WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The Gillette Company v. Amaltea Impex S.R.L. Case No. DRO2009-0003 1. The Parties
The Complainant is The Gillette Company of Massachusetts, United States of America, represented by Ratza & Ratza, Romania.
The Respondent is Amaltea Impex S.R.L. of Bucharest, Romania. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with RNC.ro. 3. Procedural History
The Complaint (in English) was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2009. On March 12, 2009, the Center transmitted by email to RNC.ro a request for registrar verification in connection with the Domain Name. On May 16, 2009, RNC.ro transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and stating that the language of registration agreement was Romanian. 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”).
On March 19, 2009 the Center forwarded a notice to the Complainant stating that the Complainant should either (a) provide evidence of an agreement between the parties that the proceedings should be in English; (b) translate the Complaint into Romanian; or (c) submit a request for English to be the language of the proceedings. On March 23, 2009 the Complainant requested the language of proceedings to be English. In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 22, 2009.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on May 1, 2009. 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. Language of the proceedings
As previously stated, on March 23, 2009 the Complainant submitted a letter to the Center requesting that the language of the proceedings be English rather than Romanian.
The Panel notes that paragraph 11(a) of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Although the Registrar informed the Center that the language of the relevant registration agreement was Romanian, the Panel considers that for the purposes of equity and efficiency the language of the present proceedings should be English, based on the present record and taking into consideration the lack of objection from the Respondent, in the circumstances, the Panel determines under paragraph 11(a) of the Rules that the language of these proceedings be English. 4. Factual Background
The Complainant was founded in 1901 as a safety razor manufacturer (presumably in the United States of America, though not stated in the Complaint) and today is a leading global supplier of various products under various trade marks. The first Gillette safety razor was invented in 1895 and patented in 1904.
The Complainant is the exclusive owner of a substantial number of community and national trade mark registrations for the name “Gillette” including several long-standing trade marks registrations for the mark GILLETTE in Romania dating back as early as 1909. 5. Parties' Contentions
The Complainant's primary contentions can be summarised as follows: A. Complainant
(a) The Complainant has valid trade mark rights over the name “Gillette” all over the world and in particular in Romania.
(b) The Domain Name is identical to the Complainant's trade mark “Gillette”.
(c) The Domain Name has not been used by the Respondent in connection with any of its businesses or activities and in fact has never been used by the Respondent.
(d) The word “Gillette” is a patronymic and has no other meaning and therefore, in registering the Domain Name, the Respondent had no other purpose than to take advantage of the well-known characteristic of the Complainant's trade mark.
(e) The Respondent is a commercial company and as such all its activities must by definition be commercial in nature; it therefore cannot be said that the Respondent is making a legitimate non-commercial use of the Domain Name.
(f) The Complainant has never authorised the Respondent to use its trade marks or to register any domain names incorporating its trade marks.
(g) The Complainant's GILLETTE trade mark and products are so well-known that it was impossible for the Respondent not to have been aware of the existence of the GILLETTE trade mark at the time of registering the Domain Name. It is evident then that the Domain Name was registered in order to take unfair advantage of the well-known nature of the Complainant's GILLETTE trade mark.
(h) The Respondent previously registered the domain names and both of which were recovered by the respective rightful trade mark owners in proceedings before the Center, see SAirgroup v. Amaltea Impex SRL and Evergreen SRL, WIPO Case No. DRO 2001-0002 and Bayer Aktiengesellschaft v. Amaltea Impex SRL,WIPO Case No. DRO2005-0006. It can only be concluded then that the Respondent registered the Domain Name in the hope of obtaining financial compensation from the rightful trade mark owner. B. Respondent
The Respondent did not file a Response and has not provided any evidence to counter the Complainant's contentions.
It is open for the Panel to infer, from the Respondent's failure to file a Response that the Respondent does not dispute the Complainant's contentions and otherwise to make such inferences from this as the Panel may see fit. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following 3 elements:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used by the Respondent in bad faith.
Further, paragraph 14(b) of the Rules provides that where a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules, the Panel shall draw such inferences therefrom as it considers appropriate. Accordingly, the Panel may draw inferences from the Respondent's failure to submit a Response in accordance with paragraph 5(a) of the Rules as it considers appropriate. A. Identical or Confusingly Similar
The Panel notes that although claims have been made as to the Complainant's world-wide trademark registrations no list or other particulars of such registrations was provided. The Complainant however provided evidence of long-standing trade mark registrations owned by the Complainant in Romania spanning over a century in respect of the word “Gillette” as well as evidence of relevant Community trademark registrations. The Panel agrees that the Complainant has well-established rights in the GILLETTE trade mark.
It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the domain extension, in this case , should be disregarded (Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd,WIPO Case No. D2006-0762).
It goes without saying that the Domain Name is identical to the GILLETTE trade mark in which the Complainant has rights, including in Romania.
Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights in satisfaction of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
In consideration of the Complainant's contentions set out at paragraphs (c) to (f) listed above at 5A, the Panel finds that the Complainant has made out a prima facie case in respect of the Respondent's lack of rights or legitimate interests in the Domain Name.
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the subject domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In the absence of any evidence submitted by the Respondent to demonstrate that the Respondent:
(a) used, or made demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services;
(b) has been commonly known by the Domain Name; or
(c) is making a legitimate non-commercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's GILLETTE trade mark,
It is open to the Panel to infer that the Respondent does not dispute the Complainant's assertions. In view of this and the Complainant's contentions as set out above, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel disagrees with the Complainant's submission that the only conclusion that can be drawn from the registration of a domain name consisting of a well-known trade mark such as the Complainant's GILLETTE trade mark and the history of the Respondent's similar conduct in respect of other well-known trade marks is that the Respondent registered the Domain Name in the hope of obtaining financial compensation from the rightful trade mark owner.
It appears to the Panel that while this is definitely a possibility, such an intention cannot simply be assumed in the circumstances as the Complainant has not adduced any evidence as to the Respondent's offer for sale or other attempt at reaping financial benefits through registration of the Domain Name. The Panel notes that the Domain Name is not in use, and does not resolve to any page which would suggest that the Domain Name is for sale.
However, in view of the well-known status of the Complainant's GILLETTE trade mark and the uniqueness of the word “Gillette”, it is clear that the Domain Name can only refer to the Complainant. The obvious implied reference to such a well-known trade mark by a party with no connection to the trade mark has been consistently found to be an indicator of opportunistic bad faith, even where the disputed domain name is not in use, see Parfums Christian Dior v. Javier Garcia Quintas and C, WIPO Case No. D2000-0226.
The Panel also takes into account the Respondent's history in registering domain names consisting of other famous trade marks. Accordingly, the Panel finds that the Respondent registered the Domain Name with the intention of preventing the Complainant from reflecting its GILLETTE mark in a corresponding domain name.
The Panel therefore finds that the Respondent has satisfied paragraph 4(a)(iii) of the Policy. 7. Decision
For all 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 Complainant.
Gabriela Kennedy
Sole Panelist
Dated: May 7, 2009
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