1.1 The Complainant is Easy2.Company B.V. of Heerhugowaard, Netherlands, represented by Castelijns Kaandorp Hoekstra, Netherlands.
1.2 The Respondent is Buergi Haustechnik AG of Oberengstringen, Switzerland. 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2016. On June 10, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date 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.
3.2 The Center verified that 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”).
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 17, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2016.
3.4 Later that day the Respondent sent an email to the Center in German asking the Center to explain what the proceedings were about. The following day the Center sent an email to the Respondent in both German and English in which it explained that a complaint had been submitted by the Complainant seeking transfer of the Domain Name, and providing information and resources on response filing. It informed that as no Response had been filed, it was proceeding to appoint an administrative panel to review the facts and decide the case. It explained that the appointed panel was not required to consider a late filed response but would have the discretion to decide whether to do so.
3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on August 1, 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
4.1 The Complainant is a company based in the Netherlands that sells a product with the name “Space Scooter” around the world. This product is a kick scooter of the sort often used by children but which has the unusual feature that it can be propelled not just by resting one foot on the footboard and pushing the other against the ground, but also by moving the footboard backward and forward. Apparently, this particular product has achieved popularity among adults as well as children and has also benefited from sponsorship from Argentine professional footballer, Lionel Messi.
4.2 The Complainant is the owner of various trade marks around the world that incorporate or comprise the words “Space Scooter”. They include:
(i) EU trade mark No. 0117909342 filed on April 3, 2013 and registered on December 18, 2013 in classes 12 and 28 and which takes the following form:
(ii) Benelux trade mark No. 01285248 applied for on February 2 and registered on June 4, 2014, 2014 for the word mark SPACE SCOOTER in classes 12 and 28.
4.3 Victory Nederland B.V, a company founded in 1995, adopted the “Space Scooter” name for a wind-up toy that it had produced in Japan and took the form of a doll in a space suit on a “scooter”. However, in this case the “scooter” appears to have been not a kick scooter but a representation of a futuristic looking motorized vehicle more akin to a motorcycle. Also the name “Space Scooter” was displayed on the toy and packaging in a different way from the EU trade mark set out above.
4.4 The Domain Name was registered on June 15, 2000. The Respondent would appear to be a company registered or located in Switzerland that is primarily engaged in the sale of bathroom accessories. The Domain Name has not been used since registration for any active website.
4.5 Victory Nederland B.V declared itself insolvent in May 2009 and (according to the Complainant) the Complainant purchased certain assets from Victory Nederland B.V including all trade mark rights in the name “Space Scooter”.
4.6 At some point thereafter, the Complainant developed the products that now bear the “Space Scooter” name and mark. Exactly when that occurred is not clear, but according to the contents of a letter from the Complainant’s lawyers to the Respondent, the Complainant first used that name for its current products in early 2011.
4.7 Since 2014 the Complainant has been engaged in correspondence with the Respondent. The extent to which the Respondent has directly participated in that correspondence is not clear; although it would appear that in or about August 2015, someone at GoDaddy auctions informed Bright Ocean (Holding) Corp Limited that the Respondent was willing to sell the Domain Name in return for USD 8,000. Bright Ocean (Holding) Corp Limited appears to have corresponded with GoDaddy auctions for and on behalf of the Complainant. 5. Parties’ Contentions A. Complainant
5.1 The Complainant refers to its registered trade marks, which it claims have been registered in “virtually the entire world”. It claims that its products under that mark are widely known across the world and is “a real hit among young people”. In this respect, it provides screenshots of websites promoting its product from various domain names and in various languages. It claims that the Domain Name is identical to the Complainant’s trade mark.
5.2 The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name, being engaged in a business that is unconnected with the activity for which the Domain Name might be used and not having used the Domain Name at any point since registration. It contends that the most likely reason why the Respondent holds the Domain Name is to “sell on the [D]omain [N]ame (eventually) for a ridiculously high amount”.
5.3 The Complainant refers to correspondence with the Respondent and provides copies of letters sent to the Respondent in which the Complainant’s lawyers claimed that the Domain Name infringes its trade mark rights, and several emails from Bright Ocean (Holding) Corp Limited to GoDaddy auctions regarding the possible sale of the Domain Name.
5.4 The Complainant recounts the history of the use of the term “Space Scooter” and in particular the previous use of that term by Victory Nederland B.V.; a company which the Complainant claims was established by the Complainant “manager”. It claims that the toys sold by Victory Nederland B.V. were “a great success”, but that is not further quantified or explained.
5.5 The Complainant claims to have purchased rights in that name from Victory Nederland B.V., although no assignment or other supporting evidence is provided in this respect. Further, it is not alleged that any registered trade mark formed part of this purchase and the exact nature of the rights in that name that are alleged to have been acquired is not explained.
5.6 The Complainant contends that the Respondent “probably had [Victory Nederland B.V.’s], use of the term Space Scooter” in mind when registering the Domain Name. The key passage in the Complaint in this respect is as follows:
“Add to this the fact that the Respondent has never been active under and/or using the (trade) name Space Scooter and/or a derivative thereof. The Respondent has only been occupying the domain name since 2000. Now that it is clear that in any case the legal predecessor of the Complainant (and therefore the Complainant) had been active in the economic trading under the name Space Scooter for years already before the well-known domain name registration by the Respondent, this trade name further never appeared anywhere else and the [Domain Name] is identical to the brand and trademark Space Scooter of the Complainant, it cannot but lead to the conclusion that the Respondent had registered the [D]omain [N]ame in bad faith. The Respondent probably had the company of (the legal predecessor of) the Complainant in mind when registering the domain name”.
5.7 Further, the Complainant contends that even if the registration of the Domain Name was not in bad faith, it is sufficient to show that the subsequent use of the Domain Name was in bad faith, relying upon the decision Schuurman Groep BV v. Technology Services LTD,WIPO Case No. DNL2008-0035. B. Respondent
5.8 The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the present dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a formal Response.
6.2 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (Policy, paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (Policy, paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the panel shall “draw such inferences therefrom as it considers appropriate”. A. Identical or Confusingly Similar
6.4 The Complainant is the owner of various trade marks, including for the word mark SPACE SCOOTER. The Panel accepts that the only sensible reading of the Domain Name is as the words “Space Scooter” in combination with the Top-Level Domain (“TLD”) “.com”. The Complainant contends that it follows from this that the Domain Name is identical to the Complainant’s mark.
6.5 Although many panels have concluded that when conducting the relevant comparison between mark and domain name, the TLD is normally to be ignored, the Panel does not necessarily agree with this for the reasons advanced in Philip Morris USA Inc. v. Marlboro Beverages / Vivek Singh,WIPO Case No. D2014-1398. Therefore, the Domain Name and trade mark are not identical. However, in practical terms it makes no difference given that the Panel has no hesitation in concluding that the Complainant’s marks and the Domain Name are confusingly similar.
6.6 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.7 Given the Panel’s findings when it comes to registration in bad faith, it is not necessary to address the question of rights or legitimate interests. C. Registered and Used in Bad Faith
6.8 The Complainant has described how the term “Space Scooter” was used by a company it claims was its predecessor in business. The Complainant claims that it acquired certain rights owned by that company on its insolvency in 1999, including all rights in the “Space Scooter” name. In broad terms the Panel is prepared to accept that this is correct, even though the Complainant does not provide a copy of that assignment and what form those unregistered rights might have taken is not really explained. Where a company becomes insolvent it is not unusual for another company to acquire any rights the insolvent company may have in any names or marks it has used and it is inherently credible that these may have been acquired (as is alleged here) by a company whose “manager” was involved in the operation of the insolvent company.
6.9 Further, the Panel accepts that where a business choses and uses a name in a trade mark sense for a particular product or service, and a domain name incorporating that name is registered by a third party before registered trade marks have been obtained, that is not necessarily fatal to proceedings under the Policy. If the domain name was registered with the intention of taking unfair advantage of the likely future trade mark rights of that business, then there can still be a can be a finding of registration in bad faith. The Complainant relies in this respect of the decision in SquarIT Limited v. Ravis Varmas,WIPO Case No. DNL2013-0016. The Panel would also refer to its analysis of this issue in Hromadske Telebachennya v. Roman Skrypin S.R.O.,WIPO Case No. DTV2016-0004.
6.10 The Panel does not think it matters if the business that initially chose to adopt the relevant name becomes insolvent and it is that entity’s successor in business that registers the relevant mark and commences UDRP proceedings. It is the fact that the registrant’s bad faith is directed to trade marks that are likely to arise from a particular business choice of that name and/or its use in a trade mark sense that is important, rather than whether the registrant has knowledge of what entity might own that business and marks at any particular time in the future.
6.11 However, the complication in this case is that notwithstanding the (presumed) assignment to the Complainant of any rights in the term “Space Scooter” held by Victory Nederland B.V., the products sold by Victory Nederland B.V. and the Complainant under that name appear to the Panel to be very different. Victory Nederland B.V. used that term in connection with a wind-up toy of a doll on a futuristic motorcycle. The Complainant then appears to have decided not to continue that line of business. Instead, it decided after a hiatus of a year (and perhaps longer) to adopt that name for a different product. Both products might loosely be described as toys, but there is no evidence before the Panel that a person purchasing a kick scooter under the name “Space Scooter” from 2011 would be likely to associate that product with a wind-up toy sold by Victory Nederland B.V. under that name some time earlier.
6.12 This raises a number of problems. Although the Panel is prepared to accept that the Complainant acquired any rights that may existed by reason of the use of that term for wind-up toys by Victory Nederland B.V. when it became insolvent in 2010, it is not at all clear how what those rights were and how far if at all they extended to products other than wind-up toys. It is also not at all clear whether those rights still existed at the time that the name was adopted for another product by the Complainant in 2011.
6.12 Further, although the Complainant relies upon a very large number of registered trade marks, it appears that it did not first seek to register that term until December 2012 (see Benelux Registered Mark No. 1259921); i.e., approximately two and a half years after Victory Nederland B.V. became insolvent and the use of that term for a wind-up toy appears to have been abandoned. In the case of those marks where the term “Space Scooter” is in a stylised form, they take the form in which that name is now used on the Complainant’s kick scooters. This is different from the way in which those words appeared on Victory Nederland B.V.s wind-up toys.
6.13 Given this, the Panel has reached the conclusion that the Complainant has failed to show that the marks that it relies upon in this case and which it claims the Respondent has taken unfair advantage of, arise out the historic wind-up toy business of Victory Nederland B.V, as opposed to a separate kick scooter business using the same name that began in 2011.
6.14 In the circumstances, the Panel is unconvinced that the Respondent who registered the Domain Name 11 years before that kick scooter business commenced, did so with the intention of taking advantage of the marks upon which the Complainant now relies.
6.15 Alternatively, if the Panel’s analysis is wrong and the trade marks relied upon are marks that did arise out of Victory Nederland B.V. wind-up toy business, the Panel is not sure that this really makes any difference. The reason for this is that there is far from convincing evidence before the Panel as to why it is probable that at the time of registration the Respondent was even aware of the Victory Nederland B.V.’s use of the term for a wind-up toy, let alone sought to take advantage of any rights that existed or might come into existence in respect of the name of the product.
6.16 The Complainant contends that when the toy was launched it was “initially a great success”, but we are not told what “initially” means or the extent either in terms of geography or volume of the sales of these products. We are also not told why it is and in what circumstance this product is likely to have come to the attention of the Respondent engaged (on the Complainant’s own evidence) in a different business sector and located in another country.
6.17 It is quite possible that very little would have been sufficient to persuade the Panel that it should infer that the Respondent did have such knowledge and that the registration was indeed with the intention of taking unfair advantage of Victory Nederland B.V.’s likely trade marks in the “Space Scooter” name. In this respect the Panel accepts that the Domain Name appears to have no connection with the Respondent’s business. Therefore, why the Domain Name was registered cries out for an explanation, and yet no such explanation has been provided. Further, the Panel takes at face value (in the absence of any evidence to the contrary) the Complainant’s claim that no other business had adopted the term “Space Scooter” as a trade mark at that time (although the Panel observes that the Complainant does not go so far as to claim that it is a term that was not otherwise in use). However, in the absence of any real explanation or evidence of the extent of Victory Nederland B.V. dealings in the relevant wind-up toys prior to 2000, the Panel is not prepared to draw the necessary inference in the Complainant’s favour.
6.18 In the circumstances, the Complainant has failed to show to the satisfaction of the Panel that the Domain Name was registered in bad faith. Given this finding, it is not necessary to address the Complainant’s claims that the Domain Name is being used in bad faith. In this respect the Complainant’s reference to Schuurman Groep BV v. Technology Services LTD, supra is misconceived. Although that decision is in Dutch, this appears to be a decision in respect of a “.nl” domain name. This type of domain name is governed by the Dispute Resolution Regulations for “.nl” Domain Names, which is not the same as the UDRP. One important difference between the two policies is that under the “.nl” procedure it is only necessary to show bad faith registration or bad faith use. In the case of the UDRP it is necessary to show both (see for example Camon S.p.A. v. Intelli-Pet, LLC,WIPO Case No. D2009-1716).
6.19 In the circumstances the Complainant has failed to make out the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
7.1 For the foregoing reasons, the Complaint is denied.
Matthew S. Harris
Sole Panelist
Date: August 3, 2016
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