The Complainants are Procter & Gamble Business Services Canada Company of Halifax, Nova Scotia, Canada, The Gillette Company LLC of Boston, Massachusetts, United States of America (“United States”), Braun GmbH, of Kronberg Im Tanaus, Germany, and The Procter & Gamble company of Cincinnati, Ohio, United States, represented by Studio Barbero, Italy (the “Complainants”).
The Respondents are Whois privacy protection service, Internet Invest, Ltd. dba I of Kiev, Ukraine / Artem Shostak, Private Person 66478 of Kiev, Ukraine, Whois privacy protection service, Internet Invest, Ltd. dba I of Kiev, Ukraine / Artem Shostak, Private Person 53397 of Kiev, Ukraine, Privacy Protection, HOSTING UKRAINE LLC / Коваленко Валерий/Konovalenko Valeriy of Vyshneve, Ukraine, and Privacy Protection, HOSTING UKRAINE LTD / Коваленко Валерий/Konovalenko Valeriy of Vyshneve, Ukraine (the “Respondents”). 2. The Domain Names and Registrars
The disputed domain names and are registered with the Registrar, Internet Invest, Ltd. dba I. The disputed domain name is registered with the Registrar, Hosting Ukraine LLC. The disputed domain name is registered with the Registrar, Center of Ukrainian Internet Names (UKRNAMES). The disputed domain names , , and will be together referred to as the “Domain Names” and each of them as the “Domain Name”. The Registrars Internet Invest, Ltd. dba I, Hosting Ukraine LLC and Center of Ukrainian Internet Names (UKRNAMES) will be together referred to as the “Registrars” and each of them as the “Registrar” 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2017. On August 1, 2017, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On August 2, 2017, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the Domain Names, which differed from the named Respondents and contact information in the Complaint.
The Center sent an email communication to the Complainants on August 11, 2017 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on August 16, 2017.
The Complaint was submitted in the English language. The language of the Registration Agreement for the Domain Names is Russian. On August 7, 2017, the Center sent an email communication to the Parties in English and Russian regarding the language of the proceeding. On August 7, 2017, the Complainants confirmed the request made in the Complaint that English be the language of the proceeding. The Respondents did not comment on the language of the proceeding.
The Center verified that 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 Respondents of the Complaint, and the proceedings commenced on August 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 7, 2017. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on September 13, 2017.
The Center appointed Olga Zalomiy as the sole panelist in this matter on September 25, 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
The Complainants own, among others, the following trademark registrations:
- ORAL-B (word mark), Ukrainian Trademark Registration No. 8649, registered on August 29, 1997 in Class 3, 5, 10, 21;
- GILLETTE (word mark), Ukrainian Trademark Registration No 3421, registered on January 31, 1994 in Class 8;
- BRAUN (word mark), International Trademark Registration No. 650428, registered on November 14, 1995, in Classes 1, 3, 7, 8, 9, 10, 11, designating, amongst others, Ukraine; and
- BRAUN (figurative mark), International Trademark Registration No. 400415, registered on May 23, 1973 in Classes 7, 8, 9, 10, 11, 14, 15, 21, 34, designating, amongst others, Ukraine.
The Respondents registered the Domain Name on July 10, 2012. The Domain name was registered on November 4, 2012. The Respondent registered the Domain Name on November 2, 2012. The Domain Name was registered on October 17, 2015.
On April 6, 2016 the Complainants sent a cease and desist letter to the Respondents. On May 26, 2016, the Respondents, using the e-mail [….]@, replied directly to the Complainant in Ukrainian stating that they did not violate the Complainants’ rights and asking to clarify the grounds of the Complainants’ claims. After receiving the clarifications, on June 10, 2016 the Respondents sent another email in response to the Complainants’ email relying on Ukrainian Law in support of their position.
The Domain Names , and currently direct Internet users to the Respondent’s website “www.зубные-щетки.укр”. The Domain Name currently directs users to an Internet store offering for sale GILLETTE products. The bottom part of the website at the Domain Name displays a link to an Internet store selling toothbrushes at “www.oralb-shop-net”. The link also redirects users to the website “www.зубные-щетки.укр.” 5. Parties’ Contentions A. Complainant
The Complainants claim that the Domain Names are confusingly similar to the Complainants’ trademarks ORAL-B, GILLETTE and BRAUN. The Complainants claim to own several trademark registrations in various countries. The Complainants contend that each of the Domain Names consists of the Complainants’ trademarks, a hyphen and a term “shop”, which does not affect the confusing similarity. The Complainants argue that the generic term “shop” included in the Domain Names is apt to increase the likelihood of confusion and to induce Internet users to believe that there is an association or affiliation with Complainants and their products. The Complainants allege that the top level suffixes “.net” and “.com” are merely instrumental to the use of the Internet, so the Domain Names remain confusingly similar despite their inclusion.
The Complainants claim that the Respondents have no rights or legitimate interests in the Domain Names. The Complainants contend that the Respondents are not licensees or authorized agents of Complainants, an authorized resellers of the Complainants and have not been authorized to register and use the Domain Names. The Complainants allege that they have no evidence demonstrating that Respondents might be commonly known by a name corresponding to the Domain Names as an individual, business, or other organization. The Complainants argue that because of the use of the privacy shield to conceal their identity and the absence of any information about the company managing the online stores on the websites to which the Domain Names resolve, the Respondents cannot have been commonly known by the Domain Names. The Complainants claim that they have no evidence of the Respondents’ use of, or demonstrable preparations to use, the Domain Names in connection with a bona fide offering of goods or services before any notice of the dispute. The Complainants argue that the Respondents did not intend to use the Domain Names for any legitimate purpose and the Respondents’ use of the Domain Names does not amount to fair use without intent for commercial gain.
The Complainants argue that the Domain Names were registered and are being used in bad faith. The Complainants claim that the Respondents registered the Domain Names in bad faith because it is inconceivable that the Respondents did not know about existence of the Complainants’ well-known trademarks at the time of the Domain Names’ registration. The Complainants allege that the Respondents registered the Domain Names to capitalize on the Complainants trademarks’ reputation by diverting Internet users seeking information about Complainants to their own websites and earn revenues by the offer for sale of the products promoted therein. The Complainants contend that the Respondents are using the Domain Names in connection with websites publishing Complainants’ trademarks, promoting and offering for sale unauthorized products bearing Complainants’ trademarks. In the Complainants’ view, such a conduct demonstrates that the only purpose of Respondents is to use the Domain Names to intentionally attempt to attract, for commercial gain, Internet users to such websites, by creating a likelihood of confusion with Complainants’ trademarks as to the source or affiliation of its websites and taking unfair advantage from the well-known character of the trademarks for Respondents’ personal profit. The Complainants claim that by registering several Domain Names that are confusingly similar to the trademarks ORAL-B, GILLETTE and BRAUN, the Respondents are preventing the Complainants from reflecting their well-known trademarks in the Domain Names. The Complainants’ allege that the Respondents have engaged in a pattern of such conduct because the Respondents registered four different domains names incorporating Complainants’ well-known marks. The Complainants contend that the Respondent’s use of the privacy shield is a clear indication of their intention to evade the consequences of registering the Domain Names in which the Respondents have no legitimate interest. B. Respondents
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Preliminary Issue: Consolidation of the Parties
“Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”1 .
(a)Consolidation of the Complaints
The Complainants request the Panel to accept the consolidated Complaint.
The Complainant Procter & Gamble Business Services Canada owns trademark registrations for the ORAL-B trademark. The Complainant Gillette Company LLC owns trademark registrations for the GILLETTE trademark. The Complainant Braun GmbH owns BRAUN trademark (“the First Three Complainants”). The Complainant Procter & Gamble is a parent company of the First Three Complainants. Therefore, the evidence shows that the Complainants have a common grievance against the Respondents by virtue of having common legal interest. In absence of the Respondents’ objections to the consolidation, he Panel finds it equitable and procedurally efficient to permit consolidation.
(b) Consolidation of Respondents
The Complainants also submitted a request for consolidation of the Respondents Konovalenko Valeriy and Artem Shostak in the same proceeding.
It is well-established that a single consolidated complaint may be brought against multiple respondents where “(i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.2 ” The following factors, which have been found to warrant consolidation are: “similarities in or relevant aspects of […] (ii) the registrants’ contact information including email address(es)[…] (iii) relevant Internet Protocol (“IP”) addresses […] (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., or ) […] (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s).”3
Here, the evidence shows that each of the Domain Names adopted a common format: each of the Domain Names consists of one of the Complainants’ trademarks, a hyphen and the word “shop”. Three out of four Domain Names have the same generic Top-Level Domain (“gTLD”) “.net”. All of the Domain Names are registered with Ukrainian Registrars. Further, all of the websites, to which the Domain Names direct, are associated with two sets of Ukrainian DNS servers and are hosted on the same IP address. Finally, the Domain Names used to direct to similar websites, which displayed the Complainants’ trademarks and offered for sale the Complainants’ goods in Ukraine. The Domain Names and that were registered with Internet Invest, Ltd. dba I by Konovalenko Valeriy and Center of Ukrainian Internet Names (UKRNAMES) by Artem Shostak respectively, used to be nearly identical. Each of the websites displayed a link to the website at the domain name (the “Oral-B shop”) at the bottom of the page together with the statement in Russian, which read “Internet shop Oral-B Shop net”. Further, the screenshots of the website at the Domain Name dated July 29, 2017 and of the website at the domain name dated June 13, 2017 show identical website layouts and graphics. At the top of the Home page of both websites the following statement in Russian was displayed: "Free delivery from 999 grivnas”. The “Contacts” page of the both websites offer the same contact information.
In addition, each of the websites at the Domain Names and and displayed the same statement at the top of the page: “Part of The P&G family”. Following the Center’s emailing the Notice of Change in Registrant Information to the Respondents, redirection of the Domain Names , and changed to the website “www.зубные-щетки.укр”4 , which is associated with the domain name registered to the Respondent Konovalenko.
The Panel finds that taken together, the circumstances of this case clearly indicate that the Domain Names are subject to common control. Absent any objections from the Respondents, the consolidation is fair and equitable to all of the parties. All references hereafter will be to the “Respondent” in singular form. B. Language of the proceeding
The Complainants requested that the language of this proceeding be English. Paragraph 11(a) of the Rules provides that: “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, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Because the language of the Registration Agreements for the Domain Names is Russian, the default language of the administrative proceeding would be Russian. The Complainants argue that they communicate in English and would be prejudiced should they be required to translate the Complaint and participate in these proceedings in Russian. The Complainants also claim that if they are required to translate the Complainant and supporting documents into Russian, it will cause delay of the proceeding in contravention to paragraph 10(c) of the Rules. Further, the Complainants allege that the Respondent understands English because it registered the Domain Names in Latin characters, rather than Cyrillic ones, and included the descriptive term “shop” in each of the Domain Names, which shows the Respondent’s intention to target an English-speaking audience. Moreover, the Complainants contend that the Respondent replied in substance to the Complainants’ cease and desist letters in English, which shows that the Respondent understood the cease and desist letters in English and that it can communicate in English. Finally, the websites to which the Domain Names direct contain several words in English, such as “shop” and “part of the P&G family”.
Previous UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. “Such scenarios include …the language/script of the domain name particularly where the same as that of the complainant’s mark, […] (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint [...]”5
Here, the evidence shows that on April 6, 2016 the Complainants sent a cease and desist letter to the Respondent. After several follow-ups, the Complainants received several messages from the Registrar Hosting Ukraine, LLC, which provided the privacy protection service for and . The messages indicated that the owners of the disputed domain names did not agree with allegations set forth in the cease and desist letter. On May 26, 2016, the Respondent using e-mail […]@, replied directly to the Complainant in Ukrainian stating that it did not violate the Complainants’ rights and asking to clarify the grounds of the Complainants’ claims. On June 10, 2016 the Complainants’ sent another email in response to the Complainants’ email relying on the Ukrainian Law in support of its position. The Panel finds that the Respondent’s e-mails indicate that the Respondent can read and comprehend English. The evidence also shows that the Center provided the Respondent with an opportunity to comment on or object to the Complainants’ language request, but the Respondent failed to do so. Taken together the fact that the Respondent can apparently understand English, that the Respondent had been given a fair chance to object to the language of the proceeding and has not done so, and that forcing the Complainants to translate the Complaint will cause it financial harm as well as delay the proceeding, the Panel grants the Complainants’ request for English to be the language of this proceeding. C. General discussion
Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainants must prove each of the following elements with respect to the Domain Names:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and
(iii) the Domain Names have been registered and are being used in bad faith (paragraph 4(a)(iii)). D. Identical or Confusingly Similar
Under the first UDRP element, the Complainants are required to prove that the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights.
The Complainants have established their rights in the ORAL-B, GILLETTE and BRAUN trademarks by submitting copies of, inter alia, the Ukrainian and International (designating Ukraine among other countries) trademark registrations for the ORAL-B, GILLETTE and BRAUN trademarks. It is well-established that “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.”6
The test for confusing similarity between the Domain Names and the Complainants’ trademarks “involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.”7 “Where a domain name incorporates the entirety of a trademark, […] the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”8 “The applicable Top Level Domain (‘TLD’) in a domain name […] is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”9 “The practice of disregarding the TLD in determining identity or confusing similarity is applied irrespective of the particular TLD[...]”10
Here, each of the Domain Names consists of the ORAL-B, GILLETTE or BRAUN trademark, a hyphen, a generic term “shop” and the gTLD suffix “.net” or “.com”. Because each of the Domain Names incorporates a Complainants’ trademark in its entirety, they are confusingly similar to one of the Complainants’ trademarks. The addition of the hyphen or the descriptive term “shop” does not impact the assessment of the confusing similarity11 . It is well-established that the addition of the gTLD suffix is disregarded under the confusing similarity test12 .
Thus, the Panel finds that the Domain Names are identical or confusingly similar to the Complainants’ trademarks and the Complainants satisfied the first element of the UDRP. E. Rights or Legitimate Interests
Under the second UDRP element, a complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the respondent.13 Once the complainant has made out the prima facie case, the respondent carries the burden of producing evidence demonstrating it has rights or legitimate interests in the domain name.14 Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.15
The Complainants contend that the mere registration of the Domain Names does not establish rights or legitimate interests in the Domain Names. The Complainants claim that the Respondent has no rights or legitimate interests in respect of the Domain Name because the Respondent is not a licensee or an authorized agent of Complainants, an authorized reseller of the Complainants and it has not been authorized to register and use the Domain Names. It is well-established that typically in the absence of any license or permission from a complainant to use the complainant’s trademarks, no bona fide or legitimate use of the domain name could reasonably be claimed. See, LEGO Juris A/S v. DomainPark Ltd, David Smith, A, Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138.
The Complainants allege that they have no evidence demonstrating that Respondent might be commonly known by a name corresponding to the Domain Names as an individual, business, or other organization. The Complainants argue that because of the use of the privacy shield to conceal its identity and the absence of any information about the company managing the online stores on the websites to which the Domain Names resolve, the Respondent cannot have been known commonly known by the Domain Names. The Panel finds no evidence disproving this allegation.
The Complainants claim that they have no evidence of the Respondent’s use of, or demonstrable preparations to use, the Domain Names in connection with a bona fide offering of goods or services before any notice of the dispute. The Domain Names directed to websites offering for sale purported Complainants goods. The websites prominently displayed the Complainants’ ORAL-B, GILLETE, or BRAUN trademarks and contained no information about lack of affiliation between the Respondent and the Complainants. The websites at the Domain Names and and displayed the same statement at the top of the page: “Part of The P&G family”. It appears that the websites were designed to create an impression of official Complainants’ websites and to obtain profit from that impression.
While “[p]anels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name”,16 this is not the case here. The Complainants argue that the Respondent did not intend to use the Domain Names for any legitimate purpose and the Respondent’s use of the Domain Names does not amount to fair use without intent for commercial gain. The evidence shows that currently, the first three Domain Names redirect Internet users to the Respondent’s website “www.зубные-щетки.укр” offering for sale purported Complainants’ goods and goods under brands belonging to other parties, WATERPIK®, JET PIK® and PHILLIPS® trademarks. The Domain Name currently directs users to an Internet store offering for sale GILLETTE products. The bottom part of the “home” page of the website at the Domain name displays a link to an Internet store selling toothbrushes at the website . The link also redirects users to the website “www.зубные-щетки.укр.” None of the websites associated with the Domain Names disclose the Respondent’s relationship with the Complainants. Finally, the Respondent is trying to corner market in the domain names reflecting the Complainants’ trademarks.
The Panel therefore finds that the Complainants have made out a prima facie case in respect to the Respondent’s lack of rights or legitimate interests in the Domain Names. Since the Respondent failed to rebut the Complainants case, the Complainants satisfied the second element of the UDRP. F. Registered and Used in Bad Faith
Under the third UDRP element, the Complainants are required to prove that the Domain Names were registered and are being used in bad faith.
Pursuant to paragraph 4(b) of the UDRP, any one of the following non-exclusive scenarios may constitute evidence of a respondent’s bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the 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 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 the respondent’s website or location.
The Respondent registered the Domain Names many years after the Complainants registered their ORAL-B, GILLETTE and BRAUN trademarks. The trademarks have been found to be well-known by many previous panels. See, for instance,Braun GmbH v. Do Van Tuan,WIPO Case No. D2014-0832 (the panel found the BRAUN trademark to be well-known). Moreover, the Respondent uses the Domain Names to direct to website offering purported Complainants’ goods for sale, and three of the Respondent’s website claimed to be “Part of The P&G family”. Therefore, it is inconceivable that the Respondent did not know about the Complainants’ trademarks at the time of registering the Domain Names.
The Respondent is also using the Domain Names in bad faith because, by using the Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the its websites by creating a likelihood of confusion with the Complainants’ mark as to the affiliation or endorsement of either the Respondent or its websites. The evidence on file shows that the Domain Names resolved to websites designed to look like it is associated with or authorized by the Complainant. The websites displayed the Complainants’ trademarks and the statement “Part of The P&G family”. The Domain Names , and currently direct Internet users to the Respondent’s website “www.зубные-щетки.укр”. The Domain Name currently directs users to an Internet online store offering for sale GILLETTE products. The bottom part of the website at displays a link to an Internet store selling toothbrushes at . The link also redirects users to the website “www.зубные-щетки.укр.” The Panel finds that the Respondent is using the Domain Names to trade on the goodwill of the Complainants’ trademarks.
Finally, the Panel finds that the Respondent has engaged into a pattern of registering domain names to prevent the Complainants from reflecting their trademarks in corresponding domain names. The Respondent registered four domain names incorporating the Complainants’ well-known marks, which is sufficient to find a pattern of such conduct.
Therefore, the Panel finds that the Domain Names were registered and are being used in bad faith. The third element of the UDRP has been satisfied. 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 Domain Name be transferred to the Complainant Procter & Gamble Business Services Canada Company; that the Domain Names , be transferred to the Complainant The Gillette Company LLC and the Domain Name be transferred to the Complainant Braun GmbH.
Olga Zalomiy
Sole Panelist
Date: October 6, 2017
1 Section 4.11.1, The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)
2 Section 4.11.2, WIPO Overview 3.0.
3 Id.
4 This means “toothbrushes.ukr”.
5 Section 4.5.1, Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
6 Section 1.2.1 WIPO Overview 3.0.
7 Section 1.7, WIPO Overview 3.0.
8 Id.
9 Section 1.11.1, WIPO Overview 3.0.
10 Section 1.11.2, WIPO Overview 3.0.
11 See, Section 1.8, WIPO Overview 3.0.
12 Section 2.1, WIPO Overview 3.0.
13 Section 2.1, WIPO Overview 3.0.
14 Id.
15 Id.
16 Section 2.8, WIPO Overview 3.0.
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