The Complainant is The Procter & Gamble Company of Cincinnati, Ohio, United States of America, represented by Bakker & Verkuijl B.V., the Netherlands.
The Respondent is Ares Netwerk of Arnhem, the Netherlands. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with SIDN through TransIP B.V. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2016. On May 30, 2016, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On May 31, 2016, SIDN transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Following a request from the Center, the Complainant confirmed the requested remedy on June 2, 2016. The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 6, 2016. In accordance with the Regulations, article 7.1, the due date for Response was June 26, 2016. The Respondent sent informal communications on June 8, 2016 and June 13, 2016.
On June 23, 2016, the Complainant requested the suspension of the proceeding for two weeks. In accordance with article 19.3 of the Regulations, the Center suspended the proceeding on the same day until July 7, 2016. Following a request from the Complainant, the Center reinstituted the proceeding on July 8, 2016. The due date for Response was July 13, 2016. The Respondent did not file any further communications. In the absence of a formal Response, the aforementioned informal communications were forwarded to SIDN for commencement of the mediation process in accordance with the Regulations.
On July 18, 2016, SIDN commenced the mediation process. On August 12, 2016, SIDN informed parties that the dispute had not been solved in the mediation process. No formal Response was submitted.
The Center appointed Willem Hoorneman as the panelist in this matter on August 19, 2016. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2. 4. Factual Background
The Complainant is a multinational consumer goods company. It has registered, inter alia, the following European Union Trade Mark (“EUTM”) registrations (the “Trademarks”):
- EUTM CREST, registered on February 28, 2000 with registration number 273201;
- EUTM CREST, registered on August 27, 2003 with registration number 1843630;
- EUTM CREST (device), registered on January 29, 2007 with registration number 4772075;
- EUTM CREST WHITESTRIPS PREMIUM, registered on January 24, 2007 with registration number 3142858.
The Domain Name was registered by the Respondent on March 21, 2016. The Domain Name resolves to a website where teeth whitening products are offered for sale. The predominant language of the website is Dutch. 5. Parties’ Contentions A. Complainant
The Complainant contends the following.
The Complainant is the owner of the Trademarks, to which the Domain Name is confusingly similar. The Respondent has no rights or legitimate interests in the Domain Name. The Domain Name is confusingly similar to the trademarks CREST and CREST WHITESTRIPS PREMIUM, since it consists of the trademark CREST, the words “whitestrips”, which is a part of the trademark CREST WHITESTRIPS PREMIUM, and the descriptive and non-distinctive word “voordeel” (in English: benefit, advantage, profit, discount).
The Domain Name is not used in a legitimate, noncommercial and honest manner. The products sold on the website behind the Domain Name are teeth whitening products, which are products currently forbidden on the European Union (“EU”) market, under EU Regulation 1223/2009, since the products concerned contain over 0,1 percent hydrogen peroxide (H²O²).
The Domain Name has been registered with the sole purpose of selling unauthorized products, the sale of which is forbidden under the mentioned EU Regulation. The Domain Name was registered in 2016, far after the EU Regulation became effective. The Respondent has been informed by e-mail of June 14, 2016 that the unauthorized sale of teeth whitening products is a violation of applicable laws and regulation and may harm the reputation of the Complainant.
The Complainant states that the Respondent does not have any rights in the Trademarks or other trademarks comprising the word crest, or any other similar trademark. The Respondent is not generally known under the name “Crestwhitestrips-voordeel” either.
The Trademarks have all been registered long before the Domain Name was registered. By using the Domain Name for the sale of products that are not admitted on the EU market, the Respondent disturbs the legitimate activities of the Complainant under the Trademarks, namely the sale of products that are compliant with relevant legislation. B. Respondent
The Respondent merely sent informal communications, stating inter alia that it has ceased selling any Crest products of the Complainant. These communications were later regarded, in the absence of a formal Response, as the Response, in accordance with the Regulations. 6. Discussion and Findings
Pursuant to article 2.1 of the Regulations, the Complainant’s request to transfer the Domain Name must meet three cumulative conditions:
a. The Domain Name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which the Complainant has rights, or other name by means of article 2.1(a) under II of the Regulations; and
b. The Respondent has no rights to or legitimate interests in the Domain Name; and
c. The Domain Name has been registered or is being used in bad faith.
The Respondent may demonstrate such rights or legitimate interests on its part, inter alia, through the circumstances mentioned in article 3.1 of the Regulations. The Complainant may provide evidence that the Domain Name has been registered or is being used in bad faith, inter alia, through the circumstances mentioned in article 3.2 of the Regulations.
As the Respondent has not filed a formal response, and therefore has not conducted a substantive defense to the Complainant’s allegations, the Panel shall rule on the basis of the Complaint. In accordance with article 10.3 of the Regulations, the Complaint shall in that event be granted, unless the Panel considers it to be without basis in law or in fact. A. Identical or Confusingly Similar
Pursuant to article 2.1(a) of the Regulations, the Complainant must establish that the Domain Name is identical or confusingly similar to a trademark or trade name in which the Complainant has rights.
It is established case law that the country code Top-Level Domain (“ccTLD”) “.nl” may be disregarded in assessing the similarity between the domain name on the one hand, and the relevant trademark on the other hand (see: Taylor Made Golf Company, Inc. v. Lotom Group S.A.,WIPO Case No. DNL2010-0067; Roompot Recreatie Beheer B.V. v. Edoco LTD,WIPO Case No. DNL2008-0008).
The Domain Name is confusingly similar to the Complainant’s Trademarks, because the Domain Name incorporates the trademark CREST in its entirety and also an important portion of the trademark CREST WHITESTRIPES PREMIUM, being the words CREST and WHITESTRIPES. The addition of the descriptive and generic element “voordeel” (in English: benefit, advantage, profit, discount) does not take away the confusing similarity (see Seiko EPSON Corporation v. ANEM Computers / ANEM,WIPO Case No. DNL2010-0024, in which case the word “shop” was considered descriptive and generic).
The Complainant has thus established the first element of article 2.1 of the Regulations. B. Rights or Legitimate Interests
While the overall burden of proof rests with the complainant, previous panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied the second element of article 2.1 of the Regulations.
The Respondent may demonstrate such rights or legitimate interests on its part inter alia through the following circumstances listed in article 3.1 of the Regulations:
a. before having any notice of the dispute, the [Respondent] made demonstrable preparations to use the Domain Name (or a name corresponding to the domain name) in connection with a bona fide offering of goods or services;
b. the [Respondent] as an individual, business or other organization is commonly known by the Domain Name;
c. the [Respondent] is making a legitimate noncommercial use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish or otherwise damage the relevant trademark, trade name, personal name, name of a Dutch public legal entity or name of an association or foundation located in the Netherlands.
The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
As to the factor a above, as contended by the Complainant and not disputed by the Respondent, the Respondent’s website under the Domain Name offers products that are currently forbidden in the EU under EU Regulation 1223/2009, without permission from the Complainant. Based on the uncontested Complaint, it appears to the Panel that the Respondent has not registered and is not using the Domain Name in connection to a bona fide offering of goods or services. See, RapidShare AG and Christian Schmid v. Moniker Privacy Services/ Registrant [2797146]: Scott Myers, Famous Creative, WIPO Case No. D2010-0888 (“the illegal use of another’s trademark cannot be considered a ‘bona fide’ or fair use”); and Nycomed Danmark ApS v. Antonio Diaz,WIPO Case No. D2006-0779 (concluding that the respondent’s use of a disputed domain name to operate a website promoting an illegal food supplement was not a bona fide offering of goods or services under Policy, paragraph 4(c)(i) or a legitimate noncommercial or fair use under Policy, paragraph 4(c)(iii)).1
There is furthermore no indication in the record of the Respondent meeting any of the above mentioned circumstances or any other basis for a right or legitimate interest in the Domain Name.
The Complainant has thus established the second element of article 2.1 of the Regulations. C. Registered or Used in Bad Faith
The Panel refers to its considerations under Section 6.B.
Additionally, it is established by many priorpanel decisions that offering goods of questionable legality on a website accessed through the disputed domain name constitutes evidence of bad faith registration (see, e.g., Verio Inc. v. Sunshinehh,WIPO Case No. D2003-0255). Evidence of the Respondent’s bad faith is found in the posted photographs of these particular teeth whitening products, not approved for sale in the EU, on the Respondent’s website. Consumers are potentially misled into believing that they can legitimately purchase the Complainant’s products in the EU when in fact they cannot (see Roche Products Inc. v. Peter Tonderby/Tonderby Designs Ltd,WIPO Case No. D2006-0698). The Respondent has even noted in its communications that is has (previously) ceased selling any Crest products of the Complainant, making the online offer particularly misleading.
The Respondent should have been aware of this, especially, as article 8 of the General Terms and Conditions for .nl Registrants states: “The registrant of a .nl domain name is responsible for ensuring that neither the name nor its use is inconsistent with public order or decency, and that neither the registration nor the use of the .nl domain name infringes another party’s rights, or is unlawful or illegal in any other way” [emphasis added].
In light of these considerations and the lack of a Response, the Panel finds that the Domain Name has been registered and used in bad faith. Therefore, the Panel finds that the Complainant has also established the third and last element of article 2.1 of the Regulations. 7. Decision
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name, , be transferred to the Complainant.
Willem Hoorneman
Panelist
Date: September 19, 2016
1 While the Complaint is brought under the Regulations, and not the Uniform Domain Name Dispute Resolution Policy (“UDRP” or the “Policy”), given the similarities between the two, where applicable the Panel considers UDRP precedent relevant to the current proceeding, and will refer to it where appropriate.
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