The Complainant is The Procter and Gamble Company of Cincinnati, Ohio, United States of America, represented by BMVN International LLC, Viet Nam.
The Respondent is RPR Vietnam of Viet Nam. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2013. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 8, 2013, 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 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 20, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 9, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 10, 2013.
The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on September 18, 2013. 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.
On September 19, 2013, the Center received an unsolicited supplemental filing from Respondent, and an unsolicited supplemental filing from a third party, both in the form of email communications.
Although the Rules do not explicitly provide for supplemental filings, paragraph 10(d) of the Rules empowers the Panel to “determine the admissibility, relevance, materiality and weight of the evidence”.
In this case, this Panel has decided not to take into account such supplemental filings since they were sent (i) after the delay for the Respondent to submit a Response, as provided under paragraph 5(a) of the Rules; (ii) after the constitution of the Panel; and (iii) only to the Center, without being communicated to the other Party, which constitutes a breach of paragraph 2(h) of the Rules. In any event, if this Panel had taken into consideration such supplemental filings, it would not have changed the outcome of this proceeding. 4. Factual Background
The Complainant, The Procter & Gamble Company was founded in 1837 in Cincinnati, Ohio, United States of America. The Complainant is a well-known manufacturer and distributor of consumer goods throughout the world, conducting business in over 140 countries.
The Complainant is the owner of several international, European, United States and national trademarks on the sign VIDAL SASSOON, both in word and figurative forms. The Complainant further evidenced that it holds trademark rights in Viet Nam, where the Respondent is established, and in particular the trademarks registered under number 4-0006382-000 and number 4-0011979-000, respectively a word trademark registered on September 30, 1992 and a composite trademark registered on May 27, 1994. Both trademarks are registered for goods in class 3.
Furthermore, Vidal Sassoon is the name of a famous hair designer born in 1927 in the United Kingdom of Great Britain and Northern Ireland. Vidal Sassoon sold all the rights to his name and image to Richardson-Vicks in 1982. In turn, the Complainant bought Richardson-Vicks in 1985 and gained ownership over the trademark rights to the words VIDAL SASSOON .
Finally, through its brand, the Complainant has gained over the years substantial reputation internationally for its VIDAL SASSOON hair-related products. This recognition and reputation, as well as its extensive use of its trademarks in the past thirty years is well documented by the Complainant.
The Respondent registered the disputed domain name on January 31, 2010. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant is and has been for many years the right holder of the mark VIDAL SASSOON (the “Trademark”) in numerous countries worldwide, including in Viet Name. The Trademark is used in the sector of hair-related products and services. The Trademark predates the Respondent’s registration of the disputed domain name.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark VIDAL SASSOON, as it is composed of the two words “vidal” and “sassoon”, connected with a hyphen. The Complainant further contends that the hyphen is an element of punctuation which serves only to connect the two words, without however adding any meaning to them.
Finally, the Complainant submits that the top-level suffix “.com” in the disputed domain name only serves to indicate the type and code level of the domain name and cannot be taken into consideration when determining the confusing similarity.
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent registered the disputed domain name long after the Complainant established its rights in and to the Trademark, registered in many countries in the world.
The Complainant has trademark rights for VIDAL SASSOON, and no franchise, license, authorization or consent agreement, express or implied, was granted to the Respondent to use the Trademark in the disputed domain name or in any other manner.
The Complainant contends that “Vidal Sassoon” is not a descriptive or generic term and therefore is inherently distinctive and meaningless at least in English and Vietnamese.
Moreover, the Complainant submits that the Trademark enjoys widespread reputation and recognition for hair-related products and that traders cannot legitimately adopt VIDAL SASSOON for purposes other than creating an impression of association with the Complainant.
Finally, the Complainant contends that no evidence exists to suggest that that the Respondent (i) has ever used, or demonstrated preparation to use, the disputed domain name, or a name corresponding to the disputed domain name in connection with a bona fide offering of goods and services, (ii) as an individual, business, or other organization, have been commonly known by the disputed domain name; or (iii) is making a legitimate noncommercial or fair use of the disputed domain name.
(c) The disputed domain name was registered and is being used in bad faith
The Complainant evidences that the disputed domain name has been registered to promote and offer hair-related products and services.
The Complainant argues that the Respondent registered the disputed domain name for the purpose to profit from consumer confusion by attempting to show an association or affiliation with the Complainant in order to attract Internet users to the Respondent’s website for commercial purposes.
Furthermore, the Complainant submits that bad faith is established on the basis of the fact that (i) The Trademark has a strong reputation and is widely-known through substantial use and therefore the Respondent must be perfectly aware of its existence at the time of its registration of the disputed domain name; (ii) at the time of registration, the Respondent had an intention to profit and most likely did profit from consumer confusion as to the Respondent’s association or affiliation with the Complainant by attracting Internet users to the disputed domain name; and (iii) no evidence exists of any actual or contemplated good faith use of the disputed domain name.
Finally, the Complainant contends that registration of a disputed domain name that is confusingly similar to a well-known trademark by any entity that lacks a relationship to that mark itself is sufficient evidence of bad faith use. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Notwithstanding a respondent’s default, the complainant must nevertheless still establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”), paragraph 2.1 and paragraph 4.6, and the relevant decisions cited therein. Nonetheless, the Panel shall decide this administrative proceeding on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and, in the absence of exceptional circumstances, draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
This Panel has found no such exceptional circumstances that would justify the Respondent’s failure to submit a timely Response. The Panel therefore infers that by not replying to the Complainant’s contentions, the Respondent does not deny the facts asserted and contentions made by the Complainant (e.g. Roche Products Limited v. Private Whois Service,WIPO Case No. D2010-1983; Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation,WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact,WIPO Case No. D2003-0994).
As a result, asserted facts that are not unreasonable will be taken as true by this Panel.
Furthermore, as to ultimately reach its decision, this Panel has performed independent factual research in order to obtain more information about the Respondent and its use of the disputed domain name. In line with other UDRP panels (see, e.g.: Sensis Pty Ltd., Telstra Corporation Limited v. Yellow Page Marketing B.V.,WIPO Case No. D2011-0057), this Panel has not deemed necessary, nor appropriate, requesting the parties to submit comments on such research. This Panel used these resources solely to fill in the factual gaps left by the absence of a Response by the Respondent and to assess the completeness of the Complainant's statements and evidence in the present proceeding.
Finally, in accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, this Panel will examine whether each the following three elements are present:
(i) the disputed domain name registered by the Respondent 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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Consequently, this Panel shall further analyse the eventual concurrence of these three grounds in the present case. A. Identical or Confusingly Similar
The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).
First of all, this Panel finds that the Complainant has clearly evidenced that it had registered trademark rights to VIDAL SASSOON well before the disputed domain name was registered. Also, the Complainant has sufficiently demonstrated and evidenced that it had a lengthy use of its trademark for its commercial activities, and in particular to offer hair-related products worldwide.
Secondly, the disputed domain name fully incorporates the Complainant’s distinctive and widely known VIDAL SASSOON mark in which the Complainant has exclusive rights. This Panel finds on the basis of previous UDRP decisions that it is established that where the domain name incorporates a complainant’s registered trademark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525).
Thirdly, the only difference between the disputed domain name and the trademark is the hyphen between “vidal” and “sassoon”. In this Panel’s view, the addition of a hyphen does nothing to distinguish the disputed domain name from the mark, nor to dispel the risk of confusing similarity, as it was found in previous UDRP decisions (see OLX Inc., OLX S.A. v. Privacy Protect / Generic Domains,WIPO Case No. D2012-1433; QSoft Consulting Limited v. Lotom Group S.A.,WIPO Case No. DNL2009-0018; Royal Canin v. “Planet Media Group N.V.”,WIPO Case No. DNL2008-0009; Guinness UDV North America, Inc. v. UKJENT,WIPO Case No. D2001-0684).
Fourthly, this Panel finds, similarly to other UDRP panels, that the addition of the generic top-level domain (gTLD) “.com” to the disputed domain name does not constitute an element so as to avoid confusing similarity for trademark purposes (see Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz,WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc.,WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
This Panel finds in the present case that the disputed domain name incorporates the Complainant’s well-known trademark VIDAL SASSOON in its entirety and only with a hyphen introduced between the two components, and ending with the suffix “.com”.
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s VIDAL SASSOON trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:
“When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 non-commercial 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”.
This Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent. Thus, the Respondent has no own rights in VIDAL SASSOON.
Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a rights or legitimate interests in the domain name if its use meets certain requirements, which are described in the decision Oki Data Americas, Inc. v. ASD, Inc,.WIPO Case No. D2001-0903 (Oki Data):
- 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.
This Panel finds, similarly to other UDRP panels, that the Oki Data criteria are appropriate even when the respondent is not an authorised reseller, such as it is the case in this dispute (National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc.,WIPO Case No. D2007-1524).
Examination of the website operating under the disputed domain name, as it appeared before the Complainant initiated this proceeding and as properly evidenced by the Complainant, and as it appears following this Panel independent researches, shows that it does not fulfil the Oki Data criteria. Indeed, the Respondent does not actually offer the genuine products on its website but sells hair-related products which are not associated with the Complainant.
Moreover, this Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the disputed domain name.
This Panel further finds that no evidence has been presented that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. In fact, this Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration of the disputed domain name, and believes after reviewing the website as evidenced by the Complainant, and as it appears following this Panel independent researches, that the Respondent had full knowledge of the trademark and that its only intention is to gain profit by riding on the good reputation of the Complainant.
For all the foregoing reasons, this Panel finds the Respondent’s use of the disputed domain name cannot be considered to be in accordance with a bona fide offering of goods or services. Accordingly, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location”.
Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”.
This Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration of the disputed domain name. In this respect, this Panel believes, after reviewing the website and its content as evidenced by the Complainant, and as it appears following this Panel independent researches, that the Respondent must have known and be aware of the rights in the prior well-known trademark VIDAL SASSOON and the associated products at the time of the registration of the disputed domain name.
Also, this Panel finds that given the fact that the Trademark is not descriptive of anything and devoid of meaning other than the products of the Complainant, it is very unlikely that the Respondent would have registered a disputed domain name incorporating the Trademark without knowledge of the Trademark (see in the same way Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne,WIPO Case No. D2010-0240; Volkswagen AG v. Swiss Recruitment,WIPO Case No. D2013-0534) and that it defies common sense to believe that Respondent coincidentally selected this precise domain name without any knowledge of the Complainant and its Trademark (see in the same way Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; Volkswagen AG v. Swiss Recruitment,WIPO Case No. D2013-0534).
Furthermore, this Panel believes the Respondent registered and has used the disputed domain name to direct Internet users to its website that provides products directly competing with those of Complainant.
The Panel determines that Respondent intentionally registered and used the disputed domain name for the purpose of commercial gain by seeking to attract Internet users to its website by creating confusion as to the Complainant’s affiliation with or sponsorship of the Respondent’s website.
Consequently, this Panel finds that the Respondent intentionally registered and used the disputed domain name for commercial gain and that the Respondent’s actual use of the disputed domain name appears to mislead consumers and confuse them by making them believe that the website is associated, fostered or recommended by the Complainant. Such misleading behaviour is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent.
Also, the Respondent is clearly a direct competitor of the Complainant in the promotion and selling of hair-related products. The Respondent appears to have registered the disputed domain name with the intention of disrupting the business of the Complainant. This is evidence of use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iii) of the Policy.
As a result, this Panel infers from such behaviour that the Respondent’s purpose in registering the disputed domain name appears to have been to capitalize on the reputation and goodwill of the Complainant’s trademark, and thus generate unjustified revenues.
In light of the foregoing, this Panel finds that the disputed domain name was registered and used by the Respondent in bad faith under 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 be transferred to the Complainant.
Benoit Van Asbroeck
Sole Panelist
Date: October 2, 2013
Full & Egal Universal Law Academy