WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Procter & Gamble Business Services Canada Company, Braun GmbH, The Procter & Gamble Company v. Zheng Ru Ping, Zhuo Jian

Case No. D2018-0603

1. The Parties

The Complainants are Procter & Gamble Business Services Canada Company of Halifax, Nova Scotia, Canada (the “First Complainant”); Braun GmbH of Tanaus, Germany (the “Second Complainant”); and The Procter & Gamble Company of Cincinnati, Ohio, United States of America (the “Third Complainant”), all represented by Studio Barbero, Italy.

The Respondents are Zheng Ru Ping of Ji’an, Jiangxi, China (the “First Respondent”), and Zhuo Jian of Meizhou, Guangdong, China (the “Second Respondent”).

2. The Domain Names and Registrar

The disputed domain names <braunbuys.com>, <braunows.com>, <braunsale.com>, <braunsl.com>, <oralbnow.com> and <oralboas.com> are all registered with EIMS (Shenzhen) Culture & Technology Co., Ltd (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 30, 2018, the Registrar transmitted by email to the Center its verification response confirming that the First Respondent is listed as the registrant of the disputed domain name <braunsale.com> and the Second Respondent is listed as the registrant of the other five disputed domain names, and providing the contact details. On April 4, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. On the same day, the Complainants confirmed their requested that English be the language of the proceeding. The Respondents did not comment on the language of the proceeding.

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 Respondents in English and Chinese of the Complaint, and the proceedings commenced on April 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2018. The Respondents did not submit any response. Accordingly, the Center notified the Respondent’s default on May 2, 2018.

The Center appointed Matthew Kennedy as the sole panelist in this matter on May 4, 2018. 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 First Complainant and the Second Complainant are subsidiaries of the Third Complainant, which is a manufacturer of consumer goods including health care, hair care, cosmetics, laundry and fabric care products. The First Complainant, which focuses on toothbrushes and other oral care products, owns multiple trademark registrations for ORAL-B including Chinese trademark registrations numbers 359377 and 384200, both registered on August 30, 1989, specifying goods in classes 5 and 21, respectively. The Second Complainant, which focuses on electric shavers and other products, owns multiple trademark registrations for BRAUN including International trademark registrations numbers 650428 and 652027, both registered on November 14, 1995, designating multiple jurisdictions, including China, and specifying goods and services in classes 1, 3, 7, 8, 9, 10, 11 and classes 11, 14, 16, 21, 26, 35 and 37, respectively. Those trademark registrations remain current.

The Respondents are an individual or individuals resident in China. According to evidence provided by the Complainant, the First Respondent Zheng Ru Ping was named as registrant of all six disputed domain names until October 9, 2017, when the name of the registrant was changed to “Zhuo Jian” except as regards the disputed domain name <braunsale.com>, for which the registrant name is unchanged.

The disputed domain names <oralbnow.com> and <oralboas.com> were registered on August 7, 2017. The disputed domain name <braunsale.com> was registered on August 9, 2017. The disputed domain names <braunsl.com> and <braunbuys.com> were registered on August 10, 2017. The disputed domain name <braunows.com> was received on August 11, 2017. They all formerly redirected to websites that offered for sale what were alleged to be the Complainants’ Oral-B or Braun products. After the Complainants sent cease-and-desist letters to the First Respondent Zheng Ru Ping and submitted complaints to the Internet Corporation for Assigned Names and Numbers (“ICANN”) regarding inaccurate WhoIs information, the disputed domain names ceased to resolve to any active website.

5. Parties’ Contentions

A. Complainants

The disputed domain names are confusingly similar to the Complainants’ ORAL-B or BRAUN trademarks. The disputed domain names incorporate the whole of those trademarks, followed by the addition of non-distinctive elements, such as letters having no meaning or generic terms, which do not affect the confusing similarity. The Top-Level Domain (“TLD”) suffix “.com” is merely instrumental to the use of the Internet so the disputed domain names remain confusingly similar.

The Respondents have no rights or legitimate interests in respect of the disputed domain names. The Respondents are not licensees, authorized agents of the Complainants or in any other way authorized to use the Complainants’ trademarks. The Respondents are not authorized resellers of the Complainants and have not been authorized to register and use the disputed domain names. The disputed domain names redirected to commercial websites where, in absence of any disclaimer of non-affiliation and failing to provide any information about the administrators, the Complainants’ figurative trademarks and official advertising images were published, unauthorized products under the trademarks ORAL-B and BRAUN were promoted and offered for sale. The Complainants are not in possession of, nor aware of the existence of any evidence demonstrating that the Respondents might be commonly known by a name corresponding to the disputed domain names.

The disputed domain names were registered and are being used in bad faith. In light of the fact that the trademarks ORAL-B and BRAUN are well-known worldwide and have been used for over 50 years, the Respondents were undoubtedly aware of the existence of the Complainants’ trademark registrations when they registered the disputed domain names. Actual knowledge of the Complainants’ trademarks is clearly demonstrated by the content of the Respondents’ websites. The disputed domain names were used in connection with websites publishing the Complainants’ trademarks and offering for sale unauthorized products bearing the Complainants’ trademarks. Such a conduct demonstrates that the only purpose of the Respondents was to use the disputed domain names to intentionally attempt to attract, for commercial gain, Internet users to such websites, creating a likelihood of confusion with the endorsement of the Complainants’ websites and to take unfair advantage of the well-known character of the trademarks for the Respondents’ personal profit. The current passive holding of the disputed domain names does not preclude a finding of bad faith use.

B. Respondents

The Respondents did not reply to the Complainants’ contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreements for the disputed domain names are in Chinese.

The Complainants request that the language of the proceeding be English. Its main arguments are that translation of the Complaint into Chinese would unduly burden the Complainants and unduly delay the proceeding; that the Complainants wrote to the Respondents in English prior to the Complaint; the disputed domain names are registered in Latin characters and contain English words; the websites to which the disputed domain names resolved were entirely in English and accepted payments in euros, pounds sterling and US dollars but not Chinese yuan; and a previous proceeding involving one Respondent was conducted in English. The Respondents did not comment on the language of the proceeding.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that in this proceeding the Complaint was filed in English. The websites to which the disputed domain names formerly resolved were in English, from which it is reasonable to infer that the Respondents understand that language. Moreover, the Respondents did not indicate any wish to reply to the Complaint or otherwise to participate in this proceeding. In these circumstances, the Panel considers that requiring the Complainants to translate the Complaint into Chinese would create an undue burden and delay.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.

6.2 Multiple Complainants

The Complaint was filed by three Complainants. All Complainants form part of the same corporate group. The First Complainant owns the ORAL-B trademarks while the Second Complainant owns the BRAUN trademarks. The registration and use of the disputed domain names has affected the Complainants’ individual rights in a similar fashion. The Panel finds that the Complainants have a common grievance against the domain name registrants and that it is efficient to permit the consolidation of their complaints. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1. Therefore, the Complainants are referred to below collectively as “the Complainant” except as otherwise indicated.

6.3 Multiple Respondents

The Complaint initiates disputes in relation to two nominally different domain name registrants. However, pursuant to paragraphs 3(c) and 10(e) of the Rules, the Complainants request consolidation of the disputes against the named disputed domain name registrants. The Respondents did not comment on the Complainant’s request.

Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. The Complainant alleges that the disputed domain name registrants are under the actual control of a single individual or entity or, at least, reflective of a group of individuals acting in concert. The Panel does not consider that paragraph 3(c) of the Rules was intended to enable a person in such circumstances to put a complainant to the unnecessary time, expense and effort of initiating multiple proceedings against technically different domain name registrants, particularly when each registration raises the same issues. In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See WIPO Overview 3.0, section 4.11.2.

As regards common control, the Complainant submits that (i) all the disputed domain names are registered with the same Registrar and associated with the same set of domain name servers; (ii) all the disputed domain names were registered on similar dates; (iii) the contact details of the two domain name registrants are very similar; (iv) the two postal addresses indicated in the Registrar’s WhoIs database do not exist or are incomplete and the updated contact information is also clearly false; (v) the disputed domain names are similar; (vi) all the disputed domain names formerly resolved to very similar online stores while those that incorporate the BRAUN trademark resolved to an identical website.

The Panel takes note of the evidence supporting the above submission, in particular, that all the disputed domain names previously registered in the name of “Zheng Ru Ping” and that, after the Complainant sent cease-and-desist letters, the registrant names of all but one of the disputed domain names were changed to “Zhuo Jian” with manifestly false contact information. The disputed domain names that incorporated the element “braun”, including the one for which the registrant’s name is unchanged, formerly resolved to the same website and then ceased to resolve to any active website. In these circumstances, the Panel is satisfied that the disputed domain name registrants are under common control or indeed that the named registrants are the same person.

As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party.

Accordingly, the Panel decides to consolidate the disputes regarding the disputed domain name registrants in a single proceeding. Therefore, the Respondents are referred to below collectively as “the Respondent” except as otherwise indicated.

6.4 Substantive Issues

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:

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

(ii) the Respondent has 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.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the ORAL-B and BRAUN trademarks.

Each disputed domain name incorporates the Complainant’s ORAL-B or BRAUN trademark as its initial element. The disputed domain names <oralbnow.com> and <oralboas.com> omit the hyphen in “ORAL-B” but that difference is so minor that it does not dispel confusing similarity with that trademark. Each disputed domain name includes an additional element, variously “buys”, “ows”, “sale”, “sl”, “now” or “oas”. These additional elements are mere dictionary words or two- or three-letter combinations with no apparent meaning. The Complainant’s trademarks remain clearly recognizable in each disputed domain name.

All disputed domain names also contain the generic TLD suffix “.com”. However, a TLD suffix may generally be disregarded in the comparison of a domain name with a trademark for the purposes of the Policy. See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080.

Therefore, the Panel finds that each disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Each disputed domain name is confusingly similar to one or other of the Complainant’s trademarks and was being used with a website that offered for sale what were presented as the Complainant’s products of the corresponding brand. The Complainant states that the Respondent is not a licensee, authorized agent or authorized reseller of the Complainant, but the websites failed to disclose the Respondent’s lack of any relationship to the Complainant. Regardless of whether the products offered were counterfeit, these facts show that the Respondent’s use of the disputed domain names was not in connection with a bona fide offering of goods or services. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. As at the date of this decision, the disputed domain names no longer resolve to any active website. Accordingly, the Panel does not find that the Respondent’s was using the disputed domain names in connection with a bona fide offering of goods or services within the first circumstance of paragraph 4(c) of the Policy.

The registrant of the disputed domain names is listed in the Registrar’s WhoIs database as “Zheng Ru Ping” or “Zhuo Jian”, neither of which resembles any of the disputed domain names. There is no evidence that the Respondent has been commonly known by the disputed domain names within the second circumstance of paragraph 4(c) of the Policy.

The disputed domain names formerly resolved to websites that offered goods for sale but they no longer resolve to any active website. Neither of these uses is a legitimate noncommercial or fair use that would generate rights or legitimate interests within the third circumstance of paragraph 4(c) of the Policy.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent did not rebut that prima facie case because no response to the Complaint was filed.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

“(iv) 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.”

As regards registration, the disputed domain names were registered many years after the Complainant obtained its trademark registrations, including in China where the Respondent is located. Each disputed domain name incorporates the Complainant’s ORAL-B or BRAUN trademark (but for the omission of the hyphen in ORAL-B) as its initial and only distinctive element. The websites to which the disputed domain names formerly resolved offered for sale what were alleged to be the Complainant’s products of the corresponding brand. These facts indicate to the Panel that the Respondent was aware of the Complainant and its trademarks at the time that it registered the disputed domain names and deliberately registered them in the disputed domain names.

As regards use, the disputed domain names do not currently resolve to any active website. However, passive use does not preclude a finding of use in bad faith. See Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the present dispute, each disputed domain name incorporates one or other of the Complainant’s trademarks. The disputed domain names formerly resolved to websites that offered for sale what were alleged to be the Complainant’s products of the corresponding brand. Although the Complainant has no relationship with the Respondent, this was not disclosed on the websites. Rather, the Respondent was using the disputed domain names intentionally to attract, for commercial gain, Internet users to the websites by creating a likelihood of confusion with one or other of the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of services on the websites. These are indicia of the Respondent’s bad faith. Accordingly, the Panel finds that the disputed domain names are being used in bad faith.

Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

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 <braunsl.com>, <braunsale.com>, <braunbuys.com> and <braunows.com> be transferred to the Second Complainant and that the disputed domain names <oralbnow.com> and <oralboas.com> be transferred to the First Complainant.

Matthew Kennedy
Sole Panelist
Date: May 7, 2018