WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Braun GmbH v. Do Van Tuan
Case No. D2014-0832
1. The Parties
The Complainant is Braun GmbH of Kronberg, Germany, represented by BMVN International LLC, Viet Nam.
The Respondent is Do Van Tuan of Dong Da District, Hanoi City, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <mayxaybraun.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2014. On May 20, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 21, 2014, 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. On May 23, 2014, the Complainant filed an amended Complaint with slight changes in Sections VII and XI of the Complaint.
The Center verified that the Complaint together with the amended 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, and the proceedings commenced on May 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 17, 2014.
The Center appointed Nick J. Gardner as the sole panelist in this matter on June 20, 2014. 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 relevant facts can be summarized as follows.
The Complainant was founded in 1921 in Germany, and has grown into one of the world’s well known consumer products company. From 1984 until 2005, the Complainant was a wholly owned subsidiary of The Gillette Company. The Complainant is now a wholly owned subsidiary of The Procter & Gamble Company. It manufactures and markets throughout the world a wide range of electrical consumer products. These include blenders.
The Complainant has registered the word “Braun” as a trademark in many countries for a wide range of consumer products, including in respect of hand blenders and juicers. These include registrations in Viet Nam where the Respondent resides. By way of example, the Complainant owns Vietnamese registered trade mark number 652027 for BRAUN registered on the November 14, 1995 in respect of classes 11 14 16 21 26 35 and 37.
The Domain Name was registered on January 16, 2011.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
The Domain Name is similar to its trade mark BRAUN in which the Complainant has rights. The word or words “mayxay” means “blender” in Vietnamese and is an entirely descriptive addition to the word “Braun”.
The Respondent has no rights or legitimate interests in the term “Braun”. There is no other meaning associated with that term other than in relation to the Complainant and the addition of the descriptive word or words “mayxay” does not confer any such rights or interests. Throughout the world, the BRAUN trademarks enjoy widespread reputation and recognition for consumer products (such as male/female grooming, hair care, kitchenware and household goods). A well-known mark, such as BRAUN, is not one that traders could legitimately adopt for purposes other than creating an impression of association with the Complainant. No evidence exists to suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, or is making a legitimate non-commercial or fair use of the domain name. The Respondent has no connection to or affiliation with the Complainant and has not received any franchise, license or consent agreement, express or implied, from the Complainant to use the BRAUN trademarks in a domain name or in any other manner.
The Domain Name was registered and is being used in bad faith. The use of the disputed domain name demonstrates that the Respondent registered it in bad faith to profit from consumer confusion by attempting to show an association or affiliation with the Complainant in order to attract Internet users to the Respondent’s website for commercial purposes. The Domain Name is used in respect of a website at “www.mayxaybraun.com” (the “Respondent’s Website”). The Respondent's Website promotes certain BRAUN branded products such as blenders. When selecting the “May xay cam tay Braun”, Internet users will be directed to another associated website at “http://kidsplaza.vn/may-xay-braun-suc-chao-sinh-to-113.htm” (the “Associated Website”), which also offers for sale a considerable number of BRAUN products. In addition, the Respondent's Website and the Associated Website further promote and market a large amount of consumer products and services bearing other brands such as Philips, Bosch and Bomann.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
As a preliminary matter, the Panel notes that in the present case it is not clear whether the Respondent has actually received either the e mail or the hard copy of the Notification of the Complaint as sent to him by the Center. No acknowledgment has been received from the Respondent and no specific proof of actual delivery appears to exist. However, given this material was sent to the relevant addresses disclosed by the Registrar and also appearing in the WhoIs record, then the Panel again adopts the approach set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), namely, “once the WIPO Center has notified the complaint to the WhoIs-listed contact information (especially where confirmed by the registrar) for the domain name registrant, this would normally satisfy the requirement in paragraph 2(a) of the UDRP Rules to employ reasonably available means calculated to achieve actual notice”. Accordingly the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) The Domain Name is identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the trade mark BRAUN. Although no details have been provided as to turnover or sales figures, the filed evidence establishes the Complainant has carried on business internationally under the name BRAUN for many years and its products have clearly been marketed under that name on an international basis on a substantial scale and are well known. Further, the Complainant has a wide range of registered trade mark rights in the word “Braun”.
The Domain Name is confusingly similar to the BRAUN trade mark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy, “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). The difference in the present case is the addition of the words “mayxay”. In the absence of any Response disputing the Complainant’s case, the Panel accepts that these words mean “blender” in Vietnamese, and as such are descriptive in nature. It is well established that the generic Top-Level Domain “.com” suffix is to be ignored in considering this issue.
Accordingly the Panel finds that the Domain Name is confusingly similar to the Complainant’s trade mark. Accordingly the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
“Braun” is in substance the Complainant’s name and is a term which has no other meaning so far as the Panel is aware save in relation to the Complainant or its products.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to the Respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Domain Name or to use the BRAUN trade mark. The Complainant has prior rights in the BRAUN trade mark which precede the Respondent’s registration of the Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel notes that the Domain Name is being used in relation to a website which markets products from both the Respondent and the Respondent’s competitors. No allegation is made in the Complaint that the products marketed in this manner are not genuine. Use of this nature is not, in the Panel’s opinion, sufficient to confer upon the Respondent rights or legitimate interests in the Domain Name. In this regard the Panel agrees with and adopts the consensus view as set out in the WIPO Overview 2.0 as follows: “Can a reseller/distributor of trademarked goods or services have rights or legitimate interests in a domain name which contains such trademark? Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to "corner the market" in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles”.
The Complainant’s evidence that the Respondent’s website is used to market products from competitors of the Complainant, as well as from the Complainant, means that the Respondent cannot establish a legitimate interest in accordance with this consensus view. Accordingly the Panel concludes that the Respondent does not have any rights or legitimate interests in the Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances, the distinctive nature of the BRAUN trade mark, and the evidence as to the extent of the reputation the Complainant enjoys in the BRAUN trade mark, and the confusingly similar nature of the Domain Name to the BRAUN trade mark, and the lack of any explanation from the Respondent as to why he registered the Domain Name lead the Panel to conclude that the Respondent selected the Domain Name because of its association with the Complainant. The Respondent has used it to market, via the Respondent’s Website and the Associated Website, products from both the Respondent and the Respondent’s competitors. As indicated above no allegation is made in the Complaint that the products marketed in this manner are not genuine. Accordingly the Complainant’s case on bad faith rests on two elements. First, insofar as it is the Complainant’s products which are being marketed in this manner the Domain Name suggest a connection with the Complaint (e.g., that the Respondent is a franchisee or authorised dealer) when no such connection exists. Second, the Domain Name is being used to market products which originate from the Complainant’s competitors, as well as those of the Complainant.
The Panel adopts the approach of the panel in Research in Motion Limited v. One Star Global LLC. WIPO Case No. D2009-0227. In the present case it might be debatable as to whether the use of the Domain Name was legitimate if it had only been used to market “Braun” products. However, the Panel does not need to decide this issue. The uncontested evidence establishes the Domain Name has also been used to market products from competitors of the Complainant. The Complainant’s name and reputation is being used to attract customers who are looking for the Complainant’s products, and who are then offered not only those of the Complainant but also those of its competitors – that amounts to use in bad faith. In the absence of any evidence from the Respondent, the Panel concludes that the Domain Name was registered with this use in mind. As a result, and applying the principles in the above noted decisions, the Panel finds that the Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <mayxaybraun.com> be transferred to the Complainant.
Nick J. Gardner
Date: July 1, 2014