WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Procter & Gamble Company and Braun GmbH v. Domain Admin, FBS INC, Whoisprotection.biz / Erol Çakir
Case No. D2020-1959
1. The Parties
The Complainants are The Procter & Gamble Company (the “first Complainant”), United States of America (“United States”) and Braun GmbH (the “second Complainant”), Germany represented by Studio Barbero S.p.A., Italy.
The Respondent is Domain Admin, FBS INC, Whoisprotection.biz, Turkey / Erol Çakir, Turkey.
2. The Domain Name and Registrar
The disputed domain name <braun-tr.com> is registered with FBS Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2020. On July 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 28, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Registrar also indicated that the language of the Registration Agreement was Turkish. The Center sent an email communication in English and Turkish, to the Parties on July 29, 2020, inviting the Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of the proceeding, a Complaint translated into Turkish, or a request for English to be the language of the proceeding. The Complainant filed a request for English to be the language of the proceeding on July 30, 2020. The Respondent 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 Respondent of the Complaint in English and Turkish, and the proceedings commenced on August 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2020.
The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on September 10, 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.
4. Factual Background
The first Complainant 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 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 national Turkish trademark registration no. 82028 for the stylized BRAUN trademark, registered on January 1, 2000, covering goods in Nice classes 7, 8, 9, and 11;
- 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 June 23, 2020. The Respondent is a physical person domiciled in Turkey. The disputed domain name resolved to an active website in Turkish offering the Complainant’s products for sale – before the commencement of the proceedings. 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. At the time of the Complaint, the disputed domain name did not resolve to any active website and there was a privacy protection shield on the disputed domain name.
5. Parties’ Contentions
A. Complainant
The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s trademark BRAUN and that the addition of the geographical abbreviation “tr” (which refers to “Turkey”) reinforces the association between the disputed domain name and the Complainant’s trademark as Internet users will likely assume that the disputed domain name is used for the official BRAUN online shop in Turkey.
The Complainant considers that the Respondent has no rights or legitimate interests in respect of the disputed domain name, mainly because the Complainant has neither licensed nor otherwise authorized the Respondent to use its marks or to apply for or use any domain name incorporating the trademark BRAUN. The Complainant further asserts that the conditions of Oki Data Americas, Inc. v. ASD, Inc.,
WIPO Case No. D2001-0903 (“Oki Data”) for a bona fide offering of goods and services by an authorized or non-authorized third party are not satisfied.
Finally, in addressing the question of registration and use of the disputed domain name in bad faith, the Complainant observes that the Respondent is well aware of the Complainant’s trademark considering that the Respondent is using the Complainant’s marketing material, including the logo and that the Respondent’s website clearly suggests that the website belongs to the Complainant or is an official affiliated dealer endorsed by the Complainant. In this regard, the Respondent has used a privacy shield in order to hide its identity following the cease and desist letter sent to the Respondent.
The fact that the website does not provide any information on the true identity of the website provider clearly shows that the Respondent intentionally creates the impression that the products offered on the Respondent’s website are provided by the Complainant or at least an official dealer by misleading users on the source of the website and thereby attract, for commercial gain, Internet users to the website.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three elements, which the Complainant must prove, during the administrative proceedings, to merit a finding that the disputed domain name be transferred to the Complainant:
(a) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) the disputed domain name has been registered and is being used in bad faith.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
6.1. Language of the Proceeding
Pursuant to paragraph 11(a) of the Rules, 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. The registration agreement is in Turkish. The Complaint was filed in English.
On July 30, 2020, the Complainant submitted a reply to the Center’s request regarding the language of proceedings that the Complainant did not have specific information on the language of the registration agreement and that they send a cease and desist letter in English which was received by the Respondent and the Respondent did not request any clarification as to the language of the cease and desist letter, and that the underlying website contains some English words such “discount” or “copyright” and that the use of “tr” and “.com” target the English speaking public.
The Complainant has invoked numerous UDRP panel decisions where the panels have accepted English as the language of the proceedings despite the registration agreement having a differing language where it could be presumed from the circumstances of the case that the respondent has knowledge of the English language, while the complainant is not capable of providing the complaint in the language of the registration agreement (e.g. Turkish) without unreasonable effort and costs.
In addition to the Complainant’s submission regarding the language of the proceedings, it appears that the Respondent did not submit a Response nor did he formally object to English as the language of the proceeding.
More importantly, it has also to be taken into consideration the Respondent’s recent activation of a privacy protection service to conceal its identity pursuant to the cease and desist letter sent by the representative of the adverse party. In other words, it may be considered that the Respondent has good knowledge of the Complainant’s claims and motivations.
Taking into account all the above elements, as well as the Panel’s authority to determine the language of the proceedings differing from the language of the registration agreement in accordance with the paragraph 11(a) of the Rules, the Panel considers that the appropriate language of the proceeding shall be English.
6.2. Effect of the Default
Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
As there are no exceptional circumstances for the failure of the Respondent to submit a formal Response, the Panel infers that the Respondent does not deny the facts asserted and contentions made by the Complainant. Therefore, asserted facts that are not unreasonable will be taken as true and the Respondent will be subject to the inferences that flow naturally from the information provided by the Complainant. Reuters Limited v. Global Net 2000, Inc,
WIPO Case No. D2000-0441.
6.3. Substantive Issues
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A trademark registration provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
As indicated above, the Complainant holds several trademark registrations for the BRAUN trademark. The disputed domain name <braun-tr.com> integrates the Complainant’s BRAUN trademark in its entirety. The disputed domain name differs from the registered BRAUN trademark by the addition of a hyphen and letters “-tr” which could refer to the geographical term “Turkey”, which does not serve to distinguish or differentiate the disputed domain name from the Complainant’s trademark.
Several UDRP panels have ruled that the mere addition of a descriptive element does not prevent a finding of confusing similarity between a disputed domain name and a complainant’s registered trademark (see, e.g., Société des Produits Nestlé S.A. v. MrToys.com LLC,
WIPO Case No. D2012-1356; Allianz SE v. Roy Lee / Traffic-Domain.com,
WIPO Case No. D2012-1459; Swarovski Aktiengesellschaft v. mei xudong,
WIPO Case No. D2013-0150; and Swarovski Aktiengesellschaft v. www.swarovski-outlet.org,
WIPO Case No. D2013-0335). As regards the generic Top-Level Domain (“gTLD”) “.com”, it is typically disregarded under the confusing similarity test under the Policy.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The onus is on the Complainant to make out at least a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and it is then for the Respondent to rebut this case. Although the Respondent did not file a Response, a respondent’s default does not automatically result in a decision in favor of the complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 and the cases cited therein. However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
As there are no exceptional circumstances for the failure of the Respondent to submit a Response, the Panel infers that the Respondent does not deny the facts asserted and contentions made by the Complainant. Reuters Limited v. Global Net 2000, Inc,
WIPO Case No. D2000-0441.
A number of UDRP decisions have addressed the question of when a reseller’s use of a mark constitutes a bona fide offering of goods and services. The consensus view was articulated in Oki Data. See WIPO Overview 3.0 at section 2.8. In that case, the authorized reseller’s domain name <okidataparts.com> incorporated the complainant’s OKIDATA trademark in full. The panel in Oki Data concluded that for a respondent to demonstrate that a resale offering was bona fide, the following conditions must be met:
“- the respondent must actually be offering the goods or services at issue;
- the respondent must use the corresponding website 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, i.e., respondent may not falsely suggest that it is the trademark owner, or that the website is the official site, if that is not the case; and
- the respondent must not try to “corner the market” in all relevant domain names, or deprive the trademark owner of reflecting its own mark in a domain name.”
In this case, it appears from the website, that the Respondent has been operating its business of exclusively selling Complainant’s products under the disputed domain name.
That being said, the Respondent is using the stylized version and the logo of the BRAUN trademark and the website is identical to Complainant’s official Turkish website. Moreover, the Respondent is presenting himself as “Braun Turkey” without any explanation as to his relationship with the Complainant or the lack thereof.
All of these circumstances give the false impression that the Respondent is affiliated with the Complainant or is an authorized dealer of the Complainant.
For these reasons, the Panel concludes that the Respondent is not making use of the disputed domain name in connection with a bona fide offering of goods or services.
In the Panel’s view, the Complainant has made out its prima facie case under this element of the Policy and the Respondent has failed to rebut it. Accordingly, the Complaint succeeds in relation to the second element of the Policy.
C. Registered and Used in Bad Faith
Finally, the Complainant must show that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
Considering the Panel’s finding under the second element, the Panel finds that the registration and use of the disputed domain name falls under the circumstances described under paragraph 4(b)(iv) of the Policy.
The fact that the Respondent did not reply to the legal notices sent by the Complainant corroborates the fact that the Respondent registered and used the disputed domain name in bad faith. It is important to mention that the Respondent has apparently hidden his identity following the legal notice sent by the Complainant.
Additionally, the Complainant’s trademark BRAUN is a well-known mark throughout the world and achieved well-known trademark status prior to the registration by the Respondent of the disputed domain name. The Panel is of the view that at the time the Respondent registered the disputed domain name, the Respondent was undoubtedly aware of the BRAUN trademarks.
In the view of the all above, there is no doubt that the Respondent knew the Complainant’s well-known trademark at the time of the registration and tried to take unlawful advantage from it through the use of the disputed domain name.
The above-mentioned use of the Complainant’s well-known trademark in the disputed domain name for an intentional attempt to attract for commercial gain Internet users by creating a likelihood of confusion through suggesting source, sponsorship, affiliation or endorsement by the Complainant of the Respondent’s website, amounts to evidence of bad faith registration and use.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met by the Complainant.
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 <braun-tr.com> be transferred to the first Complainant.
Emre Kerim Yardimci
Sole Panelist
Date: October 5, 2020
