WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Procter & Gamble Company v. Whoisguard, Inc. / Enzo Gucci, Xtremcare, Tony Mancini, USDIET, USDIET Ltd

Case No. D2016-1881

1. The Parties

The Complainant is The Procter & Gamble Company of Cincinnati, Ohio, United States of America (“United States”), represented by Cabinet BCTG Avocats, France.

The Respondents are Whoisguard, Inc. of Panama / Enzo Gucci, Xtremcare, Tony Mancini and USDIET, of Los Angeles, California, United States and USDIET Ltd. of Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <achetercrest.com> is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2016. On September 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 16, 2016, 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 September 19, 2016 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 September 23, 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 September 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2016. The Respondents did not submit any response to the Complainant’s contentions. The Respondent Tony Mancini submitted an email to the Center on September 29, 2016.

The Center appointed William R. Towns as the sole panelist in this matter on November 2, 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 a large United States based company engaged in the manufacture and sale of various consumer products, including health care and hygiene products. The Complainant is the owner of an international trademark registration for CREST based on a French registration issued on December 6, 1973, and designated under the Madrid Protocol in another 20 countries. The Complainant also holds a European Union Trademark (EUTM) registration for CREST, filed on May 6, 1996, with a registration date of February 28, 2000. CREST is one of the Complainant’s leading toothpaste brands. The CREST mark also is used by the Complainant in conjunction with the Complainant’s WHITESTRIPS and 3D WHITE products. The Complainant established PROCTER & GAMBLE FRANCE SAS in 1994.

The disputed domain name <achetercrest.com> was registered on June 1, 2014, according to the Registrar’s WhoIs database. “Acheter” is a French word that means “to buy” in English. Prior to the filing of the Complaint, the disputed domain name resolved to a French language website advertising the Complainant’s CREST, 3D WHITE, AND WHITESTRIPS products. The website also featured links redirecting Internet visitors to the websites “www.parapharmaciefrance.com”, “www.drugstorefrance.com” and “www.xtremdiet.com”. These websites currently offer a variety of health, nutrition and fitness products. The domain names associated with these websites, according to relevant WhoIs records, are registered to the Respondent USDIET and make reference to the Respondent Tony Mancini.

Upon becoming aware of the disputed domain name, the Complainant’s through its legal counsel on December 14, 2015, sent a cease and desist letter to the Respondents. The Respondents at first represented that their use of the disputed domain name would be discontinued, and apparently did so, but nonetheless refused to transfer the disputed domain name to the Complainant. The Respondents subsequently resumed use of the disputed domain name at some time in 2016 to redirect Internet visitors to the “www.drugstorefrance.com” website. The disputed domain name currently does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s well-known CREST mark. The Complainant observes that the disputed domain name incorporates the Complainant’s CREST mark in its entirety, which the Complainant maintains is sufficient to establish confusing similarity. The Complainant notes that the French word “acheter” means “to buy” in English, and that the disputed domain name can be translated as “buy CREST”. As such, the Complainant asserts that the addition of French word “acheter” does not distinguish the disputed domain name from the Complainant’s mark. According to the Complainant, the Respondents intentionally are using the disputed domain name to target French speakers, who will immediately understand the meaning of the phrase.

The Complainant maintains that the Respondents do not have rights or legitimate interests in the disputed domain name. The Complainant observes that its rights in the CREST mark preceded the Respondents’ registration of the disputed domain name by a number of years, and further represents that the Respondents have not been licensed or otherwise authorized to use the Complainant’s mark. The Complainant submits that the Respondents were well aware of the Complainant’s CREST mark when registering the disputed domain name. According to the Complainant, French speakers are more likely to recognize CREST as the Complainant’s mark rather than the English language dictionary word “crest,” and since “acheter” means “to buy” they will assume that the disputed domain name refers to the Complainant’s mark.

The Complainant asserts that the Respondents have not been commonly known by the disputed domain name. The Complainant submits that because its CREST mark is widely known, it is inconceivable that any actual or contemplated bona fide or legitimate use of the disputed domain name could be claimed by the Respondents. The Complainant reiterates that the Respondents are using the disputed domain name to redirect Internet users to the Respondents’ other websites, and submits that the Respondents have claimed to be buying the Complainant’s products on the United States website “www.amazon.com” and reselling them in Europe at twice the price. The Complainant submits this constitutes illicit parallel trade from the United States to Europe and infringing acts of importation. According to the Complainant, the Respondents’ importation into Europe of products bearing the Complainant’s marks, and their sale without the Complainant’s consent or authorization, constitutes trademark infringement, as well as the sale of counterfeit goods.

The Complainant argues that the Respondents’ websites may contain advertising on teeth whitening treatment that is currently forbidden in the European Union (“EU”) under EU regulations, and that at least one UDRP panel decision has held that the use of a domain name in connection with the sale of teeth whitening treatments forbidden under EU regulations cannot constitute a bona fide offering of goods or services. The Complainant cites The Proctor & Gamble Company v. T. Aboulghit, WIPO Case No. DNL2016-0001.

The Complainant further asserts that the Respondents failure to accurately disclose the Respondents’ relationship with the Complainant and to include a disclaimer on the “www.achetercrest.com” website, in conjunction with the Respondents’ adoption of the Complainant’s “advertising, visuals, and packaging” demonstrates the Respondents’ intent to mislead consumers into believing that the Respondents’ website is operated by, affiliated with, sponsored or endorsed by the Complainant. According to the Complainant, such likelihood of confusion is further compounded by the Respondents’ use of the disputed domain name to redirect Internet users to the “www.parapharmaciefrance.com”, “www.drugstorefrance.com” and “www.xtremdiet.com” websites. The Complainant further submits that the Respondents are not making any legitimate noncommercial or fair use of the disputed domain name.

The Complainant maintains that the Respondents have registered and are using the disputed domain name in bad faith. The Complainant submits that its CREST mark is a well-known, globally recognized trademark, and that consequently the Respondents must have been aware of the Complainant’s mark when registering the disputed domain name. The Complainant cites content on the “www.achetercrest.com” website advertising the Complainant’s CREST products and the use of the disputed domain name to redirect Internet users to three other websites selling CREST products as proof of the Respondents’ awareness of the Complainant’s mark. The Complainant submits that the Respondents’ very adoption of the disputed domain name is irrefutable evidence of the Respondents’ awareness of the Complainant’s mark.

The Complainant argues that where a domain name is so obviously connected with a well-known mark its very use by someone with no connection to the trademark suggests opportunistic bad faith. In view of all of the foregoing, the Complainant asserts that the Respondents have used the disputed domain name in an attempt intentionally to attract Internet users to the Respondents’ websites by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement. The Complainant further cites as evidence of the Respondents’ bad faith the use of a privacy service and lack of transparency regarding the holder of the disputed domain name. Additionally, the Complainant presents evidence that the Respondents Tony Mancini and USDIET collectively have registered over 475 domain names, including domain names reflecting well-known marks of others, and that there have been eight UDRP decisions to date involving eleven domain names in which the Respondents Tony Mancini and USDIET were found to be cybersquatters.

B. Respondents

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

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) the disputed domain name is 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 with respect to the disputed domain name; and

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

Cancellation or transfer of the disputed domain name is the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s CREST mark, in which the Complainant has established rights through registration and use. In considering this issue, the first element of the Policy serves essentially as a standing requirement¹. The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. In this case, the disputed domain name incorporates the Complainant’s mark in its entirety and is clearly recognizable. The addition in the disputed domain name of the descriptive word “acheter”, French for “to buy,” does not serve to dispel the confusing similarity of the disputed domain name to the Complainant’s mark. See, e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc., WIPO Case No. D2007-1524.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondents have not been authorized to use the Complainant’s CREST mark. The disputed domain name, however, incorporates the Complainant’s mark in its entirety, and resolves or redirects Internet users to websites on which there is some indication that products other than those of the Complainant’s branded products are sold.

Pursuant to paragraph 4(c) of the Policy, the respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:

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

(ii) the respondent has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or

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

The Respondents have not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondents’ registration and use of the disputed domain names within any of the “safe harbors” of paragraph 4(c) of the Policy.

The record reflects that the Respondents are unauthorized resellers of the Complainant’s trademarked products.² The most often cited UDRP decision in evaluating domain names of resellers and distributors is Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (hereinafter “Oki Data”). In Oki Data, the respondent was a reseller of the complainant’s OKIDATA-branded products, and registered the domain name <okidataparts.com>. The panel in Oki Data concluded that the use of a manufacturer’s trademark as a domain name by a reseller could be deemed a “bona fide offering of goods or services” within the meaning of the Policy only if the following conditions are satisfied:

- the respondent must actually be offering the goods or services at issue;

- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);

- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and

- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.

The Oki Data approach acknowledges certain scenarios relating to the potential legitimacy of using another’s trademark in a domain name, often referred to as “nominative fair use”. An overarching principle of the Oki Data approach is that a use of a domain name cannot be “fair” if it suggests affiliation with the trademark owner; nor can a use be “fair” if it is pretextual. See 201 Folsom Option JV, L.P. and 201 Folsom Acquisition, L.P. v. John Kirkpatrick, WIPO Case No. D2014-1359 (Oki Data approach considers and applies nominative fair use principles with reference to the limited scope of the Policy, and specifically with respect to the respondent’s use of the complainant’s mark in a domain name); Project Management Institute v. CMN.com, WIPO Case No. D2013-2035 (“[It] is critical to the establishment of rights or legitimate interests under Oki Data, and to a claim of nominative fair use,that the [r]espondent take steps to avoid using of the [c]omplainant’s mark in a manner likely to cause consumer confusion as to source, sponsorship, affiliation or endorsement”).

Generally speaking, UDRP panels have found that domain names identical to a third-party trademark per se carry a high risk of such affiliation. Where the domain name consists of a trademark plus an additional term (at the second or top-level), UDRP jurisprudence broadly holds that this cannot constitute nominative fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner.³ It is difficult to state with precision what qualitative aspects of such additional terms would automatically suggest such impersonation, sponsorship, or endorsement. Certain geographical terms (e.g., trademark-nyc.com, or trademark.nyc), or terms with an “inherent Internet connotation” (e.g., e-trademark.com, buy-trademark.com, or trademark-online.com) would seem, by their nature, to fall within this category. At the other extreme, certain critical terms (e.g., trademarksucks.com) would in most contexts at least prima facie communicate that there is no affiliation. In the gray zone, certain terms within the trademark owner’s field of commerce, or indicating services related to the brand while referring to the relevant mark (e.g., <okidataparts.com>, or <trademark.feedback>), may not necessarily trigger an inference of affiliation by themselves, but would normally require a further examination by the panel of the broader facts and circumstances of the case, including the associated website content, to assess the propriety of the use made of the domain name (e.g., under the Oki Data approach). See, e.g., 201 Folsom Option JV, L.P. and 201 Folsom Acquisition, L.P. v. John Kirkpatrick, supra.

The disputed domain name in this case, <achetercrest.com>, is in the nature of the “buy-trademark.com” term, which potentially presents an “inherent Internet (or ‘ecommerce’) connotation”. Further, the record in the instant case does not reflect the Respondents’ observance of the Oki Data criteria. There is no indication in the record that the Respondents have accurately disclosed their relationship with the Complainant on the websites to which the disputed domain name either resolves or redirects Internet users. Further, it does not appear from the record that the Respondents have used these sites to sell only the Complainant’s trademarked goods.

In view of the foregoing, the Panel considers that the disputed domain name selected by the Respondents misrepresents the nature of the “relationship” between the Complainant and the Respondents. The disputed domain name could easily suggest to Internet users that the websites to which they arrive are affiliated with, sponsored, or endorsed by the Complainant. Such an inference is reinforced by the Respondents’ failure to satisfy the Oki Data requirements, and in particular the failure of the Respondents to accurately disclose their relationship with the Complainant. Because the dispute domain name invokes a suggestion of affiliation with the trademark owner, such use is not fair, is not legitimate, and does not give rise to rights or legitimate interests.

Having regard to all of the relevant circumstances in this case, and absent any explanation from the Respondents, the Panel finds that the Respondents’ use of the disputed domain name does not constitute use in connection with a bona fide offering of goods or services within the contemplation of paragraph 4(c)(i) of the Policy. Nor logically are the Respondents making a legitimate noncommercial or fair use of the disputed domain names within the meaning of paragraph 4(c)(iii) of the Policy. The Respondents obviously have not been authorized to use the Complainant’s CREST mark, have not been commonly known by the disputed domain name, and have not otherwise demonstrated rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online 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 its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondents’ conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. It is evident that the Respondents were aware of the Complainant and the Complainant’s rights in the CREST mark when registering the disputed domain name. It is a reasonable inference in the circumstances of this case that the Respondents registered the disputed domain name based on the attractiveness of the Complainant’s mark, in order to drive traffic to the Respondents’ websites, without accurately disclosing the Respondents’ relationship with the Complainant or selling only the Complainant’s products. In the attendant circumstances of this case, the Panel considers it more likely than not that the Respondents’ primary motive in relation to the registration and use of the disputed domain names was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights, for commercial gain.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 name <achetercrest.com> be transferred to the Complainant.

William R. Towns
Sole Panelist
Date: November 24, 2016

¹ See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.

² The Complainant has raised an issue whether the Respondents’ sale of the some of the Complainant’s branded teeth whitening products in the European Union is proscribed by EU regulations. The determination of that issue clearly is beyond the scope of the Policy. In either case, the relationship of the Respondents to the Complainant is that of an unauthorized seller of the Complainant’s products. There is no evidence that the CREST branded products being sold by the Respondents are “counterfeit goods.” By all appearances the Respondents are selling genuine CREST products.

³ See Grundfos Holding A/S v. Ahmed Alshahri, WIPO Case No. D2015-1112; Johnson & Johnson v. Ebubekir Ozdogan, WIPO Case No. D2015-1031.