WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dentsply Sirona Inc. v. Privacy service provided by Withheld for Privacy ehf / Hanh Truong

Case No. D2021-3895

1. The Parties

The Complainant is Dentsply Sirona Inc., United States of America (“United States”), represented by SILKA AB, Sweden.

The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Hanh Truong, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <dentsplysironainc.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2021. On November 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 22, 2021, 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 November 23, 2021 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 amendment to the Complaint on November 23, 2021.

The Center verified that the Complaint together with the amendment to 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 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 16, 2021.

The Center appointed Geert Glas as the sole panelist in this matter on January 5, 2022. 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 Complainant, Dentsply Sirona Inc., is one of the world’s largest manufacturers of professional dental products and technologies. The Complainant employs approximately 15,000 employees worldwide and conducts its business in over 120 countries, with net sales of more than USD 3,340 million.

The Complainant owns the domain name <dentsplysirona.com>, registered in 2015. This domain name gives access to the Complainant’s global website, through which it promotes and offers its professional dental products and technologies.

The Complainant also owns a large number of international, European Union, and United States trademarks that consist of or include the words “dentsply sirona”, among which, by way of example, the following:

United States Registration No. 042060 for the semi-figurative mark DENTSPLY, registered on February 16, 1904 in class 10.

United States Registration No. 0565182 for the semi-figurative mark DENTSPLY, registered on October 14, 1952 in classes 5 and 10.

United States Registration No. 5596109 for the semi-figurative mark DENTSPLY SIRONA, registered on October 30, 2018 in class 10.

European Union Registration No. 002317972 for the figurative mark DENTSPLY, registered on October 7, 2002 in classes 5, 10 and 35.

European Union, Registration No. 015169642 for the word mark DENTSPLY, registered on July 28, 2016 in classes 3, 5, 9, 10, 16, 35, 38, 41 and 44.

International Registration No. 1319815 for the word mark DENTSPLY SIRONA, registered on July 8, 2016 in classes 3, 5, 9, 10, 16, 35, 38, 41 and 44.

The disputed domain name <dentsplysironainc.com> was registered on May 28, 2021 and leads to a website which has the appearance of an official website of the Complainant, in particular because it contains the Complainant’s DENTSPLY SIRONA semi-figurative trademark as well as extensive information on the Complainant’s activities, its management and board of directors and a <[...]@dentsplysironainc.com> email address.

5. Parties’ Contentions

A. Complainant

The following is a summary of the Complainant’s contentions.

The Complainant requests that the disputed domain name be transferred to it on the following grounds:

The Complainant claims that the disputed domain name is confusingly similar to its many trademarks which consist of the words “dentsply sirona” and its registered domain name <dentsplysirona.com>. It considers that the addition of the letters “inc” in the disputed domain name does not alleviate the confusing similarity. Finally, it states that the addition of the generic Top-Level Domain “.com” is inconsequential to determine the similarities between the disputed domain name and the Complainant’s trademarks.

The Complainant further contends that the Respondent does not have rights or legitimate interests in respect of the disputed domain name. It argues that none of the circumstances which may demonstrate rights or legitimate interests as set out in paragraph 4(c) of the Policy apply. Moreover, it claims that the Respondent uses the disputed domain name to deceive customers into thinking that the website to which the disputed domain name leads is operated by or associated with the Complainant.

Finally, the Complainant argues that the disputed domain name was registered and is being used in bad faith. The worldwide notoriety of the Complainant’s products and trademarks since well before the registration of the disputed domain name as well as the confusing similarity between the disputed domain name and the Complainant’s trademarks are relevant in concluding that it was registered in bad faith. The Complainant further contends that the Respondent intentionally uses the disputed domain name to attempt to attract Internet users to its website, which constitutes a use in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the disputed domain name. As the UDRP proceedings are of an administrative nature, the standard of proof is the balance of probabilities.

Thus, for the Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy, that:

i. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
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 and is being used in bad faith.

The Panel will therefore deal with each of these requirements.

A. Identical or Confusingly Similar

The disputed domain name is <dentsplysironainc.com>.

The Complainant has demonstrated that it owns numerous trademarks consisting of the words “dentsply sirona”.

The Panel observes that the disputed domain name comprises the Complainant’s DENTSPLY SIRONA word trademarks in their entirety, with as only two differences the addition of “inc” and “.com”.

Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”

Moreover, section 1.8 of the WIPO Overview 3.0 holds that where a trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) will not prevent a finding of confusing similarity. The nature of such additional term(s) may however bear on the assessment of the second and third elements. Several UDRP Panels have ruled that the addition of the term “inc” to a trademark in a domain name does not prevent a finding of confusing similarity (e.g. Gilead Sciences, Inc. v Name Redacted, WIPO Case No. D2015-1819 (<gileadsciencesinc.com>); Tyson Foods Inc. v Privacy Service provided by Withheld for Privacy ehf / Hoc Tap Tot, Jayse, WIPO Case No. D2021-2457, (<tysonfoodsincorporated.com>); Zodiac Pool Systems LLC v. Lei Shuai, WIPO Case No. D2021-3486 (<jandyinc.com>)).

Finally, it is a well-established principle that the use of a Top-Level Domain is considered as a standard registration requirement and as such is to be disregarded in the confusing similarity test (section 1.11.1 of the WIPO Overview 3.0). The addition of the Top-Level Domain “.com” in the disputed domain name <dentsplysironainc.com> does not prevent a finding of confusing similarity with the DENTSPLY SIRONA trademarks.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, the consensus view is that, once the complainant has made 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (section 2.1 of the WIPO Overview 3.0; Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Dow Jones & Company, Inc., (First Complainant) and Dow Jones LP (Second Complainant) v. The Hephzibah Intro-Net Project Limited (Respondent), WIPO Case No. D2000-0704).

Based on the evidence submitted by the Complainant, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

Such finding is based on the following observations:

i. The Respondent has not received any authorisation, license or permit from the Complainant to use its trademarks in association with the registration of the disputed domain name.

ii. There is no indication that the Respondent holds trademark rights on the words “dentsply sirona”, nor that the Respondent has been commonly known by the disputed domain name, in particular because the information available about the Respondent’s identity does not suggest any correlation with the words “dentsply sirona” (section 2.3 of the WIPO Overview 3.0).

iii. The disputed domain name <dentsplysironainc.com> is almost identical to the DENTSPLY SIRONA word trademarks and identical to the Complainant’s company name, which carries a high risk of implied affiliation (section 2.5.1 of the WIPO Overview 3.0).

iv. There is no indication that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. On the contrary, the disputed domain name is misleading and is likely to be a pretext for commercial gain (section 2.5.3 of the WIPO Overview 3.0). It resolves to a website which has the appearance of an official website of the Complainant, in particular because it contains the Complainant’s DENTSPLY SIRONA semi-figurative trademark as well as extensive information on the Complainant’s activities, its management and board of directors as well as a <[...]@dentsplysironainc.com> email address. Hence, it is very likely that the Respondent registered the disputed domain name knowing that it would attract interest from Internet users who are searching for the Complainant and mislead them into thinking that the website is operated by or affiliated with the Complainant, when in fact it is not. Using a domain name to resolve to an active website which is a “copycat” of an existing website cannot amount to a bona fide offering of goods or services (e.g. Verisure Sàrl v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Minh Choi, WIPO Case No. D2021-1363). Moreover, several UDRP Panels have judged that, where the disputed domain name does not consist of an actual dictionary word or phrase, it is even more likely that the word is only being used as a keyword tied directly to the trademark value of the complainant’s trademarks (National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415).

v. The Respondent did not file a response and by doing so failed to provide any evidence of any rights or legitimate interests it would claim to have in the disputed domain name.

In view of the above circumstances, the Panel cannot conceive of any basis upon which such deceptive and confusing use of the disputed domain name could amount to a bona fide offering of goods or services or confer any rights or legitimate interests to the Respondent.

Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The third element of paragraph 4(a) refers to the question of whether the disputed domain name has been registered and is being used in bad faith by the Respondent.

Paragraph 4(b) of the Policy describes some circumstances which, if found to exist, will be evidence of the registration and use of the domain name in bad faith. Among these circumstances is the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location (paragraph 4(b)(iv) of the Policy).

(a) Registered in bad faith

The Complainant has generated a worldwide reputation and goodwill in the field of dental products and technologies. Moreover, the Complainant has been benefitting from trademark protection for its “dentsply sirona” name and logo for many decades. UDRP panels have consistently found that the mere registration of a domain name that is virtually identical to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith (section 3.1.4 of the WIPO Overview 3.0).

A simple search in the Google search engine would have informed the Respondent of the existence of the Complainant and its rights in the DENTSPLY SIRONA trademarks (section 3.2.2 of the WIPO Overview 3.0). Therefore, the Respondent cannot reasonably dispute that it knew, or should have known, the Complainant’s trademarks when registering the disputed domain name. The fact that the Respondent chose to register the disputed domain name anyway and opted not to offer any explanation in response to the Complaint, strongly suggests that the decision to register <dentsplysironainc.com> was made in bad faith.

In light of the above, the Panel finds that the Respondent registered the disputed domain name in bad faith.

(b) Used in bad faith

The disputed domain name is in use. It resolves to a website which has the appearance of an official website of the Complainant, in particular because it contains the Complainant’s DENTSPLY SIRONA semi-figurative trademark as well as extensive information on the Complainant’s activities, its management and board of directors as well as a <[...]@dentsplysironainc.com> email address.

The Respondent clearly and intentionally seems to attempt to attract Internet users to its website by creating a likelihood of confusion between the disputed domain name and the DENTSPLY SIRONA trademarks. The Panel believes that the use of the <[...]@dentsplysironainc.com> contact email address on the website to which the disputed domain name resolves makes it even more likely that the Respondent wishes to give an impression of connection with the Complainant. Given the well-known nature of the DENTSPLY SIRONA trademarks and the Complainant’s internationally established reputation, members of the public will assume that there is an association between the disputed domain name and the Complainant. Furthermore, the term “inc” in the disputed domain name is likely to be interpreted as a reference to the Complainant’s company name (i.e., Dentsply Sirona Inc).

Moreover, the Panel cannot conceive how the Respondent could make a good faith use of the disputed domain name.

Consequently, the Panel finds that the Respondent has also been using the disputed domain name in bad faith.

Therefore, the Panel concludes that the disputed domain name was registered and is being used in bad faith by the Respondent.

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, <dentsplysironainc.com> be transferred to the Complainant.

Geert Glas
Sole Panelist
Date: January 19, 2022