WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Procter & Gamble Company, Braun GmbH v. Domain Administrator, See PrivacyGuardian.org / Ahmet Yonca, TM Market
Case No. D2020-0038
1. The Parties
The Complainant is The Procter & Gamble Company, United States of America (“United States”) and Braun GmbH, Germany, represented by Studio Barbero, Italy.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States / Ahmet Yonca, TM Market, Turkey.
2. The Domain Name and Registrar
The disputed domain name <braunturkiye.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2020. On January 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 10, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 13, 2020.
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 January 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 3, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 11, 2020.
The Center appointed Marilena Comanescu as the sole panelist in this matter on February 20, 2020. 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.
The language of the proceedings is English.
4. Consolidation of the Complainants
The Complaint is submitted by both, The Procter & Gamble Company, United States and Braun GmbH, Germany as the Complainants.
According to the evidence provided in the Complaint, the first Complainant, The Procter & Gamble Company is the formal registrant of the majority of the domain names comprising the BRAUN mark and the parent company of the second Complainant, Braun GmbH, which is the holder of the majority of the BRAUN trademark registrations.
Accordingly, the evidence shows that the Complainants have a common grievance against the Respondent by virtue of having common legal interest, and, in absence of the Respondent’s objections to the consolidation, the Panel find it equitable and procedurally efficient to permit consolidation of multiple Complainants, pursuant to the Rules, paragraph 10(e) and section 4.11 of theWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
5. Factual Background
The first Complainant, The Procter & Gamble Company, was founded in 1837 in the United States and is currently one of the largest companies in the world and manufactures a wide range of consumer goods in diverse areas such as health care, hair care, cosmetics, laundry and fabrics care.
The second Complainant, Braun GmbH, was founded in 1921 in Germany, and has grown in one of the world’s well-known consumer products company, manufacturing a wide range of electrical consumer goods.
The first Complainant acquired the second Complainant in 2005. Both Complainants will be further collectively referred to as the “Complainant”.
The Complainant holds a large portfolio of trademarks, including the following:
- the International trademark registration number 652027 for the word BRAUN, registered on November 14, 1995, and designating many countries worldwide, and covering goods in Nice classes 11, 14, 16, 21, 26, 35, and 37; and
- the International trademark registration number 650428 for the word BRAUN, registered on November 14, 1995, and designating many countries worldwide, and covering goods in Nice classes 1, 3, 7, 8, 9, 10, and 11.
The Complainant received numerous internationally recognized design prizes for its products and holds more than 8,000 active patents.
The BRAUN trademark has been included in various lists dedicated to most successful brands in the world and was found as being well-known by previous UDRP panels. See for example Procter & Gamble Business Services Canada Company, The Gillette Company LLC, Braun GmbH and The Procter & Gamble company v. Whois privacy protection service, Internet Invest, Ltd. dba Imena.ua / Artem Shostak, Private person 66478, Whois privacy protection service, Internet Invest, Ltd. dba Imena.ua / Artem Shostak, Private person 53397, Privacy Protection, HOSTING UKRAINE LTD / Коваленко Валерий/Konovalenko Valeriy, Privacy Protection, HOSTING UKRAINE LLC / Коваленко Валерий/Konovalenko Valeriy, WIPO Case No. D2017-1493; or Braun GmbH v. Do Van Tuan, WIPO Case No. D2014-0832.
The Complainant holds numerous domain names incorporating the mark BRAUN, the main one being <braun.com>.
The disputed domain name was registered on February 20, 2019, and, at the time of filing the Complaint, it was connected to a commercial website which was offering allegedly unauthorized products under the trademark BRAUN, also at discounted prices, displaying the Complainant’s BRAUN trademark; all such facts allegedly without the authorization or approval of the Complainant.
Prior to initiating the present proceeding, the Complainant sent a cease and desist letter and several reminders to the Respondent, as listed in the WhoIs. No response was received. Further, the Complainant approached the provider hosting requesting to block access to the online location available under the disputed domain name and managed to temporarily reach a deactivation of the allegedly infringing website. However, the Respondent changed the hosting provider which untilamtely hindered such deactivation.
6. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its well-known trademark BRAUN, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith. The Complainant requests that the disputed domain name be transferred to the first Complainant, The Procter & Gamble Company, United States.
The Respondent did not reply to the Complainant’s contentions.
7. Discussion and Findings
In view of the abscence of a Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances.
A. Identical or Confusingly Similar
The Complainant holds rights in the BRAUN trademark.
The disputed domain name <braunturkiye.com> incorporates the Complainant’s trademark BRAUN with an additional geographic term. However, such addition does not prevent a finding of confusing similarity as the Complainant’s trademark is clearly recognizable within the disputed domain name.
Numerous UDRP panels have considered that the addition of other terms (whether descriptive or geographic term, pejorative, meaningless or otherwise) to trademarks in a domain name is not sufficient to escape a finding of confusing similarity. See section 1.8 of theWIPO Overview 3.0.
Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g.,“.com”, “.info”, “.org”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview 3.0.
Given the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark BRAUN, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant asserts that the Respondent does not hold any trademark rights, license or authorization to use the mark BRAUN, that the Respondent is not commonly known by the disputed domain name, and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.
Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of theWIPO Overview 3.0.
The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.
There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name.
Further, there is no evidence before the Panel to suggest that the Respondent has made a bona fide use of the disputed domain name, or has been known by this disputed domain name, or is making any legitimate noncommercial or fair use of the disputed domain name. In fact, at the time of drafting the Complaint the disputed domain name resolved to a website featuring the BRAUN trademark and offering for sale allegedly unauthorized products bearing the Complainant’s trademarks without the Complainant’s consent.
In this case, assuming that the products or at least some of the products offered for sale under the disputed domain name were genuine BRAUN branded products, the key question under this element is whether the Respondent’s use of the disputed domain name for such resale amounts to a bona fide offering of goods under paragraph 4(c)(i) of the Policy. The current state of UDRP panel decisions in relation to this issue is helpfully summarized in section 2.8 of theWIPO Overview 3.0 as follows:
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 include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder.
This summary is based on UDRP panel decision Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. At least one condition that is outlined has clearly not been satisfied by the Respondent in this case: at the time of drafting the Complaint, on the website corresponding to the disputed domain name there was no accurate information regarding the Respondent and its relationship with the Complainant thus generating a likelihood of confusion for the Internet users accessing the Respondent’s website.
For all these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Complainant holds trademark rights for BRAUN for decades.
The disputed domain name <braunturkiye.com> was created in 2019 and incorporates the Complainant’s mark with an additional geographical term – “turkiye”.
For the above, the Panel finds that the disputed domain name was registered in bad faith, knowing the Complainant and targeting its trademark.
The Respondent is using without permission the Complainant’s well-known trademark in order to get traffic on its web portal and to obtain commercial gain from the false impression created for the Internet users with regard to a potential connection with the Complainant. This impression is created particularly by the incorporation of the Complainant’s trademark in the disputed domain name, the content on the website provided thereunder which includes the Complainant’s trademarks and product images, without any disclaimer.
Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] 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” is evidence of registration and use in bad faith.
Given that the disputed domain name incorporates the Complainant’s trademark and the website operated under the disputed domain name displays the Complainant’s trademarks, unauthorized products with BRAUN trademark indeed in this Panel’s view, the Respondent intended to attract Internet users accessing the website corresponding to the disputed domain name who may be confused and believe that this is a website held, controlled by, or somehow affiliated or related to the Complainant, for its commercial gain.
Further, it was constantly found by the UDRP panels that the mere registration of a domain name that is identical or confusingly similar to a third party’s well-known trademark constitutes, by itself, bad faith presumption of registration for the purpose of Policy. See section 3.1.4 of the WIPO Overview.
The Respondent registered the disputed domain name under a privacy service, did not respond to the Complainant’s cease and desist letters, changed the hosting provider in order to evade the deactivation obtained by the Complainant, and refused to participate in the present proceedings in order to provide arguments in its favor. Having in view the other circumstances of this case, such facts constitute further evidence of bad faith.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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 <braunturkiye.com> be transferred to the first Complainant, The Procter & Gamble Company, United States.
Date: February 24, 2020