ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION The Procter & Gamble Company, Braun GmbH v. DODSONCLAYTON Case No. D2024-4370 1. The Parties The Complainants are The Procter & Gamble Company, United States of America (“United States”), and Braun GmbH, Germany, represented by Studio Barbero S.p.A., Italy. The Respondent is DODSONCLAYTON, United States. 2. The Domain Name and Registrar The disputed domain name (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2024. On October 25, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 26, 2024, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and confirming 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. In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 29, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2024. The Respondent did not submit a response. Accordingly, the Center notified the Respondent’s default on November 19, 2024. The Center appointed A. Justin Ourso III as the panelist in this matter on November 22, 2024. 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.
page 2 4. Factual Background The Complainants, The Procter & Gamble Company (“P&G Complainant”), and Braun GmbH (“Braun Complainant”) (which the P&G Complainant acquired in 2005), (collectively, the “Complainants”), sell shaving and other consumer products worldwide under the well-known BRAUN trademark. The Braun Complainant has been selling shaving products under its BRAUN trademark since the 1950s. The Braun Complainant owns an International registration for its BRAUN figurative trademark, No. 400415, issued on May 23, 1973, in Class 8 for hair cutters and shavers, and component parts, and in other classes for other goods; a European Union registration, No. 000394122, for its BRAUN trademark, issued on August 17, 1999, in Class 8 for electric shavers and hair clippers, certain component parts, and other goods, and in other classes for other goods and services; a United States registration, No. 4148851 for its BRAUN stylized trademark, issued on May 29, 2012, with a first use in January 1982, in Class 8 for electric razors and hair clippers and certain replacement parts, and in class 21; and other registrations. The P&G Complainant owns the domain name , registered on June 24, 1997, on which the Complainants advertise and sell their shaving products and other products. The Complainants have also registered hundreds of other domain names consisting of or including their BRAUN trademark. The Respondent registered the Domain Name on July 23, 2024, without any authorization from the Complainants. Prior to the filing of the Complaint, the Domain Name initially resolved to a website employing the Complainants’ BRAUN trademark and purporting to offer BRAUN shaving products at a steep discount. After the Complainants sent remedial requests to the Registrar and the hosting provider, the Registrar suspended the Domain Name use, and the Respondent’s website became inactive. The Respondent failed to respond to the Complainants’ demand letter. 5. Parties’ Contentions A. Complainants The Complainants have requested a transfer of the Domain Name and contend that they have satisfied each of the elements required under the Policy for a transfer. Notably, the Complainants contend that they have satisfied each of the elements required under the Policy to transfer the Domain Name. Notably, the Complainants contend that the Domain Name resolved to a website that employed the Complainants’ trademark and purported to offer products, likely counterfeit, branded with their mark at very discounted prices; the use of the descriptive elements “shaving” and “essentials” in the Domain Name carries a high risk of implied affiliation with the Complainants; and the site did not disavow any relationship with the Complainants. B. Respondent The Respondent did not submit a response to the Complaint. 6. Discussion and Findings 6.1. Consolidation: Multiple Complainants Two Complainants filed the Complaint. In assessing the propriety of multiple complainants filing against a single respondent, panels examine whether (i) the complainants have a common grievance, or common conduct by a respondent affected the complainants similarly, and (ii) it would be equitable and procedurally efficient to permit the consolidation. Rules, paragraph 10(e); WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1. The Panel finds that the
page 3 Complainants are related companies, a parent and subsidiary, with a common grievance against the Respondent, arising from a common interest in their trademark, and that the Respondent’s conduct has adversely affected both. Additionally, consolidation would be equitable and procedurally efficient. Accordingly, the Panel concludes that consolidation in this proceeding is proper. 6.2. Substantive Matters A complainant must prove three elements to obtain relief: (i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights; (ii) the respondent has no rights or legitimate interests in the domain name; and (iii) the respondent registered and is using the domain name in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar On the first element, a complainant must prove that (1) it has rights in a trademark, and (2) the domain name is identical or confusingly similar to this trademark. Policy, paragraph 4(a)(i). The Panel finds that the Braun Complainant’s registrations establish the Complainants’ trademark rights. WIPO Overview 3.0, section 1.2.1. The Domain Name incorporates the entire trademark, and the trademark is readily recognizable within the Domain Name, notwithstanding the addition of the words “shaving” and “essentials” after the trademark. The Panel finds that the Domain Name is confusingly similar to the trademark. WIPO Overview 3.0, sections 1.7 and 1.8. Accordingly, the Panel concludes that the Complainants have proven the first element: the Domain Name is confusingly similar to a trademark in which they have rights. B. Rights or Legitimate Interests The Respondent has not claimed the existence of any circumstance under the Policy, paragraph 4(c), that demonstrates that a respondent has rights to, or legitimate interests in, a domain name. The Complainants, on the other hand, have shown that they established their trademark rights long before the Respondent registered the Domain Name, they have not authorized the Respondent to use their trademark, and the Respondent is not known by the mark. This is a showing prima facie that the Respondent lacks any rights or legitimate interests in the Domain Name under the Policy, paragraph 4(a)(ii), shifting the burden of production on this second element to the Respondent to come forward with relevant evidence proving rights or legitimate interests in the domain name. WIPO Overview 3.0, section 2.1. The Respondent has not submitted any evidence to rebut the prima facie showing. Importantly, the Panel finds that the Domain Name formerly resolved to a website competing with the Complainants’ website, selling products bearing the Complainants’ trademark at a steep discount, more likely than not counterfeit products, without disclaiming an affiliation with the Braun Complainant or disclosing any relationship with the Complainants. This falsely implied an affiliation with the Braun Complainant, which is not a bona fide commercial use, a noncommercial use, or a fair use of the Domain Name. To the contrary, the evidence shows an intended deceptive use for commercial gain. WIPO Overview 3.0, sections 2.5 and 2.13. Additionally, the Panel finds that the Registrar identified the Registrant and the Registrant organization by a name that does not resemble the Domain Name and provided an email address for the Respondent that does not resemble the Domain Name, which corroborate that the Respondent is not known by the Domain Name. Furthermore, the Respondent failed to respond to the Complaint. Accordingly, the Panel concludes that the Complainants have proven the second element: the Respondent lacks rights or legitimate interests in the Domain Name.
page 4 C. Registered and Used in Bad Faith The Policy provides that the following circumstance is “evidence of the registration and use of a domain name in bad faith: [...] by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site [...], by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site.” Policy, paragraph 4(b)(iv). The Panel finds that the descriptive words in the Domain Name betray an intent to associate misleadingly the Domain Name with the Complainants’ trademark. Additionally, the Complainants have proven that the Domain Name resolved to a website that was designed to give the impression that it was the Braun Complainant’s, or was affiliated with this Complainant, on which the Respondent offered for sale products, likely counterfeit, for commercial gain, under the Complainants’ registered trademarks. The Panel finds that the Respondent was passing off the site as affiliated with the Braun Complainant, without disclosing or disclaiming any relationship with the Complainants. The Panel finds this conclusive evidence that the Respondent must have been aware of the Complainants’ trademark, and of their rights in the mark, at the time that the Respondent registered the Domain Name; the Respondent’s registration and use of the Domain Name targeted the Complainants’ mark; and the Domain Name and the site are intended to attract, misleadingly and deceptively, customers and potential customers of the Complainants, for the Respondent’s commercial gain. WIPO Overview 3.0, sections 3.1.4, 3.2.1, and 3.2.2. During the preparation of this Decision, apparently as a result of a decision of the Registrar, the Domain Name did not resolve to an active, functioning website. However, the Panel agrees with those panels who have consistently found that non-use of a domain name does not prevent a finding of bad faith, under the doctrine of passive holding, when other elements are present that demonstrate bad faith. WIPO Overview 3.0, section 3.3. These findings compel the Panel to conclude that the Respondent intentionally registered the Domain Name in bad faith to take unfair advantage of the Complainants’ trademark and that the Respondent is using the Domain Name in bad faith intentionally to attract Internet users to its site for commercial gain by creating a likelihood of confusion with the Complainants’ trademark as to the source of the site or the source of the goods offered on the site, in violation of the Policy, paragraph 4(b)(iv). Accordingly, the Panel concludes that the Complainants have proven the third element: the Respondent registered and is using the 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 Domain Name be transferred to the Complainants. /A. Justin Ourso III/ A. Justin Ourso III Panelist Date: December 5, 2024
Full & Egal Universal Law Academy