The Complainants are The Procter & Gamble Company, United States of America (“United States”) and Braun GmbH, Germany, represented by Studio Barbero, Italy.
The Respondent is Domain Admin, FBS INC, Whoisprotection.biz, Turkey / Erol Çakir, Turkey. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2020. On December 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 4, 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 December 7, 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 December 7, 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, and the proceedings commenced on December 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2021. The Center appointed Gökhan Gökçe as the sole panelist in this matter on January 14, 2021. 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, The Procter & Gamble Company, was founded in 1837 in the United States 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, Braun GmbH, was founded in 1921 in Germany, and manufactures a wide range of electrical consumer goods. The first Complainant acquired the second Complainant in 2005. Both Complainants will be collectively referred to as the “Complainant”. The second Complainant is the owner of the following BRAUN trademark registrations: - Turkish Trademark No. 168294, BRAUN, registered on December 6, 1996 in classes 1, 3, 4, 7, 8, 9, 10, 11, 14, 16, 21 and 26; - Turkish Trademark No. 175269, BRAUN, registered on September 16, 1997 in classes 35 and 37; - Turkish Trademark No. 190179, BRAUN, registered on March 1, 1999 in classes 3, 7, 8, 9, 10, 11 and 21; - Turkish Trademark No. 82028, BRAUN, registered on January 1, 2000 in classes 7, 8, 9 and 11; - International Trademark No. 652027, BRAUN, registered on November 14, 1995, protected in several countries in classes 11, 14, 16, 21, 26, 35 and 37; - International Trademark No. 400415, BRAUN (figurative mark), registered on May 23, 1973, protected in several countries in classes 7, 8, 9, 10, 11, 14, 15, 21 and 34. The Complainant Representative sent a cease-and-desist letter dated September 29, 2020 in relation to several domain names to the Respondent and sent a reminder in November 2020. Additionally, the Complainant’s representative sent a further email to the Respondent on December 1, 2020 to cease or avoid any and all use of the disputed domain names; however, the Respondent did not respond at all to the Complainant’s cease-and-desist letters. The following disputed domain names: The Complainant requests the transfer of the disputed domain names. The Complainant believes that the disputed domain names are confusingly similar to the Complainant’s BRAUN trademark. The Complainant argues that the main difference between the disputed domain names and the Complainant’s trademark is that the disputed domain names additionally comprise the non-distinctive elements “by”, “tr”, “turkey”, and, in some instances, a hyphen. The Complainant is of the opinion that the addition of these non-distinctive elements does not negate the confusing similarity with its BRAUN trademark. Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names. In particular, the Complainant states that the Complainant has never granted a permission or license to the Respondent to use its BRAUN trademark. The Complainant further alleges that the Respondent has never used and does not intend to use the BRAUN trademark in connection with a bona fide offering of goods and services. Finally, it is argued that the Respondent has registered and is using the disputed domain names in bad faith. The Complainant believes that due to the notoriety of the BRAUN trademark, which is certainly well-known worldwide and has been used since about 100 years, as well of a prior UDRP dispute related to The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding Although the language of the Registration Agreements of the disputed domain names are Turkish, the Panel determines in accordance with the Rules, paragraph 11(a) that the language of this administrative proceeding shall be English. The Panel finds that it would be inappropriate to conduct the proceeding in Turkish and request a Turkish translation of the Complaint, noting that the Respondent has failed to raise any objection regarding the language of the proceeding, or to respond in any way to the Complaint, despite having received all communications from the Center in Turkish and in English. In addition to this, the Complainant sent several cease-and-desist letters in English to the Complainant which were received by the Respondent; however, the Respondent did not deem appropriate to request clarifications as to the merits of Complainant’s requests or raise an issue related to the language adopted in said correspondence. Additionally, the Panel finds that it would be inappropriate to conduct the proceeding in Turkish as the disputed domain name Considering 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 Substantive Issues Paragraph 15(a) of the Rules requires the Panel to decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing: (i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) that the disputed domain names have been registered and are being used in bad faith. Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. Stanworth Development Limited v. E Net Marketing Ltd.,WIPO Case No. D2007-1228. However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the WIPO Overview 3.0. A. Identical or Confusingly Similar The Panel finds that the disputed domain names are confusingly similar to the BRAUN trademark of the Complainant. First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights. As evidenced in the Complaint, the Complainant is the owner of many word and figurative trademarks comprising the mark BRAUN in many jurisdictions worldwide, including in Turkey, for many years. Although not identical, the disputed domain names fully incorporate the Complainant’s BRAUN trademark. The disputed domain names are confusingly similar to the trademark BRAUN as the addition of the terms “turkey”, “tr”, “by”, or a hyphen, do not prevent a finding of confusing similarity with the Complainant’s trademark (see, e.g., Realm Entertainment Limited v. Atilim Kaymaz,WIPO Case No. D2017-1263; Realm Entertainment Limited v. Ferhat Aydin,WIPO Case No. D2017-1258; Realm Entertainment Limited v. Necat Celik,WIPO Case No. D2016-0785). Section 1.8 of the WIPO Overview 3.0 makes clear that “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”. The Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark bearing in mind the fact that the applicable generic Top-Level Domain (“gTLD”) in a domain name, in this case “.com” or “.xyz”, is typically disregarded in the comparison process (see sections 1.7 and 1.11.1 of the WIPO Overview 3.0). (See, Instagram, LLC v. Pawan Kumar,WIPO Case No. D2019-0293 and OSRAM GmbH v. PrivacyDotLink Customer 1429225 and PrivacyDotLink Customer 1429185 / Pijar Aji Pratama,WIPO Case No. D2016-2487.) Accordingly, the Panel finds that the Complainant has established element 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain names. While the burden of proof on this element remains with the complainant, previous UDRP panels have recognized that this would result in the often-impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production of evidence shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain names in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed domain names according to the Policy, paragraphs 4(a)(ii) and 4(c). In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no right or legitimate interest to use the Complainant’s trademarks in a confusingly similar way within the disputed domain names. There is also no indication in the current record that the Respondent is commonly known by the disputed domain names. Furthermore, the Respondent has failed to demonstrate any of the other non-exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain names. Additionally, the Complainant states that the Respondent never answered the Complainant’s cease‑and‑desist letter despite several reminders. UDRP panels have repeatedly stated that when respondents do not avail themselves of their rights to respond to complainants, such can support, in appropriate circumstances, an inference that the respondents have no rights or legitimate interest in the disputed domain names. Moreover, the Panel notes that, disputed domain names previously resolved to sites bearing the Complainant’s mark and at the date of the decision, the disputed domain names state the following error message: “This site can’t be reached”, which cannot be considered as a bona fide offering of goods or services. Finally, the Respondent has not provided any response to the Complainant’s contentions. Therefore, the Panel finds that the Complainant has established element 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel is convinced that the Respondent has registered and is using the disputed domain names in bad faith. It appears that the Respondent has registered the disputed domain names solely for the purpose of creating an association with the Complainant. According to the screenshots of the websites linked to the disputed domain names provided as annexes to the Complaint, the Panel is convinced that the Respondent has intentionally registered the disputed domain names in order to create the false impression that the websites are somehow officially linked to the Complainant. The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in the use of the disputed domain name, with an intention to attempt to attract, for commercial gain, Internet users to the 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 website or location or of a product or service on the website or location. By this, the Panel believes that the disputed domain names were registered and used for the sole purpose to commercially profit from misled consumers searching for the Complainant’s products. Moreover, the Respondent has previously registered at least one other domain name incorporating the BRAUN trademark (see The Procter & Gamble Company and Braun GmbH v. Domain Admin, FBS INC, Whoisprotection.biz / Erol Çakir, supra). The Panel also notes the Respondent has registered eight disputed domain names incorporating the BRAUN trademark in the present case, in which the Respondent has no rights or legitimate interests. For the purposes of the third element of the Policy, such pattern of abusive conduct shall be further evidence of bad faith. The Panel accepts that the BRAUN mark is extremely well reputed in many countries worldwide, is one of that categories of marks that would be called “well known” and has enjoyed this status for many years prior to the registration of the disputed domain names. The well-known status of the BRAUN trade mark has also been recognized by past panels in: The Procter & Gamble Company and Braun GmbH v. Domain Admin, FBS INC, Whoisprotection.biz / Erol Çakir, supra; 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.Further, the Panel notes that the Complainant had registered trademark rights in the Respondent’s home country of the Turkey, well prior to the registration of the disputed domain names and that the Complainant’s business in that country appears to be well developed. On this basis the Panel agrees with the Complainant that it is more likely than not that the Respondent was well aware of the Complainant’s BRAUN mark when it registered the disputed domain names. The Respondent’s current passive holding of the disputed domain names supports a finding of bad faith. As explained in section 3.3 of the WIPO Overview 3.0, “the non-use of a domain name (including a blank or coming soon page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good-faith use to which the domain name may be put”. The Respondent registered the disputed domain names under a privacy service, did not respond to the Complainant’s cease-and-desist letters, removed the contents of the websites, and refused to participate in the present proceedings in order to provide arguments in its favor. Furthermore, the Panel is unable to determine any plausible good-faith use to which the disputed domain names may be put from the facts in this case. Having in view the other circumstances of this case, such facts constitute further evidence of bad faith. The Panel therefore finds that paragraph 4(a)(iii) of the Policy 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 disputed domain names, Gökhan Gökçe
Sole Panelist
Date: January 27, 2021
Full & Egal Universal Law Academy