Complainant is The Procter & Gamble Company of Cincinnati, Ohio, United States of America (“United States”), represented by Bakker & Verkuijl B.V., the Netherlands.
Respondent is Ares Netwerk Administraties of Arnhem, the Netherlands. 2. The Domain Name and Registrar
The disputed domain name (hereafter: the “Domain Name”) is registered with SIDN through Internationale Domeinregistratie Nederland. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2016. On November 21, 2016, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On November 22, 2016, SIDN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 Respondent of the Complaint, and the proceedings commenced on November 24, 2016. In accordance with the Regulations, article 7.1, the due date for Response was December 14, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 15, 2016.
The Center appointed Dinant T. L. Oosterbaan as the panelist in this matter on December 21, 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
Complainant is a large United States based company engaged in the manufacture and sale of various consumer products, including health care, hygiene and dental care products.
According to the evidence submitted by Complainant, Complainant owns a number of trademark registrations for CREST, including:
- European Union trademark CREST No. 000273201, registration date February 28, 2000; and
- European Union device trademark CREST No. 00477205, registration date January 24, 2007; and
- European Union trademark CREST WHITESTRIPS PREMIUM No. 003142858, registration date August 22, 2008.
The Domain Name, , was registered by Respondent on October 15, 2015. The Domain Name resolves to a website where teeth whitening products are offered for sale. The predominant language of the website is Dutch.
In a previous dispute, The Procter & Gamble Company v. Ares Netwerk,WIPO Case No. DNL2016-0026, the panel ordered the transfer of . 5. Parties’ Contentions A. Complainant
According to Complainant the Domain Name is confusingly similar to Complainant’s trademarks CREST and CREST WHITESTRIPS PREMIUM, since it consists of the trademark CREST and the words “3D” and “whitestrips”, which last word is part of one of Complainant’s trademarks.
Complainant submits that the Domain Name is not used in a legitimate, noncommercial and honest manner. The products sold on the website to which the Domain Name resolves are teeth whitening products, which products are currently forbidden on the market of the European Union (“EU”), under EU Regulation 1223/2009 (of the European Parliament and of the Council of November 30, 2009 on cosmetics products) since the products concerned contain more than 0,1 percent hydrogen peroxide (H2O2). Complainant has ceased the sale of such products within the European Union since at least the effective date of the relevant legislation, and the unauthorized sale of the goods – imported from jurisdictions where no such legislation is in force – by others is not only an offense of applicable European legislation, it also may harm the reputation of Complainant, who still sells dental care products, namely dentifrice, under the trademark CREST within the EU. Also, Respondent is not generally known under the name “3dcrestwhitestrips”.
According to Complainant the Domain Name has been registered and is being used in bad faith. Complainant submits that the Domain Name has been registered with the sole purpose of selling unauthorized products (teeth whitening strips), the sale of which is forbidden under EU Regulation 1223/2009. It is established by many prior decisions that offering goods of questionable legality constitutes evidence of bad faith. Evidence of Respondent’s bad faith is found in the posted photographs of these particular teeth whitening products, not approved for sale in the EU, on Respondent’s website. Consumers are potentially misled into believing that they can legitimately purchase Complainant’s products in the EU when in fact they cannot. In addition, the Domain Name was registered in 2015, after said Regulation became effective. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Based on article 2.1 of the Regulations, a claim to transfer a 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 mentioned in 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.
As Respondent has not filed a Response, 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, Complainant must establish that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights.
Complainant has established that it is the owner of several European Union trademark registrations for CREST and CREST WHITESTRIPS PREMIUM.
The Domain Name, , incorporates the entirety of the CREST trademark as its distinctive element and the major part of the CREST WHITESTRIPS PREMIUM trademark. Many decisions under the Regulations have found that a domain name is confusingly similar to a complainant’s trademark where the domain name incorporates the trademark in its entirety. The addition of the common, descriptive and non-distinctive element “3d” and the omission of the word “premium” of the CREST WHITESTRIPS PREMIUM trademark are insufficient to avoid a finding of confusing similarity. The country code Top-Level Domain “.nl” may be disregarded for purposes of article 2.1(a) of the Regulations.
The Panel finds that the Domain Name is confusingly similar to Complainant’s CREST and CREST WHITESTRIPS PREMIUM trademarks. B. Rights or Legitimate Interests
In the Panel’s opinion, Complainant has made a prima facie case that Respondent lacks rights to or legitimate interests in the Domain Name. This is particularly true as Respondent is not making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of Complainant. Based on the substantial evidence provided by Complainant, it appears that Respondent sells CREST branded dental care whitening products on the website to which the Domain Name resolves. Respondent makes use of the value of the trademarks of Complainant and the likelihood of confusion with the trademarks of Complainant, which cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. Furthermore, on the basis of the record, the Panel finds that Respondent is not commonly known by the Domain Name and has not acquired trademark rights corresponding to the Domain Name.
In addition, the Panel accepts the non-contested submission by Complainant that in the European Union it is illegal to sell the products advertised and sold on the website to which the Domain Name resolves. The Panel adds that article 6.3 of EU Regulation 1223/2009 contains an express prohibition not to make non-compliant products available on the EU market; this prohibition also applies to Respondent.
The Panel finally takes into account that several prior decisions under the Regulations have confirmed that the offer for sale of teeth whitening products, in particular teeth whitening strips, forbidden in the EU under EU Regulation 1223/2009 is not considered a bona fide offering of goods or services; see:
- The Procter & Gamble Company v. T. Aboulghit,WIPO Case No. DNL2016-0001 (); and
- The Procter & Gamble Company v. Ares Netwerk,WIPO Case No. DNL2016-0026 (); and
- The Procter & Gamble Company v. Khadija Bais,WIPO Case No. DNL2016-0039 ().
Under these circumstances the Panel finds that Respondent has no rights to or legitimate interests in the Domain Name. C. Registered or Used in Bad Faith
The Panel finds that the Domain Name has been registered and is being used in bad faith. The trademarks of Complainant were registered well before the registration of the Domain Name by Respondent. Considering also the distinctiveness of Complainant’s marks, the Panel finds that Respondent knew or should have known that the Domain Name included Complainant’s trademarks, also in view of the fact that the website to which the Domain Name resolves contains a picture of a CREST dental care product which picture is identical or substantially similar to the device trademark of Complainant mentioned in Section 4.
Complainant has submitted substantial evidence that Respondent uses the Domain Name for a website selling teeth whitening products which products are prohibited from being sold in the European Union. The Panel refers to its considerations under Section 6.B. Respondent should have been aware of this prohibition, 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”.
On this basis, the Panel finds that Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademarks of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product on its website or location, which constitutes registration and use in bad faith pursuant to article 3.2(d) of the Regulations.
The Panel adds that bad faith registration and use of the Domain Name is further indicated by the fact that Ares Netwerk has been found to engage in bad faith registration and use of the same teeth whitening products of Complainant in another highly similar case decided under the Regulations, see The Procter & Gamble Company v. Ares Netwerk, supra (). 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 Complainant.
Dinant T. L. Oosterbaan
Panelist
Date: January 4, 2017
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