WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Gillette Company v. Efimova E S
Case No. D2013-0138
1. The Parties
The Complainant is The Gillette Company, Boston, Massachusetts, United States of America, represented by Mr. Luca Barbero of Studio Barbero, Italy.
The Respondent is Efimova E S, Moscow, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <gillettebat.com> is registered with Regional Network Information Center, JSC dba RU-CENTER (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2013. On January 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 1, 2013, 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. In response to a notification by the Center in respect of the language of the proceedings, on February 4, 2013 the Complainant confirmed its request for English to be the language of the proceedings, as contained in its Complaint. On February 8, 2013, the Respondent requested that the administrative proceeding be held in the Russian language. Given the provided submissions and circumstances of this case, the Center decided to accept the Complaint as filed in English, and to accept a Response in either English or Russian.
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 Respondent of the Complaint in both the English and the Russian language, and the proceedings commenced on February 14, 2013. In accordance with the Rules, paragraph 5(a), the initial due date for Response was March 6, 2013. On March 4, 2013, the Respondent requested a three month extension of the due date of the Response allegedly in order to allow it sufficient time to translate the Complaint. With its email of March 5, 2013, the Complainant objected to this request with the argument that the Respondent had clearly shown in his prior correspondence with the Complainant to have an excellent command on English and to be in a position to perfectly understand the arguments of the Complaint without the need of a translation.
Taking into account the Complainant’s objections to the Respondent’s request for the extension, that the request was received close to the due date for the Response, and that there did not appear to be exceptional circumstances, as required by Rules, paragraph 5(d), the Center decided not to grant the requested extension. An informal Response was filed with the Center on March 6, 2013, accompanied by a second request for extension of the due date for the submission of the Response.
The Center appointed Assen Alexiev as the sole panelist in this matter on March 19, 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.
In relation to the Respondent’s repeated request for an extension of the due date for the filing of the Response, the Panel noted the following: The request was solely based on the argument of the Respondent that it needed additional time to translate the Complaint into Russian and to prepare its Response. At the same time, as noted in relation to the language of the proceeding below, the Respondent has exchanged several email messages in English with the Complainant, and the website associated to the disputed domain name has its default version made entirely in English as well. These circumstances satisfy the Panel that the Respondent has a good command of English and can understand the Complaint. Therefore, taking into account the requirement of the Rules that the administrative proceeding takes place with due expedition and that seven weeks had already passed since the Complaint was officially notified to the Respondent by the Center, and in exercise of its powers under Paragraph 10 of the Rules, the Panel extended the deadline for the submission of the Response until April 9, 2013, and extended the due date of its decision until April 19, 2013. No additional communication was received from the Respondent within the extended deadline for the submission of its Response.
In relation to the language of the proceedings, the Panel notes the following: According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, 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 Center has provided both parties with an opportunity to comment on this issue by sending them an invitation both in English and Russian languages.
The Complainant requests that the language of the proceeding be English. It points out that in cases where a Respondent is able to communicate in the Complainant’s language but the Complainant is unable to communicate in the Respondent’s language, the Complainant would be disadvantaged by proceeding in the language of the registration agreement and would be prejudiced by additional expense, delay, or complication, the Panel may accept the Complainant’s choice of language to ensure fairness and efficiency. In this regard, the Complainant submits that in the present proceeding the disputed domain name is associated to a website whose default version is in English and that the Respondent understands the English language, while the Complainant would be prejudiced if it had to translate the Complaint and participate in this proceeding in the Russian language. The Complainant notes that it has attempted to resolve this dispute by forwarding to the Respondent a Cease and Desist letter on November 19, 2012. The parties have then exchanged correspondence in English, without the Respondent making any request for clarification or translation. The contentions of the Complainant are supported by copies of the correspondence between the parties.
The Respondent insists on the use of the Russian language in the proceeding. It alleges that its knowledge of English is not good enough, and that it does not have the possibility to pay to translators. However, the Respondent does not deny the existence of the correspondence between the parties as referred to by the Complainant.
Having reviewed these statements and supporting evidence, the Panel is satisfied that the correspondence between the parties shows that the Respondent has sufficient knowledge of English, and that if the proceedings are held in English; this will be fair and efficient and will not put either of the parties at a disadvantage. Therefore, in exercise of its powers under paragraphs 10 and 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English. At the same time, the Panel will accept and consider all evidence available in the case file and submitted by the Parties in either English or Russian languages.
4. Factual Background
The Complainant is a global supplier of products under various brands which are currently sold in more than 200 countries and territories. With its Gillette products, the Complainant is one of the worldwide leaders in the field of shaving. In 2010, the Gillette razors had approximately 70% of the global razors market share. The Complainant is now a subsidiary of Procter & Gamble.
The GILLETTE brand was first registered in the United States in 1905 and since then has been registered as a trademark all over the world, including in the Russian Federation. The Complainant is now the owner of a large portfolio of national and international trademark registrations worldwide, amongst which over 400 trademark registrations for GILLETTE, including the following registrations (the “GILLETTE trademark”):
- the trademark GILLETTE with No. 1006, registered on December 01, 1938 for the territory of the Russian Federation in International class 08;
- the trademark GILLETTE with No. 2547, registered on July 27, 1945 for the territory of the Russian Federation in International class 08;
- the trademark GILLETTE with No. 60674, registered on March 9, 1978 for the territory of the Russian Federation in International classes 03, 05, 09, 11, 14, 16 and 34;
- the trademark GILLETTE with No. 225178, registered on February 21, 2001 for the territory of the Russian Federation in International class 42;
- the trademark GILLETTE with No. 767865, registered on April 7, 1964 for the territory of the United States of America in International class 08;
- the Community trademark GILLETTE with No. 006665319, registered on November 18, 2008 in International classes 03 and 08;
- the trademark GILLETTE with No. 13507, registered on August 11, 1913 for the territory of Italy in International classes 03, 08 and 21;
- the trademark GILLETTE with No. 1403632, registered on April 15, 1987 for the territory of France in International classes 1, 2, 4, 7, 8, 9, 10, 11, 14, 16, 18, 20, 21, 26, 28, 34, 35, 38, 40 and 41.
The Complainant has registered, directly or through affiliated companies, over 400 domain names identical to or comprising the GILLETTE trademark, and has a strong online presence through Facebook and Twitter. The Complainant’s principal website regarding the GILLETTE brand, where products are advertised and offered for sale, is located at ‘’www.gillette.com’’. The official website is available in many languages with the aim of promoting the brand in different countries, including the Russian Federation.
The disputed domain name was registered on December 1, 2011.
5. Parties’ Contentions
The Complainant submits that its origin dates back to 1895 when the travelling salesman, inventor and writer King C. Gillette envisioned the need of an inexpensive new safety razor with a disposable blade to replace the unhandy knife-like straight edged razors in use at that time for shaving. In 1901, Mr. Gillette founded the American Safety Razor Company, renamed the following year to Gillette Safety Razor Company, and began the production processes of the safety razors early in 1903. During the first year of production, the Complainant sold 51 razors and 168 blades, but already in 1904 sales grew steadily to over 90,000 razors and 123,000 blades. In the Complainant’s first foreign sales branch was established in London in 1905. 1922, the Complainant became royal supplier of the Prince of Wales. During the World Wars the Complainant supplied the United States. troops with razors, which greatly enhanced the popularity of the GILLETTE brand in the United States of America. In the 1950s, the Complainant adopted a diversification policy, expanding its business to market sectors other than men's personal grooming products. By acquiring other companies, the Complainant achieved top positions worldwide in the manufacture of home appliances for shaving and grooming, beauty and hair care, household small appliances, health and wellness, clocks and watches, toothbrushes and other oral care products, and alkaline batteries. Although more than half of the company profits are still derived from shaving equipment, other market sectors became more and more important in Complainant’s profit, and in particular Duracell batteries grew to be the company's second-leading product line in terms of sales, generating almost one-fourth of company revenues. Besides expanding in other sectors with new brands, the Complainant diversified also the products marketed under the trademark GILLETTE by launching in the 1990s the Gillette Series line of men's toiletries, which included products in the deodorant/antiperspirant, shaving cream, and aftershave categories, and by developing new types of razors, such as the Mach 3 and the SensorExcel for Women.
The Complainant points out that it has used the GILLETTE trademark for over 100 years in many countries, including the Russian Federation, where the Respondent is based, in connection with the production and commercialization of shaving products. The Complainant has invested a substantial amount of time and resources to promote and advertise the GILLETTE trademark and its associated products and services through intensive advertising campaigns worldwide, including in the Russian Federation. The first advertisement was published in the October 1903 issue of Systems Magazine. The Complainant has launched many promotional campaigns and is actively supporting sports events. In the 1940s the Complainant launched the Gillette Cavalcade of Sports, an American network radio program and later television program that included broadcasts of a variety of sports. The Complainant has been the sponsor of the Major League Baseball since the 1940s, and also sponsors the England national rugby league team, along with the Four Nations Rugby League. The Complainant contends that as a result of its efforts, the GILLETTE trademark now enjoys a worldwide reputation, as demonstrated by the fact that has been included in various lists of the most successful brands in the world. The trademark GILLETTE was included in the Interbrand list in 2001 and since then it has always occupied one of the first 20 positions on this list. According to Interbrand Best Global Brands List 2011, the GILLETTE trademark can be valued at US $23,997,000 and represents the sixteenth most valuable trademark in the world. Since 2006, the GILLETTE trademark has also been included by Brandz in its Top 100 most valuable global brands list.
According to the Complainant, the disputed domain name is confusingly similar to trademarks in which Complainant has rights. It is a well-established principle that if a domain name that wholly incorporates a trademark, in particular one as famous as “GILLETTE”, is found to be confusingly similar for purposes of the Policy, despite the fact that it may also contain descriptive or generic terms. The “bat” element of the disputed domain name could easily be interpreted by Internet users as standing as an abbreviation for “batteries”. Procter & Gamble, the mother company of the Complainant, is well-known for marketing batteries under the DURACELL trademark and, therefore, the term selected by the Respondent for its domain name registration not only is insufficient to distinguish the disputed domain name from the Complainant’s GILLETTE trademark, but may lead Internet users to suppose that there is an association between the disputed domain name and the Complainant and that the Complainant has started to market batteries under the GILLETTE trademark as well.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not a licensee or an authorized agent of the Complainant, and is not in any other way authorized to use the Complainant’s GILLETTE trademark whether in a domain name or otherwise. The Respondent is not commonly known by the disputed domain name as an individual, business or other organization. The disputed domain name was registered without authorization by the Complainant, and is associated to a website where the Complainant’s GILLETTE trademark features prominently and unauthorized products bearing this trademark are offered for sale. This use cannot be qualified as related to noncommercial purposes, since the Respondent or the companies whose activity is promoted on the website are certainly gaining from the offer for sale of said products. The offering of goods and services cannot be considered as bona fide since the Respondent, by marketing batteries under the stylized GILLETTE trademark, is taking unfair advantage of the Complainant’s goodwill and reputation and is infringing upon the Complainant’s GILLETTE trademark.
The Complainant further informs the Panel that the Russian company Shest Banok has filed two International trademark applications for a sign identical to its GILLETTE trademark in various countries, i.e. No. 1072563 of February 11, 2011 in Class 9 and No.1026322 of December 02, 2009 in class 9. Many of the competent national authorities have already issued total provisional refusals, in many cases citing the Complainant’s trademark as prior existing trademark, and that Shest Banok has in no case objected to the refusal. Many of these refusals contain the reasoning that by selecting such distinctive sign, Shest Banok is trying to take unfair advantage of the well-known character of the GILLETTE trademark of the Complainant. Complainant has also filed oppositions in some of the countries where the trademark applications had not been refused ex officio. The Complainant also contends that the trademark applications made by Shest Banok should not be considered relevant for the purpose of the present proceeding, since they have not been filed by the Respondent. Even if the Respondent establishes a link amongst the mentioned entities and attempts to rely on alleged rights or legitimate interests in GILLETTE on the basis of the trademark applications of Shest Banok, these trademark applications would not be sufficient to justify a legitimate interest under the Policy in view of the circumstances of the present case and in light of the well-known character of the Complainant’s GILLETTE trademark.
With regard to the unauthorized distribution of alkaline batteries under the trademark GILLETTE, a Cease and Desist letter was sent on November 19, 2012 to the attention of the “Gillette bat companies” requesting to cease the marketing of the infringing products and the use of the sign GILLETTE in their trade name. The Complainant also points out that two other companies - the “Gillette Bat company” and the “Gillette Bat company B.V”, might be related to the offer for sale of batteries under the name GILLETTE on the website corresponding to the disputed domain name. The Complainant instructed outside counsel to analyze the relationship amongst these companies, but no direct affiliation between these companies and the Respondent was found.
The Complainant further states that on November 19, 2012 it has sent a Cease and Desist letter, requesting the Respondent to immediately deactivate the website and to transfer the disputed domain name to the Complainant. On November 26, 2012, the Respondent replied, with the following message: “Dear Sirs, Answering to your letter D0014152 from 20 November 2012, we would like to inform you that your demands contradict the other existing demands and agreements of your client. We kindly ask you to confirm your authority to represent your client and to issue the claims. Provide please within 10 days a copy of the power of attorney from your client witch authorizes you to make demands contained in the letter D0014152 from 20 November 2012 on behalf the client.” On November 20, 2012, the Complainant’s authorized representative provided the Respondent with the power of attorney and requested him to explain its statements regarding “your demands contradict the other existing demands and agreements of your client”, since the Respondent had not been put in copy in the Cease and Desist letter sent to the attention of the “Gillette Bat companies”. Respondent replied, on December 04, 2012, with following message: “I need a few weeks to consult with my lawyers to respond you”. No further messages were received from the Respondent despite the reminders sent by the Complainant’s representative.
In the Complainant’s submission, the disputed domain name was registered and is being used in bad faith. When registering the disputed domain name, the Respondent could not have possibly ignored the existence of the Complainant’s GILLETTE trademark. As further argument for the Respondent’s awareness of the Complainant and its GILLETTE trademark at the time of the registration of the disputed domain name, the Complainant points to the “well-known status of the Complainant's GILLETTE trade mark and the uniqueness of the word Gillette” that brought a previous Panel to hold that “it is clear that the Domain Name can only refer to the Complainant”, see The Gillette Company v. Amaltea Impex S.R.L., WIPO Case No. DRO2009-0003, In light of the above, the Respondent was certainly well aware of the Complainant’s rights in the GILLETTE trademark and registered the disputed domain name with clear intentions to refer to the Complainant’s trademark. Considering that the GILLETTE trademark has a highly distinctive character and the status of a well-known trademark, and that the word “bat” is descriptive of the goods promoted via the Respondent’s website, it is evident that such website is offering batteries under the Complainant’s trademark by creating a direct association with the Complainant. Therefore, the Complainant contends that Internet users seeing the batteries marketed under the GILLETTE trademark on the Respondent’s website would assume that these products are somehow associated with or connected to the Complainant. Such risk is enhanced by the fact that since 1996 the Complainant has distributed batteries under the trademark DURACELL and has promoting them for use in its GILLETTE power razors. The Respondent has put on its website the stylized GILLETTE trademark, where it is featured prominently at the top of the home page. The layout of this website imitates the look and feel of Complainant’s official websites at ‘’www.gillette.com’’ and ‘’www.duracell.com’’. The design of battery packages, promoted on the Respondent’s website imitates the DURACELL battery packages through the insertion of a slogan under the trademark and the use of the same set of colours as the ones used by the Complainant for the DURACELL batteries. In addition, the Respondent’s website contains no disclaimer of non-affiliation to the Complainant.
On the basis of the above, the Complainant contends that the Respondent’s purpose when registering the disputed domain name was to capitalize on the reputation of Complainant's GILLETTE trademark by diverting Internet user seeking products under GILLETTE mark to his own website for financial gain, by intentionally creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website and/or the goods offered or promoted through its website, and that the disputed domain name was registered and is being used in bad faith under paragraphs 4(a)(iii) and 4(b) of the Policy.
In its informal Response, the Respondent points to the existence of the trademark registrations of Shest Banok in International Class 09 for batteries (the same trademarks that are cited in the Complaint), and submits that these registrations have already been confirmed in twenty countries. In some of these countries (such as Spain) the legality of the protection of these trademarks was subjected to a detailed analysis which led to the reversal of the preliminary refusal of protection.
The Respondent further alleges that the disputed domain name contains information only about the GILLETTE batteries, which fully falls within the protection of the trademark registrations of Shest Banok. According to the Respondent, Shest Banok does not oppose to the use of its trademarks in the disputed domain name and the associated website.
The Respondent points out that the Complainant and Procter & Gamble have had a precise knowledge for three years of the use of the trademark registrations of Shest Banok and of the business with the goods falling under these registrations, and that the Complainant has informed the government authorities that, having no trademark rights in this class of goods, it cannot object to the business with these goods. According to the Respondent, in view of Procter & Gamble’s competing goods – the Duracell batteries, their actions of are directed at the restriction of the competition and the monopolization of the market.
As a final argument, the Respondent alleges that in view of the practically non-existent traffic to the Respondent’s website (a single digit number of visits per day), no damages for the Complainant and no benefits for the Respondent are conceivable.
6. Discussion and Findings
Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(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 Respondent has registered and is using the disputed domain name in bad faith.
By Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”
In this case, the Center has notified the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case. Apart from the informal Response, submitted by the Respondent on April 6, 2013, the Respondent has chosen not to submit any additional comments within the extended deadline granted by the Panel for the submission of its formal Response. This conduct of the Respondent leads the Panel to conclude that it has no additional arguments or evidence to rebut the assertions of the Complainant. In these circumstances, the Panel takes his decision on the basis of the statements and documents before it and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the GILLETTE trademark, registered for the territories of many countries, including the Russian Federation.
It is a common practice under the Policy to disregard in appropriate circumstances the generic top-level domains (gTLD) such as the “.com” for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the disputed domain name is its “gillettebat” section. This section has two easily recognizable elements - “gillette” and “bat”. The “gillette” element is identical to the Complainant’s GILLETTE trademark, which has been globally established through extensive sales and advertising in the course of more than one hundred years. The “bat” element appears to be either a generic word or an abbreviation for “battery”, neither of which have any distinctiveness, so it can be expected that the attention of Internet users will mostly be drawn by the “Gillette” element, and that they will associate it to the Complainant’s GILLETTE trademark. As a result, Internet users are likely to have the impression that the disputed domain name is related to the Complainant and its products, such as batteries. This impression can be further strengthened by the fact that the website, associated to the disputed domain name, features an exact graphic replica of the Complainant’s GILLETTE trademark and contains no disclaimer of any association with the Complainant.
For these reasons, the Panel finds that the disputed domain name is confusingly similar to the GILLETTE trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name, and provides certain arguments and evidence in this regard. Thus, the Complainant establishes a prima facie case under Policy, paragraph 4(a)(ii).
It is well established that once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the showing by providing evidence to the contrary.
In the present case, the Respondent has chosen to present in its defense only allegations and documents, related to the trademark registrations of Shest Banok. If the Respondent had any other justification for registering or using the disputed domain name, it could have provided it.
The validity of the trademark registrations of Shest Banok is beyond the scope of this proceeding. This issue is a matter for the competent authorities in the countries where these trademarks are registered or applied for registration. The Respondent has not made any allegation and has not presented any evidence that it is licensed to use the trademarks of Shest Banok. The Respondent has only alleged that Shest Banok does not oppose to the use of these trademarks in the disputed domain name and the associated website. This allegation is not supported by any statement by Shest Banok, and there is no information in the case file of any connection between Shest Banok and the Respondent. There is no information whether Shest Banok is actually aware of the existence of the disputed domain name and how it would react to its registration and use. In view of this, the Panel is of the opinion that the Respondent has not established that it has any rights, related to the trademark registrations of Shest Banok, and has consequently not substantiated any rights in the disputed domain name, based on these trademarks. At the same time and for the sake of completeness, if the Respondent had established that Shest Banok consents to the use of its trademarks by the Respondent, the fact that this use is in a manner that slavishly imitates the design of the Complainant’s GILLETTE trademark and creates a significant likelihood of confusion with the Complainant and its products (as discussed below) would seriously challenge the good faith of Shest Banok when registering its trademarks, if the purpose of their registration included their use in such a misleading manner. Such circumstances would not have supported a finding that the Respondent has a legitimate interest in the disputed domain name either. As found in Madonna Ciccone p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847, “To establish cognizable rights, the overall circumstances should demonstrate that the [trademark] registration was obtained in good faith for the purpose of making bona fide use of the mark in the jurisdiction where the mark is registered, and not obtained merely to circumvent the application of the Policy.”
The Complainant has provided convincing evidence of the wide popularity and appreciation of the GILLETTE trademark around the world. As discussed above, the disputed domain name is confusingly similar to the GILLETTE trademark, while the Respondent’s website features an exact graphic replica of the GILLETTE trademark and contains no disclaimer of any association with the Complainant, and the design of the battery packages, promoted on this website, imitates the design of the Complainant’s Duracell batteries. The Respondent has provided no explanation why it has chosen such graphic representations and designs, especially as these designs are not included in the word trademarks of Shest Banok, and has not explained the lack of a disclaimer on its website. In the absence of any such explanation or denial of the Complainant’s contentions in this regard, the Panel is satisfied that it is more likely than not that the Respondent has chosen these graphic representations and designs because Internet users would associate them to the Complainant and to its widely popular GILLETTE trademark.
The above satisfies the Panel that the Respondent is well aware of the goodwill of the Complainant and of its GILLETTE trademark, and that the appreciation of this goodwill has motivated the Respondent to choose to register the disputed domain name and to link it to the described commercial website without the consent of the Complainant in an attempt to attract customers to this website and to increase the sales made through it by creating a false impression in Internet users that the website and the products offered there are associated to or endorsed by the Complainant. In the Panel’s view, such conduct cannot be regarded as a bona fide activity that gives rise to rights and legitimate interests of the Respondent in the disputed domain name.
On the basis of the above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name within the meaning of the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
For the purposes of Policy, paragraph 4(a)(iii), 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:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 your website or location or of a product or service on the holder’s website or location.
In the present case, the disputed domain name is confusingly similar to the Complainant’s widely popular GILLETTE trademark, and the Respondent is found to have registered it without having rights and legitimate interests in it, while at the same time being positively aware of the Complainant and of its extensive goodwill. Having registered the disputed domain name, the Respondent has used it to link it without the consent of the Complainant to a commercial website which features an exact graphic replica of the GILLETTE trademark and contains no disclaimer of any association with the Complainant. This website promotes batteries under the name Gillette, and their design imitates the design of the Complainant’s Duracell batteries. The website contains no disclaimer of any connection to the Complainant. Thus, Internet users may well be led to mistakenly believe that the disputed domain name, the Respondent’s website, and the batteries promoted on it are associated to or approved by the Complainant. In the absence of any evidence to the contrary, these actions of the Respondent can only be regarded as an illegitimate bad faith attempt to extract a commercial gain and to increase of the sales of the products on the Respondent’s website through the creation of a false impression in consumers of a non-existent endorsement of these products by the Complainant.
Taking all the above into account, the Panel finds that the Respondent has registered and used it in bad faith primarily in an attempt to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s GILLETTE trademark as to the source or endorsement of the Respondent’s website and of the goods offered on the Respondent’s website.
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 <gillettebat.com> be transferred to the Complainant.
Date: April 19, 2013