The Complainant is Zalando GmbH of Berlin, Germany, represented by Kühl Rechtsanwaltsgesellschaft mbH, Germany.
The Respondents are Sarenza Zalando of Ivry sur Seine, Val-de-Marne, France and Group Ponda of Manche, Agneaux, France (hereinafter referred to as the “Respondent”). 2. The Domain Names and Registrars
The disputed domain name is registered with Instra Corporation Pty Ltd. and the disputed domain name is registered with eNom. Both disputed domain names are hereinafter referred to as the "Disputed Domain Names". 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2012. On November 5, 2012, the Center transmitted by email to Instra Corporation Pty Ltd. and eNom (the “Registrars”) a request for registrar verification in connection with the Disputed Domain Names. On the same day, the Registrars transmitted by email respectively to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 12, 2012. On the same day, the Complainant also requested to amend the Remedy required in this case.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 13, 2012. In the email of Notification of Complaint, the Center indicated that it had noted the Complainant’s contentions in the Complaint regarding the two listed registrants of record for each of the Disputed Domain Names, along with contentions regarding “common management and control” of the Disputed Domain Names. The Center further indicated that any determination regarding the proper identity of the Respondent(s) and the consolidation issue in this case would be at the sole discretion of the Panel. In accordance with the Rules, paragraph 5(a), the due date for Response was December 3, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2012.
The Center appointed Andrea Mondini as the sole panelist in this matter on December 10, 2012. 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.
On December 24, 2012, the Panel has requested to extend the decision due date to January 8, 2013. 4. Factual Background
The Complainant is Zalando GmbH, a company incorporated under German law. The Complainant offers footwear and apparel on the Internet under - inter alia - "". The Complainant has registered the trademark ZALANDO in several jurisdictions for a variety of goods and services including the retailing of shoes and apparel via the Internet. Examples of trademark registrations are:
a. International registration IR No. 1073 670 for ZALANDO, registered February 24, 2010;
b. International registration IR No. 1075 131 for ZALANDO (figurative), registered December 1, 2010;
c. Community trademark registration (European Union) CTM No. 9483694 for ZALANDO (figurative), registered April 19, 2011;
d. Community trademark registration (European Union) CTM No. 9376609 for ZALANDO, registered February 28, 2011;
e. International registration IR No. 1037 150 for ZALANDO, registered April 8, 2010;
f. Community trademark registration (European Union) CTM No. 8686008 for ZALANDO, registered December 10, 2010.
The Disputed Domain Name was registered on October 2, 2011 by Sarenza Zalando and the Disputed Domain Name was registered on August 17, 2012 by Group Ponda.
As the Respondent did not file a response, no further information is known about the Respondent. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Disputed Domain Names consist of a combination of its trademark ZALANDO and of the trademark SARENZA which belongs to another French online retailer of shoes and accessories and is thus a direct competitor of the Complainant.
The Complainant contents that the Respondent engages in a pattern of registering domain names which are similar to the Disputed Domain Names and that the Respondent redirects its website, where it offers similar goods and services as the Complainant, to such domain names. The Complainant claims that as a consequence thereof the two registrants of the Disputed Domain Names, i.e. Sarenza Zalando and Group Ponda are in fact one and the same person.
Furthermore, the Complainant argues that the Disputed Domain Names are confusingly similar to its trademarks. The Disputed Domain Names incorporate the full of the ZALANDO trademark owned by the Complainant. The Complainant asserts that the addition of "serenza", which is also registered as a community trademark in the European Union (community mark registration No. 004933867), does not dispel the confusing similarity. The Complainant refers in this respect to decisions by UDRP panels finding confusing similarity in cases where the disputed domain name is a combination of trademarks (Vivendi S.A., The Seagram Company Ltd., Joseph E. Seagram & Sons, Inc., Universal Studios, Inc., and Universal City Studios, Inc. v. Yu Fu Zhao (aka Tyou Star) ("Zhao"), WIPO Case No. D2000-0717; Bayerische Motoren Werke AG and Williams Grand Prix Engineering Limited v. Neil Malkhandi, WIPO Case No.D2000-1172; Chevron Corporation v. Young Wook Kim, WIPO Case No. D2001-1142). With respect to the Disputed Domain Name , the Complainant argues that the addition of a hyphen cannot be regarded as a distinguishing feature as noted in Société Air France v. The World of travel, Guinness UDV North America, WIPO Case No. D2002-0485 since such addition in the middle of the word does not alter the visual and phonetic similarity between the Disputed Domain Name and the trademarks SARENZA and ZALANDO.
The Complainant states that the Respondent has no rights or legitimate interests in the Disputed Domain Names since the Respondent has neither been commonly known by the Disputed Domain Names nor makes the Respondent a legitimate noncommercial or fair use of the Disputed Domain Names. Furthermore, according to the Complainant, the Respondent is not making a bona fide offering of goods or services since the Disputed Domain Name resolved to websites such as ‘’’’, ‘’’’, ‘’’’ and ‘’’’, under which most likely counterfeit products are allegedly offered. The Complainant draws this conclusion by pointing out that under the websites where resolved and currently resolves, products of commonly known brands such as Chanel, Burberry or Louis Vuitton are sold at a fraction of the original retail price. Furthermore, on these websites there is no information about the owner of the website, about the shipping, delivering, payments or returns conditions. In the view of the Complainant, this also corroborates the argument that the Respondent does not make a bona fide offering of goods or services.
The Complainant argues further, that the Disputed Domain Names were registered and are used in bad faith. According to the Complainant, the Respondent knew or should have known about the Complainant's trademark rights in ZALANDO since ZALANDO is broadly advertised and the Complainant registered such trademark long before the Respondent registered the Disputed Domain Names. The Complainant shows furthermore, that the Respondent engages in systematic domain name registration (domain grabbing) since all the following domain names incorporating the trademark ZALANDO are or have been registered by the Respondent: , , , , and . With respect to the domain names and the Complainant points out that the French domain name dispute panel AFNIC has ordered on October 1, 2012, that these two domain names be cancelled. Moreover, the Complainant shows that the Respondent has provided false names and false fax numbers when it registered the Disputed Domain Names, which supports the evidence of a registration in bad faith.
The Complainant argues further, that the supposedly offering of counterfeited fashion products under the Disputed Domain Name and the use of two known trademarks SARENZA and ZALANDO to offer goods in competition to these trademarks is evidence of use in bad faith. As to the Disputed Domain Name the Complainant states that it resolves to the parking website ‘’’’. The Complainant argues that the circumstances of the grabbing of domain names that are similar to the Complainant's trademark ZALANDO is indicative of a future use in bad faith of the currently parked Disputed Domain Name .
The Complainant requested that the Disputed Domain Names be cancelled. However, with email dated November 12, 2012 the Complainant filed an amendment requesting that the Disputed Domain Names be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Respondent's Identity
The Complainant has provided sufficient evidence that the Disputed Domain Names are subject of “common management and control”. Accordingly, the Panel accepts a sole Complaint dealing with both of the Disputed Domain Names as requested by the Complainant. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to a trademark in which the Complainant has rights.
The Complainant owns rights in the trademark ZALANDO in the European Union and further jurisdictions and provided evidence of its ownership thereof.
Both of the Disputed Domain Names incorporate the ZALANDO trademark. The Panel finds that the addition of another trademark such as SARENZA or a minor change such as a hyphen does not avoid the confusing similarity of the Disputed Domain Names with the trademark ZALANDO. The Panel, thus, finds that the Complainant established that both of the Disputed Domain Names are confusingly similar to the trademark ZALANDO. C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the potentially impossible task of proving a negative proposition under paragraph 4(a)(ii). Such a proof requires information that is primarily within the knowledge of the Respondent. Therefore, the common view is that paragraphs 4(a)(ii) and 4(c) of the Policy shifts the burden of production to the Respondent to come forward with evidence of a right or legitimate interest in the Disputed Domain Names. However, the Complainant has to make a prima facie showing indicating the absence of such rights or interests. See, e.g. Document Technologies Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
The Complainant made a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Names. In particular, the Complainant shows that Respondent has neither been commonly known by the Disputed Domain Names nor made legitimate noncommercial or fair use of the Disputed Domain Names. The Complainant establishes furthermore, that the Respondent is not using the Disputed Domain Names in connection with a bona fide offering of goods or services.
The Respondent had the opportunity to demonstrate that it has rights or legitimate interests in the Disputed Domain Names, but it failed to do so. Consequently, the Panel finds that the Respondent has no rights or legitimate interests to use the Disputed Domain Names. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith. Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith.
Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith, including (i) where a domain name is "used to deliberately attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location"; or (ii) where a domain name is registered "primarily for the purpose of disrupting the business of a competitor".
In the case at hand, the Complainant has established that the Respondent's registration and use of the Disputed Domain Names is in bad faith. By using the Disputed Domain Names that create a likelihood of confusion with the Complainant's trademark ZALANDO as to the source, sponsorship or endorsement the Respondent attracts Internet users to its website. With respect to the Disputed Domain Name such act is for commercial gain since it resolves to a commercial website on which similar goods as those of the Complainant are offered for purchase.
Regarding the Disputed Domain Name , which currently resolves to a parking website, the Complainant argues that it forms part of a systematic domain name grabbing and will most likely be used to resolve on the very same website as the other Disputed Domain Name, since this was previously the case with the domain names and . It is questionable whether or not a mere likelihood of a future misuse of a domain name forms evidence of a current use in bad faith. However, the question does not need be answered in this case in light of the Respondent’s past behaviour. However, the Panel finds that the use of the Disputed Domain Name has no other purpose as diverting Internet users away from the Complainant's own website and therefore disrupts the Complainant's business.
Accordingly, the Panel finds that both of the Disputed Domain Names were registered and are being used in bad faith. E. Requested Remedy
The amended requested remedy is that the Disputed Domain Names be transferred to the Complainant. Since the Disputed Domain Names also incorporate the registered trademark SARENZA which is owned by a third party, the Panel holds that it is preferable to cancel the Disputed Domain Names. 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 Names, and , be cancelled.
Andrea Mondini
Sole Panelist
Date: January 8, 2013
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