The Complainants are Ahold Licensing Sarl of Geneva, Switzerland and Delhaize Group of Brussels, Belgium (collectively the "Complainants"), represented by NLO Shieldmark B. V., the Netherlands.
The Respondent is ahold / a hold of Anyang, Republic of Korea. 2. The Domain Names and Registrar
The disputed domain names and (collectively the "disputed domain names") are registered with Korea Server Hosting Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 11, 2016. On February 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 16, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amendment to the Complaint on February 23, 2016.
On February 16, 2016, the Center notified the Parties in both English and Korean that the language of the Registration Agreement for the disputed domain names was Korean. On February 18, 2016, the Complainants requested for English to be the language of the proceeding while submitting the Korean translated Complaint on February 25, 2016. On February 17, 2016, the Respondent requested for Korean to 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 of the Complaint, in both English and Korean, and the proceeding commenced on February 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 20, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Parties about the commencement of panel appointment process on March 21, 2016.
The Center appointed Andrew J. Park as the sole panelist in this matter on April 4, 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. 4. Factual Background
The Complainant Ahold Licensing Sarl is part of the Ahold Group, a well-known international retailer based in Zaandam, the Netherlands. Ahold Licensing Sarl was founded in 1887. It is a supermarket chain, liquor stores, and health and beauty stores located in Spain, the United States of America, Latin America, Central Europe, and Asia. The Complainant Ahold Licensing Sarl is the registrant of several different trademark registrations, including, among others, the AHOLD marks registered under International Registration No. 701309 and Community Trade Mark No. 2024628.
The Complainant Delhaize Group is a well-known international food retailer headquartered in Belgium, and operating in seven countries in Europe, Asia, and North America. The principal activity of the Complainant Delhaize Group is the operation of food supermarkets. The Complainant Delhaize Group is the registrant of several different trademark registrations, including, among others, the DELHAIZE marks registered under Community Trade Mark Nos. 002764355 and 008892291 and International Registration No. 1090860.
The Respondent has not responded to the Complaint.
The disputed domain names were registered on May 11-12, 2015. 5. Parties' Contentions A. Complainants
The Complainants contend that the disputed domain names should be transferred to the Complainants because:
1) the disputed domain names are identical or confusingly similar to the respective Complainants' registered trademarks AHOLD and DELHAIZE. Specifically, the Complainants contend that they have respectively acquired statutory trademark rights in the name AHOLD and DELHAIZE based on European and International trademark registrations;
2) the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainants have no relationship with the Respondent and have never authorized the Respondent to use the AHOLD or DELHAIZE marks. Further, the Complainants are not aware of the Respondent being known under the disputed domain names.
3) the disputed domain names were registered and are being used in bad faith. Specifically, the Complainants contend that the AHOLD and DELHAIZE brand and trademarks are well-known and that on May 9, 2015, without direct knowledge of the Complainants, the Belgian Newspaper "De Tijd" published speculation that the Complainants were in discussions about a possible merger. Two days later, on May 11, 2015, the same newspaper published that the stocks of both companies, probably due to the possible merger, had increased in value by more than one billion dollars. Finally, the Complainants contend that the Respondent is a well-known cyber squatter and has engaged in a pattern of registering the trademarks of third parties in order to prevent them from registering corresponding domain names. B. Respondent
The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the disputed domain names to the Complainant Ahold Licensing Sarl. Those requirements are that: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have 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.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of the Rules. In accordance with paragraphs 5(f) and 14(b) of the Rules, if the Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Language of the Proceeding
The Registration Agreement for the disputed domain names is in Korean. Pursuant to paragraph 11 of the Rules, 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, i.e., Korean. Here, the Center made a preliminary determination to accept the Complaint filed in English and thereafter translated into Korean while noting that it would accept a Response filed in either Korean or English, subject to a determination by the Panel pursuant to paragraph 11 of the Rules.
Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraph 10 of the Rules. In coming to this decision, the Panel has taken the following into account:
1) The Complaint was notified to the Respondent in both English and Korean. The Respondent has not objected to the Complainant's request for English to be the language of proceeding and failed to submit any response to the Complaint;
2) The Complainants have submitted evidence of prior communication between the Parties in English.
In light of these circumstances, the Panel concludes that it will issue a decision in English. B. Consolidation of Complainants
A complaint may be brought by multiple complainants if (i) the complainants have a specific common grievance against the respondent or the respondent has engaged in common conduct that has affected the complainants' individual rights in a similar fashion; and (ii) it would equitable and procedurally efficient. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.16.
In the present case, the Panel finds that both Complainants have a common grievance against the Respondent as the disputed domain names comprise the trademarks of each of the Complainants. The Panel further finds that it would be equitable and procedurally efficient to proceed under the single Complaint as the Respondent's registration of the disputed domain name affects the Complainants' individual rights similarly.
Accordingly, the Panel accepts the consolidated Complaint, noting the Complainants' request that the remedy be awarded to the Complainant Ahold Licensing Sarl. C. Identical or Confusingly Similar
This element consists of two parts: first, do the Complainants have rights in a relevant trademark and, second, are the disputed domain names identical or confusingly similar to that trademark.
The Panel finds that the Complainants have established statutory rights in the marks AHOLD and DELHAIZE pursuant to various European and International registrations.
The disputed domain names are confusingly similar to the Complainants' respective trademarks AHOLD and DELHAIZE. The disputed domain name encompasses the Complainants' trademarks in their entirety. Similarly, the disputed domain name encompasses the Complainant Ahold Licensing Sarl's AHOLD trademark and the Complainant Delhaize Group's DELHAIZE trademark together with its company name.
The addition of a Top-Level Domain such as ".com" after a domain name is technically required. Thus, it is well established that such element may be typically disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182).
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain names are confusingly similar to the Complainants' respective trademarks. D. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Complainants are required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. Once such a prima facie case is made, the Respondent carries the burden of demonstrating his rights or legitimate interests in the disputed domain names. If the Respondent fails to do so, the Complainants may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the domain names in dispute. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see, e.g., Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009; Isabelle Adjani v. Second Orbit Communications, Inc.,WIPO Case No. D2000-0867). The Complainant should nevertheless make out a prima facie case that the Respondent lacks rights or legitimate interests (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
Here, the Panel finds that the Complainants have made out an unrebutted prima facie case.
The Complainants have asserted that the Respondent has no relationship with or authorization from the Complainants to use their respective marks. There is nothing in the record to suggest that the Respondent has been commonly known by the disputed domain names. The Panel's view is that these facts may be taken as true in the circumstances of this case provided that they have not been denied by the Respondent.
The evidence, which is not denied by the Respondent, shows that the Respondent knew of and has sought to take unfair advantage of the similarity between the disputed domain names and the Complainants' respective trademarks, which is not descriptive or generic, in order to attract Internet users by creating likelihood of confusion with the Complainants' actual web sites. Specifically, the record shows that the Respondent intended to use the disputed domain names for the purpose of launching a criticism web site against the merger of Complainants.
The Panel agrees with the Complainants that there is no evidence whatsoever that the Respondent is currently using or commonly known by, has used or been commonly known under, or has a bona fide intent to use or be commonly known under the name "Ahold Delhaize" or "Ahold Delhaze Group".
Further, the Panel agrees with the Complainants that while the right to own a web site designed to criticize may exist, there is no right to use another's trademark in a domain name in such a way as to create a likelihood of confusion among Internet users.
Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain names pursuant to paragraph 4(a)(ii) of the Policy. E. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence 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 the 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 website 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 website or location or of a product or service on your website or location."
As already mentioned, the Respondent did not file any response to the Complaint, failing thereby to rebut the Complainants' claims of the Respondent's bad faith registration and use of the disputed domain names.
Nevertheless, the Panel still has the responsibility of determining which of the Complainants' assertions are established as facts, and whether the conclusions asserted by the Complainants can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University,WIPO Case No. D2000-0944).
The Panel reasonably finds that the Complainants' respective marks are widely-known, arbitrary, and note that it was reported in the media – just days prior to the Respondent's registration date of the disputed domain names – that the Complainants may merge. For these reasons, it is very unlikely that the Respondent, at the time of registration of the disputed domain names, was not aware of the Complainants' respective trademarks.
Bad faith can be inferred based on the fame of the Complainants' marks, such that the Respondent was aware or should have been aware of the Complainants' marks and claims of rights thereto. The Panel finds it highly doubtful that the Respondent would have registered the disputed domain names without having knowledge of the Complainants. The registration of a domain name that is similar to a distinctive trademark by the respondent, when the respondent has no relationship to that mark, is also sufficient evidence of bad faith (see Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403; Centurion Bank of Punjab Limited v. West Coast Consulting, LLC,WIPO Case No. D2005-1319).
Accordingly, the evidence, which is not rebutted by the Respondent, shows that the Respondent knew of and has sought to take unfair advantage of the similarity between the disputed domain names and the Complainants' respective trademarks in order to unfairly attract Internet users by creating a likelihood of confusion with the Complainants' marks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
Further, the Complainants have provided convincing evidence that the Respondent has been involved in a pattern of abusive registration and cybersquatting. The Panel thus accepts that this constitutes a "pattern of conduct" of both the registration and use of domain names to prevent the owner of that name, trademark, or service mark from reflecting that name or mark in a corresponding domain name.
The conduct described above falls squarely within paragraph 4(b)(ii) of the Policy and accordingly, the Panel concludes that the Respondent registered and is using the disputed domain names in bad faith pursuant to the Policy, paragraph 4(a)(iii). 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 transferred to the Complainant Ahold Licensing Sarl.
Andrew J. Park
Sole Panelist
Date: April 19, 2016
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