FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:
The Complainant is a Danish company established in 1979 that trades internationally, including in Asia, under the name "Perspirex" in the field of skin care products. The company currently focuses on two brands, the antiperspirant “Perspirex”, and the sunscreen “P20”.
The Complainant operates its main websites at www.riemann.com, www.p20.com and www.perspirex.com and owns a number of domain names consisting of the term "perspirex", including <perspirex.dk>, <perspirex.co.uk>, and <perspirex.vn>.
The Disputed domain name is <perspirexplusvn.com>. It was registered by the Respondent on 30 August 2016.
The Disputed domain name points to a website displaying text in Vietnamese and in English and pictures of products having the same shape and name of Perspirex products. Next to the picture of the products, the following text in English appears: "Perspirex - Don't Sweat it - Stay dry for up to 5 days" together with a list of advantages of the product and the mention that other Perspirex products are also available. The website includes a telephone number for ordering the product at a discounted price.
The Complainant claims it has registered the well-known trademark PERSPIREX as a word mark in classes 03 and 05 in numerous countries all over the world including Viet Nam being listed as a designation.
The Complainant observes that the above-mentioned international trademark registration of 2001 predates the registration of the Disputed domain name.
The Complainant contends it has registered more than 37 domain names under generic Top-Level Domains and country-code Top-Level Domains containing the term “PERSPIREX”, pointing to a website through which it informs potential customers about its products.
The Complainant contends that the Disputed domain name directly and entirely incorporates the Complainant’s trademark PERSPIREX.
The Complainant observes that the addition of the generic Top-Level Domains “.com” does not add any distinctiveness to the Disputed domain name.
The Complainant claims that the Disputed domain name incorporates the PERSPIREX trademark coupled with the term “plus”, which is a descriptive term for goods and services, and the term “vn”, which is the commonly known country code for Viet Nam, where the Respondent is located.
The Complainant asserts that the Disputed domain name should be considered as confusingly similar to the registered trademark PERSPIREX because it gives the impression that the Respondent is somehow affiliated with the Complainant, and that the Respondent is somehow legitimately doing business in Viet Nam using the Complainant's trademark.
The Complainant claims that it has not found that the Respondent is commonly known by the Disputed domain name.
The Complainant asserts that the Respondent has not, by virtue of the content of the website, nor by its use of the Disputed Domain Name, shown that they will be used in connection with a bona fide offering of goods or services.
The Complainant states that there is no evidence that the Respondent has a history of using, or preparing to use, the Disputed domain name in connection with a bona fide offering of goods and services.
The Complainant contends that it is clear that the Disputed domain name was registered with the intention of taking advantage of an association with the business of the Complainant.
The Complainant states that it does not have any agreement or association with the Respondent.
The Complainant observes that the layout of the Respondent’s website together with the prominent use of the PERSPIREX logo suggest that there is a connection with the Complainant.
The Complainant contends that the use of the word PERSPIREX in the Disputed domain name and also in the text of the website multiple times strongly suggests that there is some official or authorized link with the Complainant for the purposes of selling its products within Viet Nam.
The Complainant contends that it is undeniable that the Respondent was aware of the Complainant’s trademark prior to the registration of the Disputed domain name and the establishment of the Respondent’s website.
Moreover, the Complainant alleges that the Respondent has made no claims to either having any relevant prior rights of its own, or about having become commonly known by the Disputed domain name. The Complainant adds that the Respondent does not claim to have made legitimate, non-commercial use of the Disputed domain name.
The Complainant highlights that the Complainant’s trademarks predate the registration of the Disputed domain name and the Respondent has never been authorized by the Complainant to register the Disputed domain name.
The Complainant observes that, in light of the website content, it is clear that the Respondent was aware of the Complainant’s trademark at the time of registration and, therefore, the Disputed domain name was registered in bad faith.
The Complainant adds that the Respondent disregarded the Complainant's attempts to reach an amicable solution of the matter, failing to respond to its cease and desist letters.
The Complainant contends that the Respondent intentionally chose the Disputed domain name based on the registered and well-known trademark in order to generate more traffic to its own business.
The Complainant observes that the Respondent does not disclaim an association between itself and the Complainant.
The Complainant adds that the Disputed domain name is used for a website claiming to sell the Complainant’s products, consequently, the Respondent is using the Disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of its website.
The Complainant found, by a reverse Whois lookup based on the Respondent's e-mail address, that the Respondent registered some domain names including well-known brands with protected trademarks such as HYUNDAI within the domain name.
The Complainant contends that such pattern of abusive registrations does not constitute bona fide use of the Disputed domain name and that it is clear that the Respondent is capitalizing on well-known trademarks.
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