The Complainant is Edgewell Personal Care Brands, LLC of Shelton, Connecticut, United States of America, represented by Thompson Coburn LLP, United States of America (“USA”).
The Respondent is Huang ChaoQiong of ShenZhen, Guangdong, China.
The disputed domain name <personna.xyz> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2016. On July 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 28, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On July 28, 2016, the Center transmitted by email to the Parties the Complaint Deficiency Notification. The Complainant submitted by email the amended Complaint on July 28, 2016. The Center received two emails from the Respondent on July 28, 2016 and August 1, 2016 requesting the Chinese translation of the Complaint Deficiency Notification and further email communication.
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 August 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2016. The Respondent did not submit any substantive response. Accordingly, the Center sent the Notice of Commencement of Panel Appointment Process on August 26, 2016.
The Center appointed Karen Fong as the sole panelist in this matter on September 2, 2016. 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.
The Complainant is an industry leader in providing personal care products, including razors, razor blades and other personal grooming items in numerous countries throughout the world. The products are sold under the trade mark PERSONNA. The earliest trade mark for PERSONNA submitted in evidence was registered in the USA on February 3, 1948 by the Complainant’s predecessors in title. The Complainant has various registrations for PERSONNA and PERSONNA and design in the USA registered prior to the registration of the Domain Name. The Complainant and its predecessors in title have used the PERSONNA trade mark extensively for a long period of time. The Complainant operates the website “www.personna.com” which also sells PERSONNA products online.
The Respondent registered the Domain Name on June 30, 2016. The Domain Name is connected to a pay-per-click website (the “Website”) which displays links to other websites operated by the Complainant’s competitors. The names of the “Related Links” appearing on the Website include different shaving related products of the type sold under the PERSONNA trade mark. These links connect to the Complainant’s competitors. The Domain Name is also being offered for sale on the Website and may be enrolled on Sedo’s “domain parking” programme.
The Complainant contends that the Domain Name is identical to the trade mark PERSONNA, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent sent two emails requesting Chinese translation of the Complaint Deficiency Notification and further email communication, but did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(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 was registered and being used in bad faith.
The Respondent sent emails to the Center on July 28, 2016 and August 1, 2016 in Chinese stating that it did not understand English and requested a Chinese translation of the Complaint Deficiency Notification and other email communication from the Center. The language of the registration agreement is English, hence the language of the proceeding is also English. There is no obligation for the Center to provide any translations to the Respondent. Nevertheless the Center did on August 1, 2006, respond in both English and Chinese outlining the next steps in the proceeding, confirming that English is the language of the proceeding and that all future communications would be in English.
The Panel is satisfied that the Complainant has established that it has registered rights to the PERSONNA trade mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the disputed domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the disputed domain name. In this case the Domain Name solely comprises the Complainant’s trade mark PERSONNA in its entirety which is identical to the trade mark. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”).
The Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or 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; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of production always remaining on the complainant.
The Respondent is not a licensee of the Complainant. It is not affiliated with, connected to or sponsored by the Complainant. It is not commonly known by the Domain Name. It has no independent right to the Domain Name. In view of the long use of the PERSONNA trade mark, it would be impossible for the Respondent to develop a legitimate activity in connection with the Domain Name without authorisation. The Respondent has also not shown that it is making legitimate noncommercial or fair use of the Domain Name as this is a pay-per-click website.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded to the Complainant’s allegations and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The PERSONNA mark is a registered trade mark and has been used for a substantial length of time. A simple Google search would have revealed information associating the Complainant to the trade mark. The content of the Website which has pay-per-click links to shaving products, one of the primary products upon which the mark PERSONNA is used indicates that it would be inconceivable that the Respondent had no knowledge and actual notice of the PERSONNA trade mark when the Domain Name was registered. The Panel concludes that the registration was made in bad faith.
The Panel also concludes that the actual use of the Domain Name is in bad faith. The use of the Complainant’s trade mark as the Domain Name in relation to a pay-per-click website specifically aimed at products provided by the Complainant under the PERSONNA mark is intended to capture Internet traffic from users who are looking for the Complainant’s products. The Domain Name and the content of the Website is calculated to confuse Internet users into believing that the Respondent is part of the Complainant, an authorized agent or somehow connected to the Complainant when this is not the case. This shows a clear intention on the part of the Respondent to attract for commercial gain by confusing and misleading Internet users into believing that the Respondent’s website and the products on display are authorized or endorsed by the Complainant.
Moreover, the Panel notes that the Domain Name is being offered for sale, which may be further suggestive of the Respondent’s bad faith.
The above is clearly bad faith under paragraph 4(b)(iv) of the Policy and the Panel concludes that the Respondent’s registration and use of the Domain Name are in bad faith. Accordingly, the Complainant has satisfied the third element of the UDRP.
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 <personna.xyz> be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: September 20, 2016