WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
De'Longhi Appliances S.r.l v. Thuong Tan
Case No. D2016-2226
1. The Parties
The Complainant is De'Longhi Appliances S.r.l of Treviso, Italy, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Thuong Tan of Hanoi, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <banmayxaybraun.com> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 2, 2016. On November 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 3, 2016, 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 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 4, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 5, 2016.
The Center appointed Nicholas Smith as the sole panelist in this matter on December 19, 2016. 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 is an Italian manufacturer and supplier of portable heaters, air conditioners and small domestic appliances such as coffee makers, food preparation and cooking appliances. The Complainant has around 7,000 employees and operates globally under the brands De'Longhi, Braun, Kenwood and Ariete.
The Complainant is the licensee of a number of trademark registrations consisting of the word "Braun" (the "BRAUN Mark"), which was registered internationally from October 28, 1995 for goods and services in Nice classes 1, 3, 7, 8, 9, 10, 11 and 21. The BRAUN Mark was licensed from Braun GmbH to the Complainant in 2012 for use within the small kitchen appliances, ironing and selected household appliances categories. In particular, Braun GmbH has specifically licensed the BRAUN Mark to the Complainant in Viet Nam, the location of the Respondent.
The Domain Name <banmayxaybraun.com> was registered on July 9, 2014. The Domain Name presently redirects to a site at "www.banmayxaycamtay.com" however prior to the commencement of the proceeding redirected to an identical site at the Domain Name ("Respondent's Website") in Vietnamese that displayed the BRAUN Mark, and offered for sale small household appliances, in particular cake mixers, purporting to be Braun cake mixers as well as various other appliances from other manufacturers. The words "ban may xay" are the Vietnamese words for "cake mixers".
5. Parties' Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant's BRAUN Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant has acquired the rights to use the BRAUN Mark through a licence with Braun GmbH, which includes the right to enforce its rights in relation to the BRAUN Mark, including in Viet Nam, where the BRAUN Mark is registered.
The Domain Name consists of the BRAUN Mark in its entirety with the addition of the words "ban may xay". The Domain Name is confusingly similar to the Complainant's BRAUN Mark as the additional words are purely descriptive, being the Vietnamese words for "cake mixers".
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known by the Domain Name, nor does the Respondent have any authorization from the Complainant to register the Domain Name or a domain name corresponding to the BRAUN Mark. The Respondent is using the Domain Name to divert Internet traffic to the Respondent's Website where the Respondent offers either counterfeit goods or the Complainant's goods (but in a manner that suggests that the Respondent is associated with the Complainant or authorised by the Complainant, which is not the case). This constitutes prima facie evidence of no rights or legitimate interests.
The Domain Name was registered and is being used in bad faith. The Domain Name resolves to a website that gives the impression that it is an official website of the Complainant and thus creates a likelihood of confusion with the Complainant. It is the clear and obvious intention of the Respondent to attract consumers to its website under the misimpression that it is the Complainant's Website and to profit from this confusion. The Respondent is also offering to sell the Domain Name for valuable consideration in excess of its out-of-pocket expenses. The Respondent's conduct amounts to registration and use of the Domain Name in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant's trade or service mark.
The Complainant is the licensee of the BRAUN Mark, which is registered by Braun GmbH in various countries, including Viet Nam. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") paragraph 1.8 summarizes the consensus views of UDRP panels in response to the question about whether a trademark licensee has rights in a trademark for the purpose of filing a UDRP case as follows:
"In most circumstances, a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a trademark is considered to have rights in a trademark under the UDRP. For the purpose of filing under the UDRP, evidence of such license and/or authorization of the principal trademark holder to the bringing of the UDRP complaint would tend to support such a finding. Panels have in certain cases been prepared to infer the existence of a license and/or authorization from the particular facts, but in general, relevant evidence is desirable. Although not a requirement, panels have on occasion found it helpful, where a complaint relies on a common source of trademark rights, for all relevant rights holders to be included as co-complainants. ."
In the present case, the Complaint provides, in the form of a letter from Braun GmbH, clear evidence of the licence between Braun GmbH and the Complainant such that the Panel finds that the Complainant has rights in the BRAUN Mark for the purpose of the present proceeding.
The Domain Name consists of the BRAUN Mark, with the addition of the words "ban may xay", meaning "cake mixers" in Vietnamese. The addition of these words does not prevent a finding of confusing similarity. Moreover, an individual viewing the Domain Name with a knowledge of Vietnamese may be confused into thinking that the Domain Name refers to a store in which it is possible to purchase the Complainant's cake mixer products. The Panel finds that the Domain Name is confusingly similar to the Complainant's BRAUN Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
"Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the BRAUN Mark or a mark similar to the BRAUN Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name or has any such affiliation or permission from Braun GmbH to use the BRAUN Mark. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial use.
The Respondent has used the Domain Name to operate a website to sell a mixture of products, many of whom purport to be legitimate Braun cake mixers but may be, as the Complainant suggests, counterfeit products.
If the cake mixers sold on the Respondent's Website are not genuine Braun products, the Respondent's use of the Domain Name does not grant it rights or legitimate interests since it is using the Complainant's BRAUN Mark for a site selling counterfeit products.
If the Respondent is offering genuine Braun cake mixers from the Respondent's Website, such use does not automatically grant it rights and legitimate interests. The principles that govern whether a reseller of genuine goods has rights or legitimate interests have been set out in a variety of UDRP decisions, starting with the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
The WIPO Overview 2.0 paragraph 2.3 summarizes the consensus views of UDRP panels in response to the question about whether a reseller/distributor of trademarked goods or services has rights or legitimate interests in a domain name which contains such trademark in the following manner:
"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 sites 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. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark."
In this case, the Respondent's Website does not accurately or prominently disclose the Respondent's relationship with the Complainant, in particular that it is not an authorized dealer or has any particular connection with the Complainant. Rather, its prominent display of the BRAUN Mark gives the impression that the Respondent's Website is an official website of the Complainant. Members of the public who are interested in Braun products may visit the Respondent's Website on the assumption that the Respondent is the Complainant itself or an authorized dealer or reseller of Braun products. This is not the case. Furthermore, the Respondent's Website also sells products purporting to be from companies other than the Complainant.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a response the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of 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 Respondent 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 the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent 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 Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's Website or location or of a product or service on the Respondent's website or location. (Policy, paragraph 4(b))
The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the BRAUN Mark at the time the Domain Name was registered. The Domain Name has resolved to a website that displays the BRAUN Mark and sells products that the site asserts are the Complainant's products.
The Respondent's conduct in registering the Domain Name when it was aware of the Complainant's rights and lacked rights and legitimate interests of its own amounts to registration in bad faith.
The Respondent registered the Domain Name for the purposes of operating a website specifically to sell either Braun products or counterfeit products that compete with Braun products. The Respondent is using the Domain Name that is confusingly similar to the BRAUN Mark to sell products, be they legitimate or otherwise, in competition with the Complainant and without the Complainant's approval. Consequently, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and the Complainant's BRAUN Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's Website.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
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, <banmayxaybraun.com>, be transferred to the Complainant.
Date: December 27, 2016