WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Edgewell Personal Care Brands, LLC v. Frans Noordermeer
Case No. D2016-2440
1. The Parties
The Complainant is Edgewell Personal Care Brands, LLC of Shelton, Connecticut, United States of America (“US”), represented by Thompson Coburn LLP, US.
The Respondent is Frans Noordermeer of Arnhem, the Netherlands.
2. The Domain Names and Registrar
The disputed domain names <bananaboat.shop>, <schick.shop>, <wilkinson-sword.shop> and <wilkinsonsword.shop> are registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2016. On December 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date, 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 Complainant filed an amended Complaint on December 12, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 2, 2017. On January 2, 2017, the Respondent filed a request for an additional four calendar days to file the Response. In accordance with paragraph 5(b) of the Rules, the Center granted the extension of time until January 6, 2017. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties of the commencement of the Panel appointment process on January 7, 2017.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on January 16, 2017. 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 owns the following registered trademarks for WILKINSON SWORD and WILKINSON SWORD and design: US Reg. Nos. 2944019, 2976022, 3059573, 3245338, 4150428, and 613015, for various goods and services, including razors, razor blades, safety razor blades, and shaving preparations;
for BANANA BOAT and BANANA BOAT and design: US Reg. Nos. 1093524, 1754761, 1992717, and 4589323, for various goods and services, including sunblock preparations; sunscreen preparations; skin lotions; non-medicated lip balm; hair conditioners; gels containing aloe-vera, vitamin e all used for skin care purposes; medicated skin lotions and first aid preparations; namely, a topical antiseptic and anesthetic; sun tan preparation; non-medicated skin care preparations; sun-tanning preparations; and tanning oils;
for SCHICK and SCHICK and design: US Reg. Nos. 788722, 0729387, 1796254, 2881805, 3210869, 3663287, 3663288, and 3795146, for various goods and services, including, but not limited to, razors, razor blades, disposable razors, safety razors; safety razors and appurtenances therefor-namely, safety razor blades, devices for inserting blades into razors, and razor blade dispensing devices; shaving creams; shaving foam; shaving gels; shaving preparations; and electric shavers.
The disputed domain names <wilkinson-sword.shop> and <wilkinsonsword.shop> were registered on October 3, 2016. The disputed domain names <bananaboat.shop> and <schick.shop> were registered on November 11, 2016.
5. Parties’ Contentions
The Complainant asserts that it has exclusive rights in the WILKINSON SWORD trademark by way of its registration, in various embodiments, with the US Patent and Trademark Office and in other countries.
The Complainant further asserts that the BANANA BOAT trademark was first used in the US in 1976, and first registered in 1993 – more than 22 years before the Respondent registered the disputed domain name.
The SCHICK trademark was first registered in the US in 1962 – over 53 years before the Respondent registered the relevant disputed domain name. The Complainant contends that through extensive use and prominent advertising, the BANANA BOAT and SCHICK trademarks have become world-renowned. The BANANA BOAT and SCHICK trademarks have also been registered in numerous countries other than the US.
The Complainant contends that the disputed domain names are all identical to its respective registered trademarks. The only difference is the addition of the extension “.shop” which is not relevant to the comparison, as repeatedly decided by previous UDRP panels.
The Complainant also maintains that the disputed domain names are identical to the Complainant’s domain names (<wilkinsonsword.co.uk>, <bananaboat.com> and <shick.com>) which resolve to legitimate websites. Thus, not only do the disputed domain names cause confusion with their improper use of the BANANA BOAT and SCHICK trademarks, according to the Complainant they also cause confusion with, and seek to misdirect Internet users to the websites to which the disputed domain names resolve.
The Complainant points out that the Policy contains a non-exhaustive list of circumstances that may demonstrate when a Respondent has rights or legitimate interests in a domain name. The list consists of (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers. The Complainant asserts the Respondent’s use of disputed domain names does not satisfy any of these circumstances, and that the Respondent cannot satisfy his burden of proof in this regard. Thus, the Respondent has no rights or legitimate interests in the disputed domain names.
The Respondent is not a licensee of Complainant and has never been affiliated with, connected to, or sponsored by it. According to the Complainant, the Respondent has no actual or contemplated bona fide or legitimate use for the disputed domain names. Registration of a domain name incorporating another’s famous mark does not confer any rights or legitimate interests in the domain name, but rather constitutes bad faith.
According to the Complainant, the only evident purpose the disputed domain names can serve is to deceitfully draw Internet users, who are interested in the Complainant’s products, to the Respondent’s website – for the ultimate purpose of selling the domain name or gaining leverage in attempting to obtain a business arrangement with the Complainant.
According to the Complainant, the Respondent is taking unfair advantage of the goodwill associated with its relevant trademarks. The Respondent’s use of the disputed domain names in connection with placeholder websites containing photographs of two kittens purportedly, conveniently and improbably named “Wilkinson” and “Sword” is not legitimate noncommercial use. According to the Complainant, they are instead sham placeholder websites. They attempt to distract from the true reason for the registrations of the domain name: to support the Respondent’s attempts to enter into a business deal with the Complainant.
The Complainant says that when it rejected the Respondent’s offer to serve as the Complainant’s affiliate in Europe in relation to the <wilkinson-sword.shop> and <wilkinsonsword.shop> disputed domain names, the Respondent immediately registered <bananaboat.shop> and <schick.shop>. The wording at the websites to which these two domain names resolve indicate the websites are “busy”, i.e., apparently under construction. According to the Complainant, this also does not amount to a legitimate noncommercial or fair use. Instead it is said to be the continuation of the Respondent’s plan to use “.shop” generic Top-Level Domain (“gTLD”) domain name registrations incorporating the Complainant’s famous trademarks to pressure it into entering into a business agreement.
The registration of a domain name that uses a trademark as the dominant portion, with knowledge of a third party’s rights in that mark and no license to use it, constitutes a bad faith registration, the Complainant contends. Given the fame of the WILKINSON SWORD trademark, it is inconceivable that the Respondent registered the <wilkinsonsword.shop> and <wilkinson-sword.shop> domain names in good faith and ignorant of the Complainant’s exclusive rights. Further, the Complainant’s rights to the WILKINSON SWORD trademark would have been clearly evident to the Respondent had he conducted a trademark search, or even a simple search engine query.
The Complainant points out that the Respondent immediately proposed a business relationship with the Complainant after being contacted by counsel regarding the improper registration of <wilkinsonsword.shop> and <wilkinson-sword.shop>. According to the Complainant, this demonstrates that the Respondent had knowledge of the Complainant’s prior rights to and use of the WILKINSON SWORD trademark.
Similarly, the Complainant contends, given the strength of the BANANA BOAT and SCHICK trademarks, it is inconceivable that the Respondent registered the relevant disputed domain names in good faith and without knowledge of the Complainant’s exclusive rights. In fact, his bad faith is even more egregious because he registered the two disputed domain names the same day the Complainant informed him that it was not interested in his suggestion that the Parties enter into a business agreement.
The Complainant asserts that the website at the <wilkinsonsword.shop> disputed domain name asks visitors to, loosely translated from Dutch, “please contact us for more information” and “use the form below for any questions or requests”. The website at the <wilkinson-sword.shop> disputed domain name asks visitors to contact the Respondent if they have any questions. According to the Complainant, apparently the Respondent believes that by setting up these pretext websites, and not explicitly offering to sell the domain names for a disclosed price, he is insulated from a UDRP proceeding. However, the Complainant asserts that while the domain names are not explicitly offered for sale for a set price on the websites, the totality of the circumstances indicates they are indeed for sale – either as a separate transaction or as part of a business relationship the Respondent repeatedly sought with the Complainant.
According to the Complainant, it is reasonable to conclude that the Respondent is collecting and soliciting contact information from persons or entities that may be interested in purchasing the domain names. He is not innocently sharing the exploits of two kittens. This is demonstrated by the fact that the domain names were registered in the “.shop” gTLD.
Further, the Respondent is acting in bad faith in registering and using the disputed domain names because the valuable consideration he seeks is a business agreement, as is apparent from email correspondence. When the Complainant’s counsel contacted the Respondent he proposed an arrangement whereby he would act as a seller of the Complainant’s products for European countries. The Complainant rejected these offers and on or about the same day, the Respondent proceeded to register two additional domain names that were identical or confusingly similar to registered marks of the Complainant (BANANA BOAT and SCHICK). These facts establish that the Respondent’s registration and use of all the disputed domain names is in bad faith.
According to the Complainant, the Respondent’s bad faith registration and use is also apparent from the pattern of conduct of registering a multiplicity of marks owned by the Complainant. Further, the Respondent’s registration of the disputed domain names also amounts to opportunistic bad faith registration and use. Opportunistic bad faith occurs when the disputed domain name “is so obviously connected with such a well-known product that its very use by someone with no connection to the product suggests opportunistic bad faith”. According to the Complainant, in such cases it is difficult for the Respondent who has no connection with the mark to credibly deny bad faith registration or use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain names are all identical to trademarks registered by the Complainant. The only difference is contraction of terms that compose the trademark, which is standard practice on the Internet, and the addition of the extension “.shop”. This addition is generally of no relevance to the comparative exercise the Panel must engage in on the basis of the Policy.
Therefore the Panel holds that the disputed domain names are each identical to the respective registered trademarks of the Complainant.
B. Rights or Legitimate Interests
The websites to which the <wilkinson-sword.shop> and <wilkinsonsword.shop> disputed domain names resolve are ostensibly concerned with two kittens named “Wilkinson” and “Sword” respectively. The websites show pictures of two kittens and text in Dutch referring to them as twin cats belonging to the Respondent. There is a brief description and a promise to upload more photos. Web users are invited to comment via an apparent guestbook link. The websites so established do not constitute legitimate not-for-profit uses. They are obviously sham websites that thinly disguise the real purpose of the Respondent. His true purpose is apparent from the incorporation of distinctive trademarks of long standing, widely known amongst consumers, and from his subsequent correspondence seeking a business relationship with the Complainant. The veneer of legitimacy is intended to put the Respondent in a stronger position to negotiate with the Complainant for his own profit. In relation to the domain names that resolve to websites that have some images and an indication that they are “busy”, this amounts to at best a passive holding, at worst a disguised way of signaling that the relevant domain names are indeed for sale. Whether one or the other is of little consequence, because the Respondent has acquired domain names that incorporate widely known distinctive trademarks that it is clear from all the circumstances, he is fully aware of and has no basis to claim any rights or recognized interests in.
To adopt a domain name that incorporates trademarks whose established reputation is clearly known to the Respondent, with a view to turning them to account by extracting some commercial concession or payment from the trademark owner is not the kind of conduct that vests any rights or legitimate interests. That is all the more the case where there are thinly vailed but deliberate attempts to mask the Respondent’s real purpose.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in any of the disputed domain names.
C. Registered and Used in Bad Faith
It is inconceivable that the Respondent was not aware of the rights vesting in the Complainant in relation to all the marks incorporated in the disputed domain names. They are distinctive and well-recognized marks known to consumers in multiple jurisdictions in relation to common consumer products. In any case the subsequent conduct of the Respondent, clearly aware of the Complainant’s ownership of all the relevant trademarks, indicates that he was cognizant of the Complainant’s rights at the time of registration.
Therefore the Panel holds that the disputed domain names were all registered and used in bad faith.
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 names <bananaboat.shop>, <schick.shop>, <wilkinson-sword.shop> and <wilkinsonsword.shop> be transferred to the Complainant.
WiIliam A. Van Caenegem
Date: January 30, 2017