WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Braun GmbH v. Thanh Vi

Case No. D2017-1806

1. The Parties

Complainant is Braun GmbH of Kronberg, Germany, represented by BMVN International LLC, Viet Nam.

Respondent is Thanh Vi of Hanoi, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <braunvietnam.net> (the “Disputed Domain Name”) 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 September 19, 2017. On September 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 21, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

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 Respondent of the Complaint, and the proceedings commenced on September 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 19, 2017.

The Center appointed Jordan S. Weinstein as the sole panelist in this matter on November 1, 2017. 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

Complainant owns several International Registrations for the BRAUN trademark, both word marks and stylized, including International Registration numbers 652,027, issued November 14, 1995; 650,428, issued November 14, 1995; 650,227, issued October 28, 1995; 563,469, issued June 9, 1990, 324,707, issued November 1, 1966, and 178,492, issued July 21, 1954. Each of these registrations includes an extension of protection to Viet Nam. These registrations cover goods in International Class 7 (among others), including but not limited to slicing, cutting, and grinding machines, meat mincers, mixers, kneaders, grating machines, centrifuges, juicers, coffee grinders, and cereal grinders.

The Disputed Domain Name was registered on March 28, 2016 and redirects to a website selling products under the Complainant’s trademark.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it is a reputed manufacturer of consumer products, especially small electric appliances, based in Kronberg, Germany. It was founded in 1921 by the German engineer Max Braun in Frankfurt am Main as a small manufacturing workshop. Today, 90 years after its founding, Complainant asserts that it is the world leader in the foil shaver, epilator and hand blender market segments. Complainant asserts that as of October 25, 2005 when it was acquired by the Proctor & Gamble company, Complainant became one of 23 global brands in the consumer goods group that achieve annual sales of more than USD 1 billion.

Complainant asserts that it has received over 100 internationally recognized design prizes for its products and holds more than 8,000 active patents.

Complainant asserts that it owns a family of trademarks incorporating the term “braun” in countries throughout the world.

Complainant asserts that as a result of the substantial and extensive use of the name Braun, it enjoys significant reputation and goodwill in the BRAUN name and marks. Complainant asserts that its BRAUN trademarks have become deeply associated with various kitchen apparatus found in many homes in Viet Nam and throughout the world.

Based upon its wide and consistent use of the BRAUN trademarks, Complainant asserts that the consuming public throughout the world strongly associates the BRAUN trademarks with Complainant. Complainant owns an extensive portfolio of domain name registrations, including <braun.com>, registered on June 24, 1997.

Complainant asserts that its products have been widely offered and supplied in Viet Nam, and remain well-known to local consumers there.

Complainant contends that the Disputed Domain Name is confusingly similar to its famous BRAUN trademarks for the purpose of paragraph 3(b)(ix)(1) of the Rules because the Disputed Domain Name incorporates the BRAUN trademarks in their entirety, and inclusion of the term “vietnam” does not decrease confusion for consumers. Specifically, Respondent’s business is located in Viet Nam, and the website linked to the Disputed Domain Name is entirely in Vietnamese and intended for Vietnamese customers.

Complainant asserts that Respondent has no rights or legitimate interest in respect of the Disputed Domain Name because Respondent has no association or affiliation with Complainant, Respondent has received no franchise, license or consent from Complainant to use the BRAUN trademarks in the Disputed Domain Name or in any other matter manner. Complainant also asserts that Respondent fails to use the Disputed Domain Name for a bona fide offering of goods under paragraph 4(c)(i) of the Policy; that Respondent has never been commonly known by the Disputed Domain Name for purposes of paragraph 4(c)(ii) of the Policy, and that Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert consumers under paragraph 4(c)(iii) of the Policy.

Complainant asserts that Respondent’s use of the Disputed Domain Name is not a “bona fide offering of goods” for the purpose of paragraph 4(c)(i) of the Policy, because Respondent is not directly offering products from Complainant on the website under the Disputed Domain Name; Respondent is using the website linked to the Disputed Domain Name to host links that sell goods competing with Complainant’s goods; and that the website under the Disputed Domain Name does not accurately disclose Respondent’s (lack of a) relationship with the trademark owner. Furthermore, Complainant asserts that Respondent uses on its website many of Complainant’s copyrighted images featuring Complainant’s products, creating a likelihood of confusion for Internet users who would believe that Respondent’s website linked to the Disputed Domain Name is operated by Complainant.

Complainant asserts that the Disputed Domain Name was registered and is being used in bad faith because by its use, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion about the affiliation or association between Respondent and Complainant.

Specifically, Complainant asserts that the BRAUN trademarks were registered and became famous long before the Disputed Domain Name was registered on March 28, 2016. Therefore, Complainant asserts that it is clear that by using the Disputed Domain Name, Respondent intended to exploit the well-known status of the BRAUN trademarks for commercial gain by creating confusion about the affiliation or association between Respondent and Complainant. By virtue of such confusion, Respondent diverted users to another website also owned by Respondent for the purchase of products whose copyrighted images, owned by Complainant, appeared on Respondent’s website linked to the Disputed Domain Name. As a result, Complainant asserts that such Internet users would likely believe they were using Complainant’s website, or a website sponsored by Complainant, to purchase Complainant’s products when it is not the case. Complainant asserts that such confusion brings “commercial gain” to Respondent, as it likely attracted a substantial number of Internet users to Respondent’s website who may have purchased products from Respondent in the mistaken belief that Respondent was Complainant, or was a part of Complainant’s distribution system.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Applicable Policy Provisions

Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:

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

(ii) [respondent has] registered the disputed 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 [Respondent has] engaged in a pattern of such conduct; or

(iii) [respondent has] registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other online location, by creating a likelihood of confusion with complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location.

These circumstances are non-exhaustive, and a UDRP panel may consider other circumstances as constituting registration and use of a domain name in bad faith.

According to paragraph 4(c) of the Policy, a respondent may demonstrate rights in or legitimate interests to a domain name by any of the following, without limitation:

“(i) Before any notice to you of the dispute, your 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) you, as an individual, business, or other organization have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

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

Where a respondent is in default, a UDRP panel may draw such inferences as it considers appropriate. Rules, paragraph 14(b).

B. Identical or Confusingly Similar

The Panel finds that the Disputed Domain Name <braunvietnam.net> is confusingly similar to Complainant’s registered BRAUN trademarks. The Panel agrees with Complainant that adding the geographically descriptive term “vietnam” to Complainant’s trademarks will not avoid a finding of confusingly similarity between the Disputed Domain Name and Complainant’s trademarks. See Rockwool International A/S v. Taher Investment, Fathi Taher, WIPO Case No. D2008-0782 (adding geographically descriptive term “vietnam” to the disputed domain name is insufficient to avoid finding of confusing similarity).

The Panel finds that Complainant has provided sufficient evidence to establish paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

Complainant has made a prima facie case, namely by showing that Respondent has no association or affiliation with Complainant, Respondent has received no franchise, license or consent from Complainant to use the BRAUN trademarks in the Disputed Domain Name or any other matter manner; that Respondent has never been commonly known by the Disputed Domain Name for purposes of paragraph 4(c)(ii) of the Policy, and that Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert consumers under paragraph 4(c)(iii) of the Policy.

1. Bona fide offering of goods or services.

Complainant admits that Respondent is offering for sale Braun products on its website, but asserts that such sales do not constitute a “bona fide offering of goods or services” within the meaning of the Policy because Respondent does not directly offer Complainant’s products on the website under the Disputed Domain Name; but rather, redirects Internet users to another website “www.trihung.com” on which the transactions are purportedly performed. Further, Complainant asserts that Respondent uses the website to host links that sell goods competing with Complainant’s goods; and the website under the Disputed Domain Name does not accurately disclose Respondent’s relationship with the trademark owner. Furthermore, Complainant asserts that Respondent uses on its website many of Complainant’s copyrighted images featuring Complainant’s products, creating a likelihood of confusion to Internet users who would believe that Respondent’s website linked to the Disputed Domain Name is operated by Complainant.

For a respondent’s sale of complainant’s products to constitute a “bona fide offering of goods or services” within the meaning of the Policy, the following conditions must be satisfied:

(i) the respondent must actually be offering the goods or services at issue;

(ii) 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);

(iii) the site itself must accurately disclose the respondent’s relationship with the trademark owner; and

(iv) 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.

Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

Previous Panels have held that application of the Oki Data criteria is appropriate even in cases where the respondent is not an authorized dealer, so long as the respondent operates a business genuinely revolving around the trademark owner’s goods or services. See The Estate of Paul Flato v. Newcal Galleries Ltd., WIPO Case No. D2014-1945; National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racing Connection, Inc., WIPO Case No. D2007-1524.

Complainant does not dispute that Respondent operates a business genuinely revolving around Complainant’s goods or services. But Respondent falls short on the Oki Data factors. Most important, Complainant asserts (and Respondent has failed to rebut) that Respondent sells on its website goods competitive to Complainant’s trademarked goods, creating the possibility that Internet users may be baited and switched from Complainant’s trademarked goods to competitive goods. Furthermore, Respondent’s website fails to disclose that Respondent has no relationship with Complainant. For these reasons, Respondent’s use of the Disputed Domain Name does not constitute a “bona fide offering of goods or services” within the meaning of the Policy.

Once Complainant makes its prima facie case of no rights or legitimate interests, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Section 2.1. Respondent failed to come forward with allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name. As Respondent failed to file a Response, it may be presumed that Respondent has no rights or legitimate interests in the Disputed Domain Name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221. As a result, Complainant has established paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

The Panel finds that Complainant has provided sufficient evidence to satisfy paragraph 4(b)(iv) of the Policy, namely that by using the Disputed Domain Name, Respondent intentionally intended to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website.

Respondent’s website linked to the Disputed Domain Name offered the sale of Complainant’s trademarked products, as well as those of Complainant’s competitors. Respondent’s website used copyrighted images of Complainant’s trademarked products, increasing the likelihood that Internet users would be confused into believing Respondent’s website emanated from or was sponsored by Complainant. Respondent failed to clarify its relationship with Complainant on its website. Because Respondent has not proven it has made a “bona fide offering of goods or services” as discussed above, these facts evidence the registration and use of the Disputed Domain Name in bad faith as outlined in paragraph 4(b)(iv) 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 <braunvietnam.net> be transferred to Complainant.

Jordan S. Weinstein
Sole Panelist
Date: November 16, 2017