The Complainant is The Gillette Company LLC, United States of America, represented by BMVN International LLC, Viet Nam.
The Respondent is ForeoLuna, Foreo, Sweden.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2021. On July 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 9, 2021, 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 July 9, 2021 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 July 12, 2021.
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 July 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 5, 2021.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on September 7, 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 BackgroundThe Complainant is the owner of the ORAL-B trademark, used since 1950 in connection with toothbrushes, presently used in connection by the Complainant and Procter and Gamble (“P&G”) with dental care products and related services throughout the world.
The Complainant owns among dozens of others the following trademark (Annexes 6 and 7 to the Amended Complaint) the Vietnamese registration No. 4-0005878-000 for the word and device mark ORAL-B, registered on September 12, 1992, and subsequently renewed, in classes 3, 5, 10, and 21.
The disputed domain name was registered on February 19, 2021, and presently does not resolve to an active webpage, but was used in connection with a webpage displaying the Complainant’s trademark and products, claiming to be “part of the P&G family”, purportedly giving away the Complainant’s products in Vietnam.
5. Parties’ Contentions A. ComplainantThe Complainant affirms that ORAL-B is a North-American brand of oral hygiene products, including toothpastes, toothbrushes, electric toothbrushes, and mouthwashes, which has been in use since 1950. The Complainant furthermore states that ORAL-B has been a subsidiary of P&G since 2006 and that P&G and the Complainant hold the
Under the Complainant’s view, the use of the disputed domain name in connection with a webpage claiming to give away purported Complainant’s products in Viet Nam, reproducing copyrighted images of the Complainant’s products and claiming to be “part of the P&G family” characterize a misuse of the Complainant’s trademarks and copyrighted product images, by the Respondent.
According to the Complainant, the disputed domain name fully incorporates the Complainant’s well-known ORAL-B trademark, with the addition of the term “quatang”, a Vietnamese word that means “present” / “gift”, which is insufficient to avoid a finding of confusing similarity under the Policy.
Regarding the absence of the Respondent’s rights or legitimate interests, the Complainant argues that:
(i) it has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name;
(ii) the Respondent does not own and cannot lawfully obtain any trademark or intellectual property right over the ORAL-B trademark; and
(iii) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, rather showing a clear intent to redirect internet traffic to the disputed domain name, seeking to disrupt the Complainant’s business, deceiving consumers and trading off of the Complainant’s goodwill and reputation by creating an unauthorized association between it and the ORAL-B trademark.
As to the registration and use of the disputed domain name in bad faith, the Complainant states that:
(i) the Respondent evidently knew of the Complainant’s trademark when registering the disputed domain name, given the reproduction of the Complainant’s trademark and products at the website that resolved from the disputed domain name;
(ii) the purpose of the Respondent’s registration of the disputed domain name was to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s registered trademark as to the source, sponsorship, affiliation, or endorsement of its website; and
(iii) by reproducing the Complainant’s registered trademark in the disputed domain name and in the title of the website, the Respondent’s website suggests the Complainant or an affiliated dealer of the Complainant as the source of the website which is not the case; this suggestion also being supported by the Respondent’s use of the Complainant’s official product images.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name 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.
The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain name.
In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly SimilarThe Complainant has established rights over the ORAL-B trademark.
The disputed domain name reproduces in its entirety the Complainant’s ORAL-B trademark and is thus confusingly similar therewith, and the addition of the term “quatang”, which in Vietnamese translates as “gift”, does not prevent a finding of confusing similarity under the Policy. See sections 1.7 and 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Furthermore, the use of the disputed domain name in connection with a webpage purportedly giving away the Complainant’s products and reproducing the Complainant’s marketing materials affirms a finding of confusing similarity between the disputed domain name and the Complainant’s ORAL-B trademark.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides a nonexclusive list of circumstances that may indicate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondent under the second UDRP element.
In that sense, and according to the evidence submitted, the Complainant has made a prime facie case against the Respondent that it has not been commonly known by the disputed domain name, is not an authorized reseller of the Complainant, and has not been licensed or otherwise permitted to use any of the Complainant’s trademarks or to register a domain name relating to the Complainant’s trademark.
Also according to the evidence submitted by the Complainant, the use made of the disputed domain name in connection with a webpage reproducing the Complainant’s copyrighted marketing material and targeting the Vietnamese market clearly suggests at least an affiliation with the Complainant, which in fact does not exist. Such use does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name in these circumstances.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad FaithThe Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a 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.
In this case, both the registration and use of the disputed domain name in bad faith can be found pursuant to Policy, paragraph 4(b)(iv) in view of the reproduction of the Complainant’s products and official marketing materials at the webpage that resolved from the disputed domain name, which create a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement thereof.
Moreover, the indication of what appears to be false or incomplete contact details provided in WhoIs information relating to the disputed domain name, communication not being able to be delivered to it by courier, is a further indication of the Respondent’s bad faith in these circumstances.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name.
7. DecisionFor 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
Wilson Pinheiro Jabur
Sole Panelist
Date: September 21, 2021