Complainant is ExcluFloorS B.V. of Nijmegen, the Netherlands, represented by Markenizer B.V., the Netherlands.
Respondents are Steve Kusters of Antwerpen, Belgium ("Respondent No. 1") and Exclu-Floors N.V.,
Sint-Martens-Latem, Belgium ("Respondent No. 2"), the latter is represented by GEVACO Advocaten CVBA, Belgium. 2. The Domain Name and Registrar
The disputed domain name is registered with Gandi SAS (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 18, 2016. On the same day, Respondent No. 1 sent an email communication to the Center stating that he is not the beneficial owner of the disputed domain name. On July 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 20, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent No. 1 is listed as the registrant and providing the contact details.
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").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent No. 1 of the Complaint, and the proceedings commenced on July 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2016. The Response was filed by Respondent No. 2 with the Center on August 15, 2016.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on August 23, 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.
On behalf of the Panel, the Center issued Administrative Panel Procedural Order No. 1 on August 31, 2016. Complainant replied thereto on September 5, 2016. No further reply was received from Respondent. 4. Factual Background
Complainant is a company organized under the laws of the Netherlands that is active in the field of home furnishing, especially PVC floors and carpets. Complainant has provided evidence of the existence of the following Benelux trademark:
Word-/device mark WITH EXCLUFLOORS YOU'LL GET MORE (EXCLUFLOORS with design) Benelux Office for Intellectual Property ("BOIP"), Registration No. 0974965, Application Date: May 8, 2015, Publication Date of the Application: May 11, 2015; Registration Date and Publication Date of the Registration: July 21, 2015; Status: Active (hereafter referred to as the "EXCLUFLOORS trademark").
In reply to the Administrative Panel Procedural Order No. 1 issued on August 31, 2016, Complainant has furthermore evidenced that this Benelux trademark is registered in the name of Complainant's Managing Director having granted Complainant – by means of an oral license agreement – the permission to fully exploit all rights in said trademark.
Respondent No. 2 is a company organized under the laws of Belgium that sells various kinds of floors targeting the Belgian market. It changed its company name from "The Island Company" to "Exclu-Floors" on November 5, 2015.
The disputed domain name was created on September 25, 2015. It is registered in the name of Respondent No. 1 and redirects to a website of Respondent No. 2 at "www." promoting the sale of parquet floor, laminate and natural stone.
Complainant requests that the disputed domain name be transferred to it. Respondents request to deny this remedy. 5. Parties' Contentions A. Complainant
Complainant asserts that it has been trading PVC floors and carpets already since 1978 and that its products are made of high quality materials that are very sustainable and require very low maintenance. Consequently, Complainant's EXCLUFLOORS trademark has a good reputation for high quality services.
Complainant argues that its trademark is dominantly "EXCLUFLOORS" as the slogan "With … you'll get more" is of a generic nature, often used by companies as an appraisal of their goods or services. Accordingly, the disputed domain name must be regarded as almost identical or at least confusingly similar to Complainant's trade name and trademark EXCLUFLOORS as the addition of the hyphen "-", which is not pronounced at all, does not add anything to reduce confusion.
Moreover, Complainant contends that Respondents have no rights or legitimate interests with respect to the disputed domain name since (1) Respondent No. 2 is not an authorized retailer of Complainant's EXCLUFLOORS products, (2) Respondent No. 2 does not offer Complainant's EXCLUFLOORS products under the disputed domain name, but rather stresses that it is an exclusive distributor of "Trapa" parquet which is a product competing with those of Complainant, (3) Respondents also registered the domain names on June 18, 2015 and on November 26, 2015 which shows that they are trying to corner the market, depriving Complainant of reflecting its own EXCLUFLOORS trademark in a domain name (either with or without a hyphen), (4) Respondent No. 2 is not commonly known by the name "Exclu-Floors", as it only changed its company name from "The Island Company" to "Exclu-Floors" on November 5, 2015 and (5) the circumstance that Respondent No. 2 is an exclusive distributor of "Trapa" parquet does not legitimize the use of the term "exclu-floors", because "exclu" is not a common abbreviation of the term "exclusive".
Finally, Complainant states that Respondents registered and are using the disputed domain name in bad faith since (1) Respondents have engaged in a pattern of registering domain names including both terms "Exclufloors" and "Exclu-Floors", (2) Respondent No. 2 chose to register the domain name instead of that was still available by that time, which is evidence for the fact that Respondent No. 2 wishes to deprive Complainant of using the disputed domain name and (3) Respondent No. 2 is selling "Trapa" parquet under the disputed domain name which is a competing good to Complainant's "Exclu-Floors" goods and this is evidence that Respondent No. 2 is attracting Internet users to its own website for commercial gain. B. Respondents
Respondent No. 2 argues that the disputed domain name is not identical or confusingly similar with Complainant's EXCLUFLOORS trademark, since the latter is solely a figurative mark with the terms "exclu" and "floors" being merely descriptive for the products concerned; as such, Complainant cannot claim any rights to the words "Exclufloors" because they do not have sufficient distinctive character.
Also, Respondent No. 2 argues that (1) Respondent No. 2's registered company name is Exclu-Floors N.V., (2) it sells exclusive floors targeting the Belgian market, and (3) before Respondent No. 2 received any notice of this dispute, the disputed domain name was in use and had a functioning website which showcases different kinds of floors.
Finally, Respondent No. 2 denies that the disputed domain name has been registered and is being used in bad faith since (1) Respondent No. 2 registered it because of its company name being Exclu-Floors N.V. and has used it for a working showcase website of the floors sold by Respondent No. 2, (2) the disputed domain name obviously was not registered for the purpose of selling or otherwise transferring it, but rather in order to run a complete working website and (3) Complainant is not a very known company and the name "Exclufloors" is not known in Belgium, plus that Complainant does not specifically target the Belgian market. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith. A. Multiple Respondents
The Panel has noted that the disputed domain name is registered in the name of Respondent No. 1 who sent an email communication to the Center on July 18, 2016 (when he received notice of the filing of the Complaint with the Center) that he was not the beneficial owner of the disputed domain name, but had registered the latter solely on behalf of Respondent No. 2. Also, it is apparent from the filing of the Response that Respondent No. 2 in fact claims ownership in the disputed domain name regardless of whether or not its contact details are shown in the respective WhoIs register.
Against this background, the Panel decided to consider both Steve Kusters of Belgium and Exclu-Floors N.V. of Belgium as Respondents, also to allow the Registrar to correctly effect the execution of any decision reached in this UDRP proceeding.
Having said so, the Panel now comes to the following decision on the substance of this matter: B. Identical or Confusingly Similar
The Panel concludes that the disputed domain name is confusingly similar to the EXCLUFLOORS trademark in which Complainant has shown to have rights.
There is a consensus view among UDRP panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2), that the so-called first element of the UDRP serves essentially as a standing requirement and that in order to satisfy the threshold test for confusing similarity, the relevant trademark would generally need to be recognizable as such within the disputed domain name; application of the confusing similarity test under the UDRP would typically involve straight forward visual or oral comparison of the trademark with the alphanumeric string in the domain name. Complainant's trademark includes the word components "With EXCLUFLOORS you'll get more". From a visual point of view, "exclufloors" obviously is the dominant part; from an oral point of view, again a certain emphasis rests on "exclufloors", being the object of the whole phrase that constitutes Complainant's trademark. Moreover, the word component "exclu" alone is not a mere dictionary term within Complainant's trademark, but rather a derivation of the term "exclusive" and, therefore, enjoys an increased level of distinctiveness. Against this background, it must be held that the term "exclufloors" within Complainant's trademark is the most dominant part and as such it is easily recognizable in the alphanumeric string
"exclu-floors", as it is contained in the disputed domain name. Certainly, it goes without saying that the disputed domain name is at least confusingly similar to the EXCLUFLOORS trademark.
Therefore, the first element under the Policy set forth in paragraph 4(a)(i) in the case at hand is fulfilled. C. Rights or Legitimate Interests
It is undisputed between the parties that Respondents have not been authorized by Complainant to make use of the EXCLUFLOORS trademark nor is Respondent No. 2 making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain, since the latter obviously redirects to a commercial website at "www." promoting Respondent No. 2's floor supply business. Besides, there is no reason to believe that Respondent No. 2 is commonly known by the name "Exclu‑Floors" as it is reflected in the disputed domain name, since Respondent No. 2 changed its company name into "Exclu-Floors" only on November 5, 2015, namely after the creation of the disputed domain name; moreover, Respondent No. 2 itself has brought forward that the name "Exclu-Floors" is not known in Belgium, from which the Panel concludes that Respondent No. 2 itself is not particularly known under said name.
Therefore, it is for the Panel to examine in particular whether or not Respondents made use of the disputed domain name in connection with a bona fide offering of goods or services before any notice of this dispute (see paragraph 4(c)(i) of the Policy).
Respondent No. 2 is not an authorized reseller of Complainant's products and the website to which the disputed domain name redirects does not contain any disclaimer in relation thereto. It is also undisputed between the parties that Respondent No. 2 is promoting products under the disputed domain name which are in direct competition with those of Complainant. Therefore, Respondent may not establish rights or legitimate interests with respect to the disputed domain name as a reseller or distributor of Complainant's "exclufloors" products, whether authorized to do so or not.
It is, yet, open if Respondent No. 2 established its own bona fide business using the term and brand "Exclu-Floors" independently of Complainant's EXCLUFLOORS trademark and the dispute brought before this Panel.
Looking at the fact as to why Respondent No. 2 decided to start doing business under the term
"Exclu-Floors" (inclusive of a company name change and registration of respective domain names), Respondent No. 2 itself only points to the fact that it sells "exclusive floors", but also stresses by the same time that the words "exclu" and "floors" are merely descriptive of the products concerned and have no sufficient distinctive character.
Examining, in turn, the history of the registration of Complainant's EXCLUFLOORS trademark and Respondents' various domain names relating to the term "Exclufloors", including the disputed domain name, it becomes apparent that Complainant's EXCLUFLOORS trademark was filed with the BOIP on May 8, 2015, which was made public on May 11, 2015, and followed by the establishment of Complainant's company named "ExcluFloorS" on August 31, 2015; in turn, Respondents apparently started registering domain names with the component "exclu-floors" only on June 18, 2015 () and on September 25, 2015 () followed by Respondent No. 2's change of company name from "The Island Company" to "Exclu-Floors" on November 5, 2015 and further domain name registrations on November 26, 2015 () and on December 23, 2015 (). It must, therefore, be found that the acquisition of any rights of Respondent No. 2 in the term "exclu-floors" (either as company name or as domain name) took place after Complainant had established its trademark rights (including company name rights) in the very same.
The Panel, therefore, has reason to believe, and in fact Respondents have not made any contentions pointing to the contrary, that Respondent No. 2 likely started its business under the designation "Exclu-Floors" knowing of the existence of Complainant's business, and still setting up a working showcase website promoting products that are in direct competition with those of Complainant. Such use of the disputed domain name cannot be considered as a bona fide offering of goods or services under the UDRP (see, e.g., Option One Mortgage Corporation v. Option One Lending,WIPO Case No. D2004-1052).
In this connection, it must also be recognized that a complainant's duty under the second element of the UDRP is that it needs to establish a so-called prima facie case that respondent has no rights or legitimate interests in the disputed domain name. Having done so, the burden of production shifts to respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name (see WIPO Overview 2.0, paragraph 2.1). As already mentioned above, Respondent No. 2 merely pointed to the fact that he sells exclusive floors on the Belgian market, leaving it for the Panel to draw the conclusion that this was the reason for naming itself "Exclu-Floors". When looking at the website under the disputed domain name, however, the term "exclusive" only shows up in connection with the fact that Respondent No. 2 apparently is an exclusive reseller of "Trapa" parquet, which is a product in direct competition with Complainant's goods. The Panel, therefore, takes the view that Respondents failed to raise sufficient objections against Complainant's line of argumentation, that it was not for the reputation of the EXCLUFLOORS trademark built up by Complainant as to why Respondents chose a domain name confusingly similar with said trademark. The Panel notes that the term "Exclufloors" bears a descriptive character for the goods traded thereunder, both by Complainant and by Respondent No. 2. Notwithstanding, it is unlikely that Respondent chose the disputed domain name independently, without Complainant's mark in mind. This is especially so, given that Respondent offers products that directly compete with Complainant.
Furthermore, the term "Exclu-Floors" is not a natural or obvious combination for offering flooring materials. The Panel agrees with Complainant's contentions that the term "exclusive" need not necessarily be abbreviated to form "exclu" and that Respondent No. 2, therefore, would not necessarily need to rely on the term "Exclu-Floors" when promoting itself as the exclusive reseller of Trapa parquet or that it exclusively sells flooring materials.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. D. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondents in bad faith.
The Panel takes the view that the use of the disputed domain name, which is confusingly similar to Complainant's EXCLUFLOORS trademark, to host a website at "www." offering goods that are in direct competition with those of Complainant, is a clear indication that Respondent No. 2 intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with Complainant's EXCLUFLOORS trademark as to the source, sponsorship, affiliation or endorsement of Respondent No. 2's website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that also the third element under the Policy as set forth in paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) of the Policy. 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 name be transferred to Complainant.
Stephanie G. Hartung
Sole Panelist
Date: September 12, 2016
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