The Complainant is The Procter & Gamble Company of Cincinnati, Ohio, United States of America (“United States”), represented by Cabinet BCTG Avocats, France.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States / Jonathan Kraag of Kinston Upon Thames, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2018. On October 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 19, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 22, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 26, 2018.
The Center verified that the Complaint together with 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 Respondent of the Complaint, and the proceedings commenced on November 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2018.
The Center appointed Christos A. Theodoulou as the sole panelist in this matter on November 27, 2018. 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 company registered in the United States specializing in hygiene products and, according to the uncontested allegations of the Complainant, is present in 180 countries with 300 brands. It is one of the largest companies in the world, according also to the uncontested allegations of the Complainant. It has subsidiaries in France since the sixties. In 1994, the Complainant P and G France SAS was established.
The Complainant is the worldwide manufacturer and supplier of the products Crest and 3D White and owns the well-known trademark WHITESTRIPS. It is the owner of numerous trademarks WHITESTRIPS in many countries around the world. WHITESTRIPS is one of its leading brands used since 2001 and it was designated by consumers in 2009 as the best of the teeth whitening products, according always to the uncontested allegations of the Complainant.
In particular, the Complainant is the owner of the following trademarks registered in class 3 and 5 for toothpastes and tooth cleaning products: French trademark WHITESTRIPS No. 3310833 dated September 2, 2004; European Union trademark WHITESTRIPS No. 2260156, filed on June 14, 2001 and registered on September 27, 2002; and European Union trademark WHITESTRIPS No. 2196251, filed on April 27, 2001 and registered on July 23, 2002.
The Complainant is also the owner of the trademarks 3D WHITE and CREST, i.e. European Union trademark CREST No. 4772075, filed on December 8, 2005 and registered on January 24, 2007 and European Union trademark 3D WHITE No. 9017179, filed on April 9, 2010 and registered on September 27, 2010.
The Complainant is advertising these products over the Internet.
The disputed domain name was created on December 30, 2017, long after the trademark registrations of the Complainant. According to the evidence provided by the Complainant, the disputed domain name resolves to a website displaying the Complainant’s logo and what appears as the Complainant’s products. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Before engaging in the threefold discussion of paragraph 4(a) of the Policy, the Panel will briefly address the procedural issue relating to the default of the Respondent. The implications of a default in this case are telling since the Complainant has the burden of proof, according to paragraph 4(a) of the Policy (“In the administrative proceeding, the complainant must prove that each of these three elements are present”). As such, the Panel cannot merely grant the Complainant’s request automatically due to the default, but it has to examine instead the evidence presented to determine whether or not the Complainant has proved its case, as required by the Policy. See FNAC v. Gauthier Raymond,WIPO Case No. D2004-0881; Sonofon A/S v. Vladimir Aleksic,WIPO Case No. D2007-0668; Gaudi Trade SpA v. Transure Enterprise Ltd,WIPO Case No. D2009-1028.
The Panel shall now proceed to the analysis of the evidence in this case, based on the three elements of paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
The Complainant has presented evidence to demonstrate that it owns registered trademark rights in WHITESTRIPS and CREST and 3D WHITE.
The mere fact that the Respondent has added a hyphen, the word “france” and the generic Top-Level Domain “.com” does not to this Panel affect the essence of the matter: the disputed domain name is confusingly similar to the trademark of the Complainant and, in the circumstances of this case, is by itself sufficient to establish the criterion of identity or confusing similarity for purposes of the Policy, as many previous UDRP panels have found. See e.g., Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Koninklijke Philips Electronics N.V. v. K. Harjani Electronics Ltd.,WIPO Case No. D2002-1021; DFDS A/S v. NOLDC INC,WIPO Case No. D2006-1070; American Automobile Association, Inc. v. Bladimir Boyiko and Andrew Michailov,WIPO Case No. D2006-0252.
In view of the above, the Panel finds that the Complainant has discharged its burden of proof on this point and holds that the disputed domain name is confusingly similar to the Complainant’s trademark WHITESTRIPS. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances which, if found by a panel to be proved based on its evaluation of the evidence presented, shall demonstrate a registrant’s right to or legitimate interest in a domain name. These examples are discussed in turn below, with regard to the specific facts of this case:
(i) Use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute:
The Respondent is not making a bona fide offering of goods.
(ii) An indication that the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark rights:
In this case, there is no such indication from the present record.
(iii) Legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks at issue:
Again, in this case there is no such indication from the record.
Further, the Respondent does not seem to have any trademark registrations including the term “whitestrips”. Additionally, it is to be noted that the Respondent did not present evidence of any license by the Complainant, with whom there seems to exist no relationship whatsoever.
Further, the Respondent seems to want to induce consumers to visit his website where he presumably offers counterfeit products or forbidden in the European Union and further creates an impression of association with the Complainant without permission from the latter, according to the uncontested allegations of the Complainant.
As a conclusion on this point, the Panel finds that the Complainant has established an uncontested, prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraphs 4(b)(i) to 4(b) (iv) of the Policy mention circumstances in order to demonstrate bad faith registration and use of a disputed domain name.
According to the uncontested allegations of the Complainant, the Respondent registered and used the disputed domain name in bad faith, in order to capitalize on the goodwill of the trademark of the Complainant and attract Internet users for a commercial gain.
Furthermore, the Respondent must have known of the existence of the mark because of inter alia, its extensive promotion worldwide.
Further, he did not answer to the cease and desist letter of the Complainant.
Finally, the default of the Respondent in the present circumstances seems to “reinforce the inference of bad faith registration and bad faith use” (The Hong Kong and Shanghai Banking Corporation Limited v. Bill Lynn,WIPO Case No. D2001-0915).
As a consequence of the above, the Panel finds that the Respondent registered and is using the disputed domain name 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 transferred to the Complainant.
Christos A. Theodoulou
Sole Panelist
Date: December 7, 2018
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