WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Gillette Company v. 郑华明 (zheng hua ming)

Case No. D2021-3303

1. The Parties

The Complainant is The Gillette Company, United States of America, represented by Studio Barbero S.p.A., Italy.

The Respondent is 郑华明 (zheng hua ming), China, self-represented.

2. The Domain Name and Registrar

The disputed domain name <gillettecn.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. On the same day, the Center sent an email communication to the Complainant providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Complainant filed an amendment to the Complaint in English.

On October 8, 2021, the Center transmitted another email in English and Chinese to the Parties regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. On October 11, 2021, the Respondent requested that Chinese be the language of the proceeding.

The Center verified that the Complaint together with the amendment to 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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on October 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2021. On November 1, 2021, the Respondent sent an email communication to the Center offering to settle the dispute in exchange for CNY 1,000. On November 5, 2021, the Complainant sent an email to the Center in which it declined to suspend the proceeding. The Response in Chinese was filed with the Center on November 12, 2021.

The Center appointed Matthew Kennedy as the sole panelist in this matter on December 1, 2021. 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.

4. Factual Background

The Complainant produces razor blades for shaving. It owns multiple trademark registrations for GILLETTE in multiple jurisdictions, including Chinese trademark registrations numbers 144138, 175327, 182063 and 5653921, registered on January 5, 1981; April 15, 1983; July 5, 1983; and August 21, 2009, respectively, specifying goods in class 8, 3, 3 and 8, respectively. Those trademark registrations remain current. According to evidence provided by the Complainant, GILLETTE was ranked the 26th most valuable global trademark in InterBrand Best Global Brands List 2017. The Complainant has also registered the domain names <gillette.com> and <gillette.com.cn> that it uses in connection with its global and Chinese websites, respectively.

The Respondent is named in the Registrar’s WhoIs database as an individual. He claims to operate a company named 杭州苏迪扬科技有限公司 (Hangzhou Sudiyang Technology Co., Ltd), which is engaged in domain name registration, website production, and software development.

The disputed domain name was registered on March 13, 2017. It formerly resolved to a wholesale store website in English offering for sale a variety of consumer products, including the Complainant’s razor blades. The website displayed the Complainant’s GILLETTE trademark on the product packaging. Prices were displayed in USD. Further to a data disclosure request, the then-registrar of the disputed domain name provided a contact email address to the Complainant on January 15, 2019. According to information provided by the Complainant, other domain names are associated with this email address, including <eyougilette.com>. The Complainant sent a cease-and-desist letter to that email address on January 17, 2019, followed by reminder emails on February 14 and February 25, 2019, and a telephone call to a Mrs. Cheng at the telephone number associated with the contact email address in the then-registrar’s WhoIs database, followed by a further email on March 19, 2019. The Respondent sent an email communication on March 19, 2019 indicating that he was not Mrs. Cheng but that she did not understand why she could not use the website at the disputed domain name. The disputed domain name ceased to resolve to the wholesale store website around that time. The Complainant contacted the Respondent again on March 21, 2019, April 9, 2019, May 6, 2019, June 11, 2019, June 12, 2019, June 19, 2019 and July 2, 2019 seeking the transfer of the disputed domain name. The disputed domain name was later moved to the current Registrar. The Complainant sent an email to the Respondent on August 18, 2021, and received replies in English on August 19, 2021 and September 18, 2021 from an email address with a username that included the trade name 苏迪扬科技 (i.e., Sudiyang Technology). The replies indicated that the sender was the owner of the disputed domain name, that the disputed domain name was for sale on the Registrar’s website for the price of CNY 22,000, and that the Complainant could buy it if the Complainant wanted it. Since at least that time, the disputed domain name has been offered for sale on the Registrar’s website for that price (equivalent to over USD 3,400). At the time of this Decision, the disputed domain name does not resolve to any active website; rather, it is passively held.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant’s GILLETTE mark.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not a licensee, authorized agent of the Complainant or in any other way authorized to use the Complainant’s GILLETTE trademark. The disputed domain name was redirected to a commercial website offering for sale, in the absence of any disclaimer of non-affiliation, products of the Complainant, its competitors and third parties at low prices. There is no evidence that the Respondent has been commonly known by the disputed domain name.

The disputed domain name was registered and is being used in bad faith. The misappropriation of a

well-known trademark such as GILLETTE as domain name in itself constitutes bad faith registration. The Respondent had actual knowledge of the Complainant’s trademarks, as clearly demonstrated by the fact that its website purported to promote GILLETTE products and offered them for sale, along with items of competitors and third parties, without providing any disclaimer as to the lack of affiliation with the Complainant. At present, the disputed domain name is offered for sale on the Registrar’s website for CNY 22,000 and the Respondent offered to sell it to the Complainant at that price in pre-Complaint correspondence.

B. Respondent

The disputed domain name was legally registered with the Registrar, which is China’s largest Internet company. It was available because nobody else had registered it. It was registered at random with no prior knowledge of any connection to any foreign company. At first, the Respondent registered and passively held the disputed domain name on behalf of a customer of his company but, after the customer gave it up in 2019, the Respondent retained it as a backup for website testing then eventually offered it for sale via the Registrar’s website. The Respondent has nearly 50 domain names belonging to different companies under his user account at the Registrar.

The Respondent did not read all of the Complainant’s cease-and-desist letters because they seemed to be a scam. They were also in English or traditional Chinese characters and difficult to read. As domain names and trademarks are two different things, the Respondent did not understand how the disputed domain name could infringe a trademark. Besides, the cease-and-desist letters used an aggressive tone.

The Respondent holds the disputed domain name, which is not infringing. If the Complainant wants the disputed domain name, that is fine with the Respondent but the Complainant has to pay for it. The situation is as if someone bought a chair in a store and used it in their home for years only to have a stranger appear at the door claiming that it looked somewhat like his own chair and demanding to take it away for free.

6. Discussion and Findings

6.1. Language of the Proceeding

Paragraph 11(a) of the Rules provides that “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”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are that requiring the Complainant to translate the Complaint and all documents into Chinese would cause delay; the Parties communicated in English prior to this proceeding, which shows that the Respondent is familiar with that language; and the website associated with the disputed domain name was also in English. The Respondent requests that the language of the proceeding be Chinese and states that his English is not good.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that in this proceeding the Complaint was filed in English and the Response was filed in Chinese. While the Parties communicated prior to the Complaint in both languages, the Respondent sent his latest communications in English, and the website to which the disputed domain name formerly resolved was in English, from which it is reasonable to infer that the Respondent understands that language. Further, the Respondent has submitted a Response that indicates that he has understood the Complaint. The Panel understands both Chinese and English. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay whereas accepting both submissions in their original languages without translation will not create unfairness to either Party.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English but the Panel will accept the Response and all evidence submitted in Chinese without translation.

6.2. Substantive Issues

Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the GILLETTE mark.

The disputed domain name wholly incorporates the GILLETTE mark as its initial element. It also includes the letters “cn”, which are an abbreviation for “China”. However, the addition of this geographical element does not avoid a finding of confusing similarity because the mark remains clearly recognizable within the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

The only other element in the disputed domain name is a generic Top-Level Domain suffix (“.com”). As a mere technical requirement of registration, this element may be disregarded in the comparison between the trademark and the disputed domain name. See WIPO Overview 3.0, section 1.11.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

As regards the first circumstance above, the disputed domain name was formerly used in connection with a wholesale store website that offered for sale a range of consumer products, including the Complainant’s razor blades. It displayed the Complainant’s GILLETTE trademark on the product packaging. The Complainant submits that the Respondent is not a licensee or authorized agent of the Complainant nor in any other way authorized to use Complainant’s GILLETTE trademark. The website sold not only the Complainant’s products but products of third parties as well. The website displayed no disclaimer that the Respondent has no relationship to the Complainant. Regardless of whether the razor blades offered for sale were genuine or not, these facts show that the Respondent’s use of the disputed domain name was not in connection with a bona fide offering of goods or services as envisaged by the first circumstance of paragraph 4(c) of the Policy. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

As regards the second circumstance above, the name of the Respondent is “郑华明 (zheng hua ming)” and he claims to operate a company named “杭州苏迪扬科技有限公司 (Hangzhou Sudiyang Technology Co., Ltd)”. Neither of these names has any connection to the disputed domain name. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.

As regards the third circumstance above, the disputed domain name formerly resolved to a wholesale store website that offered products for sale. That is not a legitimate noncommercial or fair use of the disputed domain name covered by the third circumstance of paragraph 4(c) of the Policy.

At the present time, the disputed domain name is passively held and offered for sale on the Registrar’s website. This use does not create rights or legitimate interests in connection with the disputed domain name for the purposes of the second element of paragraph 4(a) of the Policy either.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Turning to the Respondent’s arguments, he claims that he legally registered the disputed domain name with China’s largest Internet company. However, the mere registration of a domain name does not create rights or legitimate interests for the purposes of the second element of the Policy, otherwise no Complaint could ever succeed, which would be an illogical result. See, for example, Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134. The Respondent also asserts that he held the disputed domain name on behalf of a customer and when the customer gave up the disputed domain name, he retained it as a backup for website testing. He substantiates neither assertion but, in any case, as the registrant of the disputed domain name, he was responsible for such use. In any case, the Panel finds that both the former and current uses of the disputed domain name as discussed above do not confer any rights or legitimate interests on the Respondent. Accordingly, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case.

Moreover, the nature of the disputed domain name carries a risk of implied affiliation with the Complainant. See WIPO Overview 3.0, section 2.5.1.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith. The first and fourth of these are as follows:

“(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or

“(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location.”

With respect to registration, the Panel observes that the disputed domain name was registered in 2017, decades after registrations of the Complainant’s GILLETTE trademark, including in China, where the Respondent is resident. The disputed domain name wholly incorporates the GILLETTE trademark as its initial element, combined with the geographical abbreviation “cn” for China. The disputed domain name formerly resolved to a website offering for sale the Complainant’s razor blades and displaying the Complainant’s GILLETTE mark. In these circumstances, the Respondent’s claim that he chose the disputed domain name at random lacks credibility. Rather, the Panel finds that the Respondent deliberately targeted the Complainant’s trademark when he registered the disputed domain name.

With respect to use, the Panel notes that the disputed domain name is currently passively held but offered for sale on the Registrar’s website for a price of CNY 22,000. During pre-Complaint correspondence, the Respondent offered the disputed domain name to the Complainant for this price, which is presumably in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name, even taking into consideration the cost of renewal fees since 2017. Consequently, the Panel finds that the circumstances indicate that the Respondent has registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or to a competitor of the Complainant, for valuable consideration in excess of his documented out-of-pocket costs directly related to the disputed domain name within the terms of paragraph 4(b)(i) of the Policy.

Further, the Panel notes that the disputed domain name formerly resolved to a wholesale store website that offered for sale a range of consumer products, including the Complainant’s razor blades and products of third parties, and lacking any disclaimer regarding the absence of a relationship between the Respondent and the Complainant. In view of these circumstances and the findings in Section 6.2B above, the Panel finds that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website or of a product on his website, within the terms of paragraph 4(b)(iv) of the Policy.

The Respondent points out that he has held the disputed domain name for a couple of years. However, under the UDRP, there is no limitation on the period during which a Complaint may be filed. In any case, the Complainant has actively sought to obtain the transfer of the disputed domain name for over two years. The passage of time does not shield the Respondent’s bad faith registration and use of the disputed domain name from scrutiny.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

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 disputed domain name <gillettecn.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: December 12, 2021