WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Procter & Gamble Company, The Gillette Company LLC v. WhoisGuard Protected, WhoisGuard, Inc./ Benson Edges / Garry Kent

Case No. D2019-1976

1. The Parties

The Complainants are The Procter & Gamble Company (“P&G”) and The Gillette Company LLC (“Gillette”), United States of America (the “United States” or “U.S.”), represented by Studio Barbero, Italy.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama/ Benson Edges, United States / Garry Kent, United States.

2. The Domain Names and Registrar

The disputed domain names <oralbwrapcorp.com> and <oralbwraponline.com> are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2019. On August 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 15, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 15, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint or to file a Complaint for each of the disputed domain names. The Complainant filed an amendment to the Complaint on August 19, 2019. The Center sent the consolidation email on August 20, 2019.

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 August 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 12, 2019.

The Center appointed Evan D. Brown as the sole panelist in this matter on October 3, 2019. 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 Complainants own numerous trademark registrations for the mark ORAL-B in several countries, including U.S. Registration No. 1502752 for the word mark ORAL-B (issued on September 6, 1988). The ORAL-B mark is well-known for various products in the field of oral care.

The disputed domain name <oralbwraponline.com> was registered on February 10, 2019 and <oralbwrapcorp.com> was registered on March 12, 2019. The disputed domain names were used to set up websites that bore the ORAL-B trademark and otherwise purported to be published by the Complainants. The websites were, however, in furtherance of a scam advertising program that was not initiated by the Complainants. The apparent purpose of the websites was to deceive people into participating in the program and thereby incurring potential financial loss.

5. Parties’ Contentions

A. Complainant

To succeed, the Complainants must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights;

(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

The Panel finds that all three elements have been met in this case.

B. Respondent

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

6. Discussion and Findings

A. Consolidation

i. Consolidation of Multiple Complainants

The Complainants have brought a single consolidated Complaint against the Respondents and have requested that consolidation be granted since it meets the criteria set forth in prior UDRP decisions and in paragraph 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

UDRP panels have articulated principles governing the question of whether a complaint filed by multiple complainants may be brought against one or more respondents. These criteria encompass situations in which: (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants’ individual rights in a similar fashion; and (ii) it would be equitable and procedurally efficient to permit the consolidation. The burden of showing that consolidation is proper falls on the Complainants.

The Complainants have provided sufficient evidence to support consolidating them. They share a legal interest and grievance: P&G (Gillette’s parent company) owns many domain names containing the ORAL-B trademark and Gillette owns many of the trademark registrations for variations of the ORAL-B trademark. The disputed domain names have resolved to similar official-looking websites that show the Complainants’ trademarks and promote a scam wrap advertising initiative. The Respondents have engaged in conduct that has affected both the Complainants’ rights in a similar fashion. Because of the similarity of the issues raised concerning both of the disputed domain names, consolidation of the Complainants would be equitable and procedurally efficient.

ii. Consolidation of Multiple Respondents

The Complainants request the Panel hear the present dispute - brought by two Complainants against two Respondents - as a consolidated complaint. The Panel grants the request.

Paragraph 10(e) of the Rules states that a “[p]anel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.” Paragraph 10(c) of the Rules provides, in relevant part, that “the [p]anel shall ensure that the administrative proceeding takes place with due expedition.”

Section 4.11.2 of the WIPO Overview 3.0 summarizes the consensus view of UDRP panels on the consolidation of multiple respondents as follows:

Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.

Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).

The Complainants provide sufficient evidence to support consolidation of the Respondents into one proceeding. Each of the Respondents selected the same Registrar and privacy protection service to secure their registrations. The registration dates of the disputed domain names occurred close together in time (in February and March 2019). The words comprising the disputed domain names are similar, and the same textual material has appeared on the websites found at each of the disputed domain names - both websites have been used for the same apparent scam car wrap initiative involving the ORAL-B trademark. Further, the Complainants highlight that the structure of the contact details of the purported two different underlying registrants disclosed by the Registrar after the filing of the Complaint are similar. In particular, both of the postal addresses have a similar structure and, under the State/Province field, both underlying Registrants have indicated the abbreviation of the state where they are purportedly based followed by the same letter S (CA S and CT S), which is uncommon.

B. Identical or Confusingly Similar

The Complainants have rights in the mark ORAL-B. The mark - and similar variations - is subject to registrations that predate registration of the disputed domain name, and has been in use for many years. The disputed domain names contain the Complainants’ mark in its entirety and is in this manner identical or confusingly similar to the ORAL-B mark. The generic Top-Level Domain (“gTLD”) “.com” may be disregarded for the purpose of comparing the disputed domain names with the Complainant’s mark under paragraph 4(a)(i) of the Policy. Accordingly, the Panel finds in favor of the Complainant on this first element of the Policy.

C. Rights or Legitimate Interests

The Complainants have successfully established a prima facie showing that the Respondents lack rights or legitimate interests in the disputed domain names. The use of the disputed domain names to set up a scam advertising initiative is a clear example of a respondent lacking rights or legitimate interests. See, e.g., Advance Magazine Publishers Inc. v. Registration Private, Domains By Proxy LLC / Phillip Watson, WIPO Case No. D2016-1582.

D. Registered and Used in Bad Faith

The Policy requires a complainant to establish the disputed domain name was registered and is being used in bad faith. The facts of this case demonstrate that the Respondents registered the disputed domain names for commercial gain, and to trade on the Complainant’s goodwill and reputation. By setting up a scam advertising initiative, the Respondents targeted the Complainants for purposes of commercial gain. For these reasons, the Panel finds that the disputed domain names were registered and are being use in bad faith.

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 names <oralbwrapcorp.com> and <oralbwraponline.com> be transferred to the Complainants.

Evan D. Brown
Sole Panelist
Date: October 17, 2019