The Complainant is The Procter & Gamble Company of Cincinnati, Ohio, United States of America (“United States”), represented by JB Eversheds Ltd., Finland.
The Respondent is OHMY! Consult Ltd, Pezhman Ahmadi of Helsinki, Finland, represented by Finnish Law and Economy - FLE Ltd., Finland. 2. The Domain Name and Registrar
The disputed domain name is registered with Instra Corporation Pty Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2015. On July 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 2015, 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 proceeding commenced on July 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2015. The Response was filed with the Center on August 2, 2015.
The Center appointed Steven A. Maier as the sole panelist in this matter on August 12, 2015. 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 limited company incorporated under the laws of the United States. It is a worldwide supplier of toothpaste and other oral care products.
The Complainant is the owner of registrations for the trademark CREST in numerous jurisdictions. Its registrations include, for example:
- Community Trade Mark number 273201 for CREST registered on May 2, 2000 in International Classes 3, 5 and 21 for goods and services including toothpaste and other mouth care products;
- Finland trademark number 31106 for CREST registered on April 2, 1957 in International Class 03 for toothpaste; and
- International (Madrid) trademark number 404270A for CREST registered on December 7, 1973 in International Classes 3 and 5 for toothpastes and tooth cleaning products and designating a total of 22 territories.
The disputed domain name was registered on January 31, 2015.
According to evidence submitted by the Complainant, the disputed domain name has been used to resolve to a website at “www.” which appears to offer products including the Complainant’s CREST branded products for sale. 5. Parties’ Contentions A. Complainant
The Complainant submits that it is a worldwide market leader in toothpaste, toothbrushes, whitening, rinse and related products through its P&G Oral Care Division. It states that it has used the name and trademark CREST since 1955 when the first fluoride toothpaste was introduced and that it currently uses the mark principally in connection with toothpaste, mouthwash and home whitening kits.
The Complainant submits that the disputed domain name is confusingly similar to its trademark CREST. It contends that the disputed domain name incorporates its mark CREST in its entirety and simply appends the descriptive suffix “europe” which does nothing to distinguish the disputed domain name from the trademark. On the contrary, Internet users are likely to believe that the disputed domain name is used by the Complainant for its European customers.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not authorized the Respondent to use its CREST trademark, nor has the Respondent been commonly known by that name. The Respondent has used the disputed domain name misleadingly to refer to the Complainant’s trademark, which cannot constitute any bona fide offering of goods or services.
The Complainant submits that the disputed domain name has been registered and is being used in bad faith.
The Complainant states that the Respondent was aware of the Complainant’s trademark CREST at the date it registered the disputed domain name because the Complainant has previously communicated with the Respondent about another offending domain name.
The Complainant further contends that the Respondent has made use of the Complainant’s CREST and other trademarks for the purposes of its website. The Complainant exhibits a screen print of the Respondent’s website at the disputed domain name which contains five logos at the top and centre of the page, namely, “Body Drench”, “3D White”, “Crest”, “Whitestrips” and “Care Your Self Today Europe”. The Complainant submits evidence that, in addition to CREST, it is also the owner of trademark registrations for 3D WHITE and WHITESTRIPS in numerous jurisdictions.
The Complainant also exhibits a page from the Respondent’s website headed “About Us”, followed by “Crest” and the strapline “As a trusted leader in oral health, Crest helps consumers maintain healthy, beautiful smiles for life.” This is followed by three paragraphs of text and the Complainant submits evidence that this material has in fact been copied from the Complainant’s own website.
The Complainant further contends that there is nothing on the Respondent’s website to identify the true operator of the site and that the site conveys the misleading impression to the public that it is operated by the Complainant.
In the circumstances, the Complainant submits that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
The Complainant seeks the cancellation of the disputed domain name. B. Respondent
The Respondent acknowledges the Complainant’s trademark rights but denies that the disputed domain name is confusingly similar to the Complainant’s CREST trademark. The Respondent states that the term “crest” is a general term meaning summit, top, tip, pinnacle, brow, crown or apex. The Respondent also contends that there are many other registered trademarks that include the mark CREST that are independent of the Complainant. The Respondent exhibits a list and particulars of these marks.
The Respondent denies that it selected the disputed domain name in order to refer to the Complainant’s trademark. The Respondent states that the name “crest” is derived from its brand name “CaRE your Self Today” (relevant initials capitalized). The Respondent states that the alternative would have been to use the capital initials “CYST” which would not be an appropriate brand name. The Respondent states that the addition of the term “europe” is to show the marketing area of the Respondent’s online shop. It states that it is intended to be the number one online store for beauty products in Europe and that the name “crest” also describes that goal.
The Respondent submits that its website is clearly that of an independent operator, offering the Complainant’s trademarked products among others. The website offers a large variety of products in the same sector for the convenience of customers and includes products from other suppliers, such as “Body Drench”. The Respondent submits that it is legitimate for it to advertise trademark owners’ goods under the relevant trademarks so that customers know what products they are buying: the Respondent has a legal right to marketing. The Respondent states that it offers only oral hygiene products in connection with the CREST trademark.
The Respondent contends that it is clear that its website is independent of the Complainant and that this appears, for example, even from the browser address field. The Respondent exhibits a browser address field into which the disputed domain name has been entered, which produces selectable results including “Crest E (Care Your Self Today Europe)”.
The Respondent points to other online stores at “”, “”, “” and “”. It states that, unlike its own store, these stores sell only the Complainant’s products.
The Respondent states that the Complainant’s reference to an earlier domain name dispute is “hate speech”. It states that the domain name in question was registered under an oral agreement and was cancelled in administrative proceedings. 6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established that it has registered trademark rights in the mark CREST in numerous jurisdictions worldwide. The Complainant has also established to the satisfaction of the Panel that by virtue of substantial and long-standing use in commerce, the mark CREST has become distinctive of the Complainant in connection with oral care products.
The disputed domain name comprises the term “crest” together with the term “europe” and the generic Top- Level Domain (“gTLD”) “.com” which is typically to be ignored for the purposes of comparison. The Panel accepts the Complainant’s submission that the geographical identifier “europe” is not sufficient to distinguish the disputed domain name from the Complainant’s trademark and, indeed, is likely to suggest to Internet users that it relates to a European website connected with the Complainant’s mark.
In the circumstances, the Panel determines that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Panel accepts the Respondent’s contention that the term “crest” is capable of having a generic or dictionary meaning designating a summit, top, brow, et cetera. As discussed in paragraph 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), a respondent may have rights or legitimate interests in a dictionary term when it is used in connection with that dictionary meaning and not to trade off third-party rights in the term. In this case, however, the Respondent has not used the disputed domain name in connection with the dictionary meaning of the word “crest”, but has used it to refer to the Complainant’s trademark and to sell the Complainant’s trademarked goods.
With regard to the Respondent’s explanation that the “crest” element of the disputed domain name comprises an acronym of selected letters from the name “Care Your Self Today”, the Panel considers this explanation to be absurd in circumstances where the Respondent has used the disputed domain name for the purposes of a website which prominently features the Complainant’s CREST trademark and products.
The Respondent also claims to have made legitimate reference to the Complainant’s CREST trademark for the purposes of marketing the Complainant’s trademarked goods. As discussed in paragraph 2.3 of the WIPO Overview 2.0, under certain conditions, a respondent who sells trademarked goods under a domain name reflecting that trademark may have rights or legitimate interests in the domain name, even where such sales may be unauthorized by the trademark owner. However, in the view of the Panel, those conditions are not met in this case. First, while the Respondent may be using the disputed domain name to sell the Complainant’s goods, it is clear from the evidence and the Respondent’s own submissions that the Respondent is not offering only the Complainant’s goods. Secondly, the Panel accepts the Complainant’s submissions that the Respondent’s website does not accurately and prominently disclose the relationship between the Complainant and the Respondent. On the contrary, the Panel finds that, far from making clear that the Respondent has no commercial connection with the Complainant, the content of its website as highlighted by the Complainant misleadingly suggests that such a connection does exist.
In the circumstances, the Panel is unable to conclude that the Respondent has used the disputed domain name in connection with any bona fide offering of goods or services that does not unfairly take advantage of the Complainant’s trademark, or that there are any other circumstances that give rise to rights or legitimate interests on the part of the Respondent in the disputed domain name. The Panel therefore concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
On the basis of the evidence submitted in this proceeding, it is clear to the Panel that the Respondent registered and has used the disputed domain name in the knowledge of the Complainant’s CREST trademark and with the intention of making reference to that trademark for the purposes of its commercial website. These findings are obvious from the contents of the Respondent’s website, which makes extensive reference to the Complaint’s trademark and products for the purpose of offering those products (among others) for sale.
The Panel finds that by using the disputed domain name in the manner described above the Respondent has taken unfair advantage of the Complainant’s trademark. For the reasons set out above, the Respondent has failed to meet the conditions for the legitimate use of the disputed domain name and uses the Complainant’s trademark to attract customers to its website for the purposes of its own commercial gain. Furthermore, the Panel accepts the Complainant’s evidence that the Respondent has copied the Complainant’s copyright material for inclusion on its website and has presented that website in a manner that is likely to mislead Internet users into believing that it is commercially connected with the Complainant evidencing the Respondent’s bad faith intent.
Accordingly, the Panel finds that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy).
The Panel therefore concludes that the disputed domain name has been registered and is being used in bad faith. 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 cancelled.
Steven A. Maier
Sole Panelist
Date: August 20, 2015
Full & Egal Universal Law Academy