excess of the out-of-pocket costs directly related to acquisition of the disputed domain name and is evidence in terms of paragraph 4(b)(i) of the Policy that the Respondent registered the disputed domain name with the purpose of selling it to the Complainant as the legitimate trademark owner for valuable considerations in excess of the out-of-pocket costs.

The Complainant also submits that the Respondent has engaged in a pattern of bad faith registrations targeting well-known trade marks in terms of paragraph 4(b)(ii) of the Policy. It says that the Respondent using the same email address has registered various other domain names consisting of third-parties’ well-known trademarks and has submitted details of the Respondent having been involved in four prior UDRP cases concerning well-known trade marks in which the Panel transferred the disputed domain name in each case.

The Complainant also notes that the Respondent failed to respond to its cease and desist letter of August 31, 2020, or to its reminders and that this is further evidence of bad faith.

B. Respondent

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

6. Discussion and Findings

A. Consolidation of Complaints

The First and Second Complainants submit that they are part of the same corporate group and are therefore “affiliates” for the purposes of bringing a consolidated administrative proceeding. Panels have generally found under the Policy (see section 1.4 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) that a right owner’s affiliate company is considered also to have rights for the purposes of standing to file a complaint.

In this case, the First and Second Complainants are members of the same corporate group, with the First Complainant owning domain name rights and the Second Complainant owning registered trade mark rights as noted above. The Panel finds that it is appropriate for the complaints by the First and Second Complainants to be consolidated in these proceedings, in circumstances that they are members of the same corporate group, that they have a common grievance against the Respondent and that it is procedurally efficient to consolidate their complaints into a single proceeding.

B. Identical or Confusingly Similar

The Complainant has demonstrated that it owns Korean trade mark registration 365667 for BRAUN filed on November 24, 1995, and registered on June 18, 1997. The disputed domain name wholly incorporates the BRAUN trade mark and is therefore confusingly similar to the Complainant’s trade mark registration. The addition in the disputed domain name of the word “shop” does not prevent a finding of confusing similarity. As a result the Complaint succeeds under this element of the Policy.

C. Rights or Legitimate Interests

The Complainant has submitted that the Respondent is not a licensee or authorised agent of the Complainant and is not otherwise permitted to use the Complainant’s BRAUN trade mark. The Complainant has also submitted that it is not in possession of, nor aware of the existence of any evidence demonstrating that Respondent might be commonly known by a name corresponding to the disputed domain name, as an individual, business, or other organisation. The Complainant has also asserted that the Respondent has not provided any evidence of use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.

The Complainant has further alleged that the disputed domain name has always resolved to webpages displaying several sponsored links to competitor products. This use says the Complainant is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. In addition it appears that the disputed domain name has been generally offered for sale for at least USD 2,500 and by specific offer to the Complainant for USD 5,000. Both amounts are, according to the Complainant, far in excess of the Respondent’s out of pocket costs upon acquisition and therefore not consistent with the Respondent having legitimate rights in or making a bona fide use of the disputed domain name. Finally, the Complainant has noted that the Respondent did not reply to its cease and desist letter which it says is also not consistent with the Respondent having legitimate rights or interests in the disputed domain name.

The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has failed to rebut this case and for this reason and as set out below under Part C, the Panel finds that the Complaint also succeeds under this element of the Policy.

D. Registered and Used in Bad Faith

The Panel accepts that the BRAUN mark is extremely well reputed in many countries worldwide, is one of that category of marks that would be called “well known” and has enjoyed this status for many years prior to the registration of the disputed domain name. The well-known status of the BRAUN trade mark has also been recognized by past panels in: The Procter & Gamble Company and Braun GmbH v. Domain Admin, FBS INC, Whoisprotection.biz / Erol Çakir, supra; Procter & Gamble Business Services Canada Company, The Gillette Company LLC, Braun GmbH and The Procter & Gamble company v. Whois privacy protection service, Internet Invest, Ltd. dba Imena.ua / Artem Shostak, Private person 66478, Whois privacy protection service, Internet Invest, Ltd. dba Imena.ua / Artem Shostak, Private person 53397, Privacy Protection, HOSTING UKRAINE LTD / Коваленко Валерий/Konovalenko Valeriy, Privacy Protection, HOSTING UKRAINE LLC / Коваленко Валерий/Konovalenko Valeriy, supra. Further, the Panel notes that the Complainant had registered trade mark rights in the Respondent’s home country of the Republic of Korea, well prior to the registration of the disputed domain name and that the Complainant’s business in that country appears to be well developed. On this basis the Panel agrees with the Complainant that it is more likely than not that the Respondent was well aware of the Complainant’s BRAUN mark when it registered the disputed domain name.

The disputed domain name resolves to a Sedo domain parking page that features sponsored links which may lead Internet users to competitors of the Complainant. Under paragraph 4(b)(iv) of the Policy there is evidence of registration and use in bad faith where the Respondent is using the disputed domain name to intentionally attract Internet users for commercial gain to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. It is apparent that the Respondent is using the disputed domain name featuring the BRAUN mark to lead Internet users seeking BRAUN products to the website which has sponsored links on it. Some of those links are to the sites of the Complainant‘s competitors and it is most likely that the Respondent gains some kind of commercial revenue from this re-direction. As a result the Panel finds that the requirements of paragraph 4(b)(iv) of the Policy have been fulfilled.

In addition the Complainant notes that it approached the Respondent to purchase the disputed domain name and was requested to pay USD 5,000, twice the amount quoted as the offer price on the website to which the disputed domain name resolves. This is clearly an amount well in excess of the out-of-pocket administrative costs attendant on acquiring a domain name. Under paragraph 4(b)(i) of the Policy there is evidence of registration and use in bad faith if the Respondent registered the disputed domain name with the purpose of selling it to the Complainant as the legitimate trademark owner or to one of its competitors, for valuable consideration in excess of the out-of-pocket costs. In the absence of any evidence that the Respondent sought to use the disputed domain name for any bona fide purpose and considering the manner in which it has attempted to profit from the Complainant’s offer but has failed to otherwise respond to the Complainant’s cease and desist letter and also the history of past conduct as described below, there is in the Panel’s view a strong inference that the Respondent acquired the disputed domain name with the purposes of selling it to the Complainant or one of its competitors at a substantial profit.

The Complainant has also submitted that the Respondent has engaged in a pattern of bad faith registrations targeting well-known trade marks in terms of paragraph 4(b)(ii) of the Policy. It says that the Respondent using the same email address has registered various other domain names consisting of third-parties’ well-known trade marks and it provided evidence of four prior UDRP decisions concerning well-known trade marks in which the Panel transferred the disputed domain name from the Respondent to the Complainant in each case. Equally, it seems to the Panel that there is a very strong inference that the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting its BRAUN mark in the disputed domain name in circumstances that there is a clear pattern of past conduct by the Respondent.

The fact that the Respondent failed to respond to the Complainant’s cease and desist letter of August 31, 2020, or to subsequent reminders only serves to reinforce the Panel’s view of the Respondent’s bad faith.

Accordingly, the Panel finds that the Respondent has both registered and used the disputed domain name in bad faith and the Complaint also succeeds under this element of the Policy.

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 <braunshop.com> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: December 10, 2020

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