The Complainants are Dixons B.V. and MyCom Nederland B.V., both of Almere, the Netherlands, represented by Novagraaf Nederland B.V., the Netherlands (hereinafter together the “Complainant”).
The Respondent is Jorge Gonzalez, OR of Miami, Florida, United States of America / Panama City, Panama. 2. The Domain Names and Registrar
The disputed domain names , , , , , and are registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2015. On April 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same day, 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. The Complainant filed an amended Complaint on April 16, 2015 requesting the addition of further disputed domain names. On April 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the additional disputed domain names. On the same day, 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.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 22, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 12, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 13, 2015.
The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on May 26, 2015. 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 is Dixons B.V. and MyCom Nederland B.V., companies from the Netherlands, belonging to the BAS group and connected to each other via the organizational structure to which their companies belong.
Dixons B.V. and MyCom Nederland B.V. are both retailers and distributors of electronic consumer goods in telecommunication, audio equipment, photographic and cinematographic equipment, computers and peripheral computer equipment, including for instance scanners and printers, and parts and accessories of the aforementioned goods.
Dixons B.V. is the registered owner of a number of trademarks in various classes embodying the word "dixons" and granted in Belgium, the Netherlands, and Luxembourg. Dixons B.V. has a long history of providing consumer electronics in the Benelux region both online and offline under its DIXONS brand. Dixons B.V. has over 100 physical stores in the Netherlands and has also registered and is using the trademark DIXONS under the domain name .
MyCom Nederland B.V. is the registered owner of a number of trademarks in various classes embodying the word "mycom" and granted notably in Belgium, the Netherlands, and Luxembourg. MyCom Nederland B.V. has a long history of providing consumer electronics in the Benelux region both online and offline under its "mycom" brand. MyCom Nederland B.V. has over 42 physical stores in the Netherlands and has also registered and is using the trademark MYCOM under the domain names and , respectively for the Netherlands and Belgium.
The disputed domain names are the following:
, registered on February 18, 2015;
, registered on February 18, 2015;
, registered on February 27, 2015;
, registered on April 4, 2015;
, registered on April 6, 2015;
, registered on April 12, 2015;
, registered on April 13, 2015. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(a) The disputed domain names are confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant contends that the disputed domain names comprise either the term “dixons” or the term “mycom” which are both identical to the marks DIXONS and MYCOM (the “Trademarks”) of which the Complainant is and has been for many years the right holder in several countries.
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainant argues that the Respondent has no trademark rights or trade names corresponding to the disputed domain names and that it is not using “dixons” and “mycom” in any way that would give it any legitimate rights.
The Complainant further argues that the use of the Respondent shows that it has no legitimate interests in respect to the disputed domain names, since all domain names link to websites that falsely create the impression to belong to the Complainant.
c) The disputed domain names were registered and are being used in bad faith.
The Complainant submits that the disputed domain names were registered and used in bad faith by the Respondent.
The Complainant argues that the websites at the disputed domain names show fraudulous imitations of the Complainants websites, notably with a similar look and feel and copying the information from the Complainant's websites. The Complainant contends that the Respondent attempts to intentionally mislead the general public to believe that the various disputed domain names are in fact those of the Complainants. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the proceeding
In accordance with the Rules, paragraph 11(a), “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 Complainant requested in the Complaint for English to be the language of the proceeding. In support of its request, the Complainant evidences that (i) the Registration Agreement is in English, (ii) the Respondent email address is under the generic extension “.com” and the related website is fully in English, (iii) at least one of the Respondent's addresses is in the United States of America, and (iv) the one-time conversation with the Respondent's online chat functionality has been in English.
In the present dispute, this Panel finds that there is sufficient evidence to enable the Panel to conclude that the Respondent has the proficiency in the English language to understand the contents of the Complaint and the annexes.
In light of the foregoing, this Panel concludes that it will accept the Complaint as filed in English and issue a decision in English. B. Substantive Elements of the Policy
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Notwithstanding a respondent’s default, the complainant must nevertheless still establish each of the three elements required by paragraph 4(a) of the Policy (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1 and paragraph 4.6, and the relevant decisions cited therein). Nonetheless, the Panel shall decide this administrative proceeding on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and, in the absence of exceptional circumstances, draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
As a result, asserted facts that are not unreasonable will be taken as true by this Panel.
Finally, in accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, this Panel will examine whether each of the following three elements are present:
(i) the disputed domain names registered by the Respondent are 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Consequently, this Panel shall further analyse the eventual concurrence of these three grounds in the present case. C. Identical or Confusingly Similar
The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain names are identical or confusingly similar to its trademark(s).
First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights, well before the disputed domain names were registered, to both DIXONS and MYCOM.
Also, the Complainant has sufficiently demonstrated and evidenced that it has a lengthy use of its Trademarks for its commercial activities, and in particular as retailer and distributor of electronic consumer goods in telecommunication, audio equipment, photographic and cinematographic equipment, computers and peripheral computer equipment, including for instance scanners and printers, and parts and accessories of the aforementioned goods.
Secondly, the disputed domain names fully incorporate the Complainant’s distinctive DIXONS or MYCOM trademarks in which the Complainant has exclusive rights. This Panel finds, similarly to other UDRP panels, that it is established that where the domain name incorporates a complainant’s registered trademark, as the dominant element, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy (Nokia Corporation v. Jameela Seif,WIPO Case No. D2009-1665).
Thirdly, this Panel finds on the basis of previous UDRP decisions that the mere addition of generic terms is, in general, insufficient to make a disputed domain name distinctive such that it is not confusingly similar to the complainant’s registered trademark. (See Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488; Moncler S.r.l. v. xie guoren, WIPO Case No. D2010-2161; Allianz SE v. Antonio Porchia, WIPO Case No. D2010-0694; Sanofi-Aventis, Aventis Inc., Aventisub II Inc. v. Yur Bar, WIPO Case No. D2010-0663). Consequently, this Panel finds that the mere addition of the descriptive or generic terms “sale”, “discounter”, “dagdeals” (for “deal of the day” in Dutch), “store”, “today”, “korting” (for “discount” in Dutch), or “aanbieding” (for “offer” in Dutch) does not distinguish the disputed domain names from the Trademarks, nor dispel the risk of confusing similarity.
Fourthly, this Panel finds, similarly to other UDRP panels, that the addition of the generic Top-Level Domain (gTLD) “.com” to the disputed domain names does not constitute an element so as to avoid confusing similarity for purposes of the Policy.
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain names are confusingly similar to the Complainant’s DIXONS or MYCOM trademarks. D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain names for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:
“When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
This Panel finds in light of the Complainant’s asserted facts, that the Respondent has no trademark rights in the terms DIXONS and MYCOM in connection with electronic consumer goods in telecommunication, audio equipment, photographic and cinematographic equipment, computers and peripheral computer equipment, including for instance scanners and printers, and parts and accessories of the aforementioned goods. Furthermore, no license, permission or authorization of any kind to use the Trademarks has been granted to the Respondent by the Complainant. Thus, the Respondent has no own rights in DIXONS and MYCOM.
Examination of the website operating under the disputed domain names, as sufficiently evidenced by the Complainant, shows no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods and services.
Moreover, this Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the disputed domain names.
This Panel further finds that no evidence has been presented that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names. In fact, this Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration of the disputed domain names, and finds after reviewing the websites as evidenced by the Complainant that the Respondent had or should have had full knowledge of the Trademarks and that its only intention was to deprive the Complainant from strategic domain names, mislead Internet users to one or more other commercial site and thus generate traffic and income by free riding on the good reputation of the Complainant and its Trademarks.
For all the foregoing reasons, this Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain names. E. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of “registration and use of a domain name in bad faith”.
First of all, this Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration of the disputed domain names. In this respect, this Panel believes, after reviewing the website as evidenced by the Complainant, that the Respondent must have known and been aware of the rights on the prior DIXONS and MYCOM trademarks and the associated products and services at the time of the registration of the disputed domain names.
Such conclusion is further evidenced by the fact that the Respondent uses the similar look and feel as the Complainant's websites (i.e., placing of the trademarks, size and place of the banners and the colors of the background and the buttons) and copies the (i.e., contact) information from the Complainant's websites.
Furthermore, this Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s use of the disputed domain names.
In this respect, this Panel believes after reviewing the site at the disputed domain names and its content as evidenced by the Complainant that the Respondent registered and uses the disputed domain names to sell products and services similar to those of the Complainant and thus to attract, for commercial gain, Internet users to the sites, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of its sites.
Consequently, this Panel finds that the Respondent intentionally registered and used the disputed domain names for commercial gain and that the Respondent’s actual use of the disputed domain names appears to mislead consumers and confuse them by making them believe that the websites are associated, fostered or recommended by the Complainant. Such misleading behaviour is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent. 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, , , , , , , be transferred to the Complainant.
Benoit Van Asbroeck
Sole Panelist
Date: June 9, 2015
Full & Egal Universal Law Academy