The Complainant is CHANTELLE S.A. of Cachan, France, represented by Nameshield, France.
The Respondent is R. de Visser, Evize BV of Anna Paulowna, Netherlands, represented by Hortis Legal, Netherlands. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2016. On November 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 14, 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.
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 the Respondent of the Complaint, and the proceedings commenced on November 17, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2016. On December 8, 2016, no Response having been received, the Center issued a Notice of Default.
Subsequently, the Center noticed that while it had successfully delivered the Notification of Complaint to the Respondent by various means, by an oversight the Notification of Complaint had not been copied to the person appearing from the Complainant’s evidence to be the Respondent’s representative. Accordingly, on December 16, 2016, the Center sent an email communication to the Respondent giving the Respondent until December 21, 2016 to indicate whether he wished to participate in the proceedings. On December 19, 2016, the Respondent’s representative replied to the Center’s communication, confirming that he was the Respondent’s representative and inquiring about the relevant deadlines. On December 20, 2016, the Center responded indicating that the Respondent had until January 9, 2017 to file a Response. The Respondent did not submit any response. Accordingly, the Center notified the Parties on January 11, 2017 that it would proceed to Panel appointment.
The Center appointed Tony Willoughby as the sole panelist in this matter on January 12, 2017. 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 engaged in the production and sale of ladies clothing, primarily lingerie. One of its brands is “Livera”, which it claims to have launched in 1969 in the Netherlands, the Respondent’s home country, where the Complainant has “more than 100 stores”.
The Complainant is the registered proprietor of several trade mark registrations for LIVERA, one of them being European Union registration No. 002850519 in classes 25 and 35 for inter alia lingerie and related retail services. The application was filed on September 13, 2002 and registration ensued on December 18, 2003.
The Domain Name was registered on September 26, 2016 and was connected to a Dutch language parking page. When the Panel attempts to visit the website connected to the Domain Name it resolves to a Google search page with multiple links to one site, namely the Complainant’s Dutch website connected to the domain name (registered on May 27, 1998).
On October 20, 2016 the Complainant’s representative emailed to the Respondent a cease-and-desist letter drawing the Complainant’s trade mark rights to the Respondent’s attention and seeking transfer of the Domain Name.
The Respondent’s representative responded by letter on November 3, 2016 stating that the Respondent is “legitimately engaged in consultancy, interior and spatial design”. Among his support services for his start up clients is the registration of domain names. The letter states “My client never heard of the clothing and fashion trade mark LIVERA®. It can also be emphasized that my client is not at all interested in offering goods and services for which the trade mark LIVERA® is protected”. The letter continues “My client is currently preparing her1 website which has everything to do with arranging travelling to the village Livera on the popular holiday island Cyprus”. The letter concludes by asserting that there is no question of trade mark infringement and that the validity of the Complainant’s trade mark registration might be open to attack, covering as it does a geographical name and rendering it potentially deceptive. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical to the Complainant’s LIVERA trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. The only indication of the Respondent’s position in the matter is his representative’s letter of November 3, 2016 referred to in section 4 above. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith. B. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s registered trade mark LIVERA and the “.shop” generic Top-Level Domain (“gTLD”) identifier. It being permissible for panels to ignore the gTLD identifier where it serves no purpose other than the technical one, the Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights. Moreover, even if one were to take into account the gTLD identifier, it is an identifier particularly apt for a retailer such as the Complainant and underlines the potential for confusion. C. Rights or Legitimate Interests
In most cases, whether or not a respondent has a right or legitimate interest in respect of the domain name in issue is something peculiarly within the knowledge of the respondent. Proving a negative can be very difficult in such circumstances. Accordingly, it is now accepted that while it is still down to the Complainant to prove all elements of paragraph 4(a) of the Policy, it will suffice for the Complainant to make out a prima facie case under this head, a case sufficient to call for an answer from the Respondent.
The Complainant’s case is simple. The Complainant has no connection with the Respondent and has not granted to the Respondent any permission for the Respondent to use the Complainant’s LIVERA trade mark in this or any other way. The Complainant has over one hundred “Livera” shops in the Netherlands, six of them within 22 kilometres of the Respondent’s address. The Domain Name is in effect “Livera Shop”. The Respondent is not known by the Domain Name, does not appear to be using the Domain Name for anything other than a parking page and is not on its face making any legitimate fair or noncommercial use within the meaning of paragraph 4(c)(iii) of the Policy.
The Panel is satisfied that the Complainant has made out a prima facie case calling for an answer from the Respondent.
The Respondent has not filed a formal Response, but the Panel is prepared to treat the Respondent’s representative’s letter of November 3, 2016 as a partial response, conscious nonetheless that it does not feature the requisite certificate of truth and accuracy required by paragraph 5(c)(viii) of the Rules and must therefore be treated with great caution.
The Respondent claims to have registered the Domain Name for the purposes of a website devoted to the village of Livera on Cyprus. That would appear on its face to be a potentially satisfactory answer.
Paragraph 4(c)(i) of the Policy provides that if the Respondent can prove to the satisfaction of the Panel that he has used or made demonstrable preparations to use the Domain Name for a bona fide offering of goods or services, that will be sufficient to demonstrate a relevant right or legitimate interest.
Where the Respondent’s answer falls down is in the lack of any evidence to show that that is in fact the Respondent’s purpose. One would have thought that it would not have been difficult for the Respondent to produce evidence demonstrating why he picked Livera in Cyprus as the chosen destination and to produce documentation supporting his claim to having commenced preparation of the website for that purpose. All that is before the Panel is the unsupported bare assertion of the Respondent’s representative in his letter of November 3, 2016. That letter invites the reader to visit the Respondent’s website connected to the Respondent’s domain name, but that is a Dutch language site, not a language with which the Panel is familiar, and the Panel could not find anything remotely relevant to the issue in hand.
The Panel finds on the balance of probabilities that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered the Domain Name with knowledge of the Complainant’s LIVERA trade mark and with the intention of preventing the Complainant from registering its trade mark as a domain name in the “.shop” domain, and thus to promote and develop the Respondent’s LIVERA e-shop on the back of the fame of the Complainant’s LIVERA trade mark.
As indicated, the Panel has considered the content of the Respondent’s representative’s letter of November 3, 2016, but it is not a formal response and significantly omits the certificate of truth and accuracy required by paragraph 5(c)(viii) of the Rules. The core contention in response to the Complainant’s bad faith allegation is that the Respondent had never heard of the Complainant’s trade mark when he registered the Domain Name and could not therefore have been targeting the Complainant.
Paragraph 14(b) of the Rules provides that “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules… the Panel shall draw such inferences therefrom as it considers appropriate.”
The Panel is not aware of any exceptional circumstances justifying the Respondent’s failure to file a Response. The Panel is left to draw such inferences from that failure as it deems appropriate. It is not as if the Respondent did not have a legal representative to advise him.
The Panel is left to guess what the Respondent had in mind when registering the Domain Name. There seem to the Panel to be two basic possibilities. One possibility is that the Respondent is, as his representative has claimed, preparing a website devoted to the provision of tourist information relating to the village of Livera in Cyprus. The other is that his intention was, as the Complainant contends, to target the Complainant and that he picked out the name of the Cypriot village after the event simply to generate the basis for a defence to a claim under the Policy.
The Panel infers from the Respondent’s failure to respond properly to the Complaint that the Respondent has no answer to the Complaint. It should have been very easy for the Respondent to support his contention by indicating why he selected the small village of Livera for his planned website – far from being an obvious choice – and by producing documentation of some kind demonstrating that it was a genuine project in hand.
In the absence of any properly supported explanation from the Respondent, the Panel finds on the balance of probabilities that the Respondent selected the Domain Name with knowledge of the Complainant’s Livera shops in his home country, the Netherlands, and with the intention of using the Domain Name benefitting unfairly from the trade mark value of that name. The Panel is in no doubt that Internet users in not insubstantial numbers are likely to be deceived into believing that the Domain Name is a domain name operated and/or authorized by the Complainant. In other words the Panel finds that the Domain Name was registered in bad faith.
The Panel notes that the Respondent’s use of the Domain Name has changed since the date of the Complaint and that it is now used to divert to a Google search page featuring exclusively links to the Complainant’s website. That in itself is a change inconsistent with the Respondent’s claimed planned use relating to the village of Livera in Cyprus.
Despite the absence of any current active use of the Domain Name, to quote from an earlier decision of this Panel: "the presence of the Domain Name in the hands of the Respondent represents, in the view of the Panel, an abusive threat hanging over the head of the Complainant (i.e., an abuse capable of being triggered by the Respondent at any time) and therefore a continuing abusive use". Conair Corp. v. Pan Pin, Hong Kong Shunda International Co. Limited,WIPO Case No. D2014-1564. 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 Domain Name, , be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Date: January 16, 2017
1 the Panel has visited the Respondent’s website at www. from which it is apparent that the Respondent is male.
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