WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Edgewell Personal Care Brands, LLC v. Registration Private, Domains By Proxy, LLC / Online Resource Management, Ltd

Case No. D2015-2256

1. The Parties

The Complainant is Edgewell Personal Care Brands, LLC of Shelton, Connecticut, United States of America (“United States” or “US”), represented by Thompson Coburn LLP, United States.

The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Online Resource Management, Ltd of Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <schickhydrosilksurvey.com> 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 December 11, 2015. On December 14, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 2015, 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 Registrar stated that the registrant of the disputed domain name was Online Resource Management Ltd, not Domains by Proxy LLC.

The Center sent an email communication to the Complainant on December 17, 2015 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 amended Complaint on December 18, 2015.

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 21, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 12, 2016.

The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on January 20, 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 the registered owner of US trade mark registration no. 4,222,592 in class 8 for SCHICK HYDRO SILK; US trade mark registration numbers 729,387 in class 23, 788,722 in class 23, 1,796,254 in class 8, 3,663,287 in class 8, 3,663,288 in class 8, 2,881,805 in class 8, 3,210,869 in class 8, 3,795,146 in class 3, and 3,795,147 in class 3, all for SCHICK; US trade mark registration numbers 3,796,647 in class 8 and 4,615,929 in class 3 for SCHICK HYDRO; and US trade mark registration no. 4,617,644 in class 8 for HYDRO.

Including the above US registrations, the Complainant has 251 registrations or applications for the mark SCHICK in over 141 countries. It has seven registrations for SCHICK HYDRO SILK.

The mark SCHICK was first used in 1926 in connection with safety razors and safety razor blades. The mark SCHICK HYDRO SILK was first used in commerce at least as early as January 17, 2012. The Complainant uses the SCHICK marks and SCHICK HYDRO SILK mark on its website “www.schick.com”. The Complainant also displays its marks on its products. In addition, an affiliate of the Complainant offers a website at the domain name <hydrosilksurvey.com>.

On August 31, 2015, the Complainant emailed a cease and desist letter to the email address provided to the true owner of the disputed domain name by its proxy service.

On October 12, 2015, the Complainant sent the proxy service itself a cease and desist letter, requesting that it be forwarded to the true owner of the disputed domain name no later than October 30, 2015.

The proxy service informed the Complainant that the true owner of the disputed domain name was Online Resource Management Ltd, a company having its mailing address in the Cayman Islands. The Complainant sent a third cease and desist letter to the true owner of the disputed domain name on October 30, 2015. The Complainant has received no response from the true owner of the disputed domain name.

5. Parties’ Contentions

A. Complainant

As to the requirement in paragraph 4(a)(i) of the Policy, the Complainant contends that the disputed domain name is “confusingly similar to Complainant’s SCHICK HYDRO SILK marks, particularly the individual SCHICK HYDRO SILK mark, as it contains terms and/or phrases phonetically identical to the SCHICK HYDRO SILK marks and does nothing to distinguish itself from such marks.” It contends that the descriptive term “survey” added to the end of the SCHICK HYDRO SILK mark is insufficient to negate a finding of confusing similarity and in fact enhances the risk of consumer confusion, with reference to Brink’s Network, Inc. v. Jenny Ho, brinksplacetv.com, WIPO Case No. D2009-0530 and Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888. Additionally, the website operated in connection with the disputed domain name appears to offer goods similar to those offered by the Complainant in connection with the SCHICK HYDRO SILK marks. The Complainant contends that this enhances the likelihood of confusion, with reference to PRL USA Holdings, Inc. v. Unasi Management Inc., WIPO Case No. D2005-1027.

As to the requirement in paragraph 4(a)(ii) of the Policy, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. It states that the website at the disputed domain name is a pay-per-click website that directs Internet users to websites for the Complainant’s competitors. The Complainant contends that use of pay-per-click websites has been found to constitute “abusive cybersquatting”, with reference to mVisible Technologies, Inc. v. Navigations Catalyst Systems, Inc., WIPO Case No. D2007-1141. The Complainant contends that the disputed domain name attempts to profit from the goodwill of the Complainant’s SCHICK HYDRO SILK marks by diverting Internet users to its pay-per-click website and then re-directing them to the Complainant’s competitors, which results in the Respondent receiving a profit while the Complainant’s goodwill is diminished. As such, this use does not establish rights or legitimate interests.

The Complainant further contends that the Respondent is not a licensee of the Complainant and has never been affiliated with or connected to the Complainant and as such, it has no actual or contemplated bona fide or legitimate use of the disputed domain name (with reference to VIVENDI v. vivendi-mena.com Private Registrant/ Mr. Arshad Mohamed, WIPO Case No. D2011-0154). The Complainant also contends that the Respondent must have been aware of the SCHICK HYDRO SILK marks at the time of registering the disputed domain name. The Respondent has provided no evidence that it has been commonly known by the disputed domain name. The Complainant also contends that the Respondent’s use of the disputed domain name is not a noncommercial or fair use. The phrase “schick hydro silk” is not used for a descriptive purpose.

As to the requirement in paragraph 4(a)(iii) of the Policy, the Complainant contends that the Respondent knew of or was willfully blind to the Complainant’s rights in the SCHICK HYDRO SILK marks at the time of registration and the registration was therefore made in bad faith. This is because of the fame of the SCHICK HYDRO SILK marks; the fact that the Complainant’s SCHICK HYDRO SILK registrations were a matter of public record; and the fact that had the Respondent conducted a simple trade mark search or search engine query, it would have been made aware of the Complainant. The Complainant contends that the Respondent either failed to conduct a search or disregarded the results, either of which constitutes bad faith, with reference to BzzAgent, Inc. v. bzzaget.com c/o Nameview Inc. Whois IDentity Shield and Vertical Axis, WIPO Case No. D2010-1187. Further, the Respondent’s use of the disputed domain name to display a pay-per-click website redirecting to the Complainant’s competitors is itself bad faith (with reference to Hertz System, Inc. v. Rampe Purda / Privacy--Protect.org, WIPO Case No. D2010-0636 and AT&T Corp. v. Asia Ventures, Inc., WIPO Case No. D2005-1012). The Complainant also contends that “the boilerplate disclaimer” at the bottom of the website associated with the disputed domain name does not preclude a finding of bad faith (with reference to Dymatize Enterprises, LLC v. Carolina Rodrigues, WIPO Case No. D2015-1776).

The Complainant also contends that the Respondent’s failure to take action in response to the Complainant’s cease and desist letters is evidence of bad faith.

The Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:

(I) That the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights; and

(II) That the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(III) That the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has established trade mark rights in SCHICK, SCHICK HYDRO and SCHICK HYDRO SILK.

The Panel finds that the disputed domain name is confusingly similar to these trade marks in which the Complainant has rights and finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:

(I) That before notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to a disputed domain name in connection with a bona fide offering of goods or services; or

(II) That the Respondent has been commonly known by the disputed domain name, even if it had acquired no trade mark or service mark rights; or

(III) That the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trade mark or service mark at issue.

The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.

The Complainant states, and the Panel accepts, that the Respondent is not a licensee of the Complainant and is not connected to the Complainant.

In the circumstances, the Panel finds that the Complainant has satisfied the burden of showing a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

Accordingly, and in the absence of any response from the Respondent, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of the disputed domain name in bad faith:

(i) Circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trade mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or

(ii) That the Respondent has registered the disputed domain name in order to prevent the owner of the trade mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) That the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) That by using the disputed domain name, the Respondent has intentionally attempted 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.

The Panel is satisfied that the disputed domain name was registered and is being used in bad faith.

(a) The Panel finds that at the time of registration, the Respondent must have been aware of the Complainant’s trade marks and therefore registered it in bad faith for the following reasons:

(i) The Complainant’s trade marks SCHICK, SCHICK HYDRO and SCHICK HYDRO SILK are distinctive. “Schick” is not a term that anyone would use descriptively. It is therefore inconceivable that the Respondent could have coincidentally chosen the disputed domain name without knowledge of the Complainant’s marks as it encapsulates the distinctive mark SCHICK HYDRO SILK.

(ii) Further, paragraph 2 of the UDRP puts a burden on registrants where it states “By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to use that … to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of a third party … it is your responsibility to determine whether your domain name infringes or violates someone else’s rights.” The most cursory search prior to the Respondent acquiring the disputed domain name would instantly reveal the Complainant and its trade marks and websites.

(b) As to use, the disputed domain name is being used to display automated pay-per-click content, linking to products of the Complainant’s competitors. The Complainant has provided evidence as to the appearance of the website available at the disputed domain name on November 25, 2015. The Panel accepts this evidence as showing that the disputed domain name was being used to link to the Complainant’s competitors (in particular “Gillette Safety Razor Blades”, “Gillette Mach 3 Razors”, “Gillette Fusion Blades”, “Dollar Shave Club”). The Panel therefore finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s SCHICK, SCHICK HYDRO and SCHICK HYDRO SILK marks.

(c) The Respondent’s disclaimer reads “The Sponsored Listings displayed above are served automatically by a third party. Neither the service provider nor the domain owner maintain any relationship with the advertisers. In case of trademark issues please contact the domain owner directly (contact information can be found in whois)”. The Panel finds that the Respondent’s disclaimer displayed at the footer of the website displayed at the disputed domain name does not prevent a finding of bad faith for the following reasons:

(i) The disclaimer is printed in small, light colored font and appears below a large box displaying links to competitors of the Complainant. Therefore by the time a visitor sees the disclaimer, the Respondent’s objective of attracting visitors to the disputed domain name for commercial advantage, through use of the trade mark in the disputed domain name, will have been achieved as the visitor may have already clicked one or more of the advertising links.

(ii) The Panel relies on and adopts the following commentary from Dymatize Enterprises, LLC v. Carolina Rodrigues, WIPO Case No. D2015-1776:

“paragraph 3.8 of the [WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition] (omitting citations) notes that [p]anels have found that a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content — for example, in the case of advertising links appearing on an “automatically” generated basis. To the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third party trademarks. Some panels have found that the inclusion of such advertising links may not necessarily be a basis for finding the respondent [to be in] bad faith where shown to be genuinely automated, and there is no evidence that the respondent influenced the advertising content, and the respondent credibly denies knowledge of the complainant’s trademark and there is no evidence of the respondent previously being put on notice of such mark, and other indicia of cybersquatting are not present.”

(iii) In the present case, the Complainant has provided evidence of contacting the Respondent with regard to the content of the disputed domain name both through its proxy service (in both August and October 2015) but then directly on October 30, 2015). The Respondent was therefore put on notice as to the content of the website available at the disputed domain name on three occasions. It took no action in response to these letters of complaint.

(d) The Panel notes that the Complainant’s screenshots of the website available at the disputed domain name show that a banner reading “DOMAIN SALE CLICK HERE TO BUY NOW” was displayed across the corner of the website. The WhoIs information for the disputed domain name lists it as being for sale for USD 799. On its own, this would not be sufficient to establish bad faith registration and use. This is because the Panel is not prepared to find that this exceeds the Respondent’s out-of-pocket costs for registering the disputed domain name, in the absence of any evidence as to the cost involved in registering the disputed domain name. However, the Panel takes the fact that the disputed domain name is listed for sale into account in combination with the other factors discussed above, as suggesting bad faith registration and use.

(e) Finally, the Panel is entitled to draw inferences adverse to the Respondent as a result of the Respondent’s failure to file any response to the Complaint.

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 name <schickhydrosilksurvey.com> be transferred to the Complainant.

Andrew Brown Q.C.
Sole Panelist
Date: January 26, 2016