Complainant is RAL gemeinnützige GmbH of Sankt Augustin, Germany, represented by Hogan Lovells International LLP, the Netherlands.
Respondent is Harry van der Giezen of Assen, the Netherlands, self-represented. 2. The Domain Names and Registrar
The disputed domain names and (the “Disputed Domain Names”) are registered with Key-Systems GmbH dba (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 12, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Complaint was submitted in the English language. The language of the Registration Agreement for the disputed domain name is Dutch. On January 16, 2017, the Center sent a language of proceeding communication in both Dutch and English to the Parties. On January 17, 2017, Complainant submitted a request for English to be the language of proceeding. Respondent submitted a request for Dutch to be the language of proceeding on January 19, 2017.
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 of the Complaint, and the proceedings commenced on January 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 9, 2017. The Response in English was filed with the Center on February 8, 2017.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on February 14, 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
Complainant, RAL gemeinnützige GmbH, is the subsidiary of RAL Deutsches Institüt für Gütesicherung und Kennzeichnung e.V., an independent organization that awards the RAL Quality Mark. Complainant develops and manages the RAL colors, which are subsequently gathered and sold in color cards and fan decks.
Complainant is the holder of the following registered trademark:
RAL, international word mark registered under No. 880725 in classes 9, 16 and 42 on October 26, 2005.
The Disputed Domain Names were created on September 8, 2008 and September 17, 2008, respectively.
The Panel has exercised its power to undertake limited factual research by visiting the websites at the Disputed Domain Names (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.5).
Both domain names redirect to a website where Respondent displays different RAL colors and their corresponding codes and name. Respondent uses the websites to sell official RAL products, such as fan decks and booklets. The websites linked to the Disputed Domain Names contain links to websites in Dutch, Italian, French and Portuguese on which RAL colors are advertised next to “British Standard Colors”, “Federal Standard 595 Colors” and “Pantone Colors”. 5. Parties’ Contentions A. Complainant
Complainant considers the Disputed Domain Names to be confusingly similar to a trademark in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. In this respect Complainant asserts that Respondent is not an authorized representative of Complainant and that the websites to which the Disputed Domain Names resolve do not communicate accurately that Respondent is not affiliated with Complainant. Finally, Complainant concludes that the Disputed Domain Names have been registered and used in bad faith, for commercial gain, by intentionally attracting Internet users to the website, through the likelihood of confusion with Complainant’s trademarks and trade names as to the source, affiliation or endorsement of the websites. B. Respondent
Respondent submits that Complainant was aware of Respondent’s registration of the Disputed Domain Names since 2009, when Complainant inquired about the possibility of obtaining the disputed domain name . Respondent has since assumed that Complainant approved of the Disputed Domain Names and has invested in them.
Respondent acknowledges that the Disputed Domain Names do fully hold the trademark invoked. Respondent disputes however the well-known character of the RAL mark in connection with the business of selling color booklets and fan decks. Respondent argues that RAL as a color system has become descriptive and should be free to use by Respondent in relation to the sale of products based on this system. Respondent also considers that it has legitimate interests in the Disputed Domain Names. Respondent declares to sell official RAL trademark color cards only on the websites linked to the Disputed Domain Names and that those websites accurately disclose its relationship with Complainant as a reseller. Finally, Respondent argues that it has not used or registered the Disputed Domain Names in bad faith. In this respect, Respondent refers to the fact that its only purpose is to sell official and original RAL color cards. 6. Discussion and Findings 6.1. Language of the Proceeding
As the Complaint was not filed in the language of the Registration Agreement and the Parties did not agree on the language of the administrative proceeding, the Panel may decide on the language of the administrative proceeding, having regard to the circumstances of the administrative proceeding. Indeed, paragraph 11(a) of the Rules reads: “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 Panel is satisfied that both parties speak and write English. It appears that the websites linked to Disputed Domain Names are in English. Respondent also filed its Response in English, and submitted exhibits which are all in the English language. These elements of fact show Respondent’s proficiency in the English Language.
Accordingly, the use of the English language in the proceedings would not be prejudicial to the interests of Respondent, whereas it would be a disadvantage for Complainant to be forced to translate the Complaint. Therefore, the Panel decides to use the English language in the present proceedings (see, e.g., The Dow Chemical Company v. Hwang Yiyi,WIPO Case No. D2008-1276: “where [a] respondent can clearly understand the language of the complaint, and the complainant would be disadvantaged by being forced to translate, the language of proceedings can remain the language of the complaint, even it is different to the language of the registration agreement”). 6.2. Substantive Issues
Paragraph 15 of the Rules provides that the Panel is 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.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
2. Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
3. The Disputed Domain Names have been registered and are being used in bad faith.
The Panel will deal with each of these requirements in turn.
The Panel notes Respondent’s submission that Complainant inquired about the transfer of one of the Disputed Domain Names approximately seven years ago, and that Respondent has since assumed Complainant’s approval of its registrations. If and to the extent Respondent is invoking a defense of laches, the Panel agrees with the consensus view of UDRP panels at paragraph 4.10 of the WIPO Overview 2.0:
“Panels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements. Panels have noted that the remedies under the UDRP are injunctive rather than compensatory in nature, and that a principal concern is to avoid ongoing or future confusion as to the source of communications, goods, or services”. A. Identical or Confusingly Similar
To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has clearly established that there is a registered RAL trademark in which Complainant has rights. The trademark has been registered and used in various territories, including the European Union.
The Disputed Domain Names incorporate Complainant’s trademark in its entirety, adding the words “color” and “colours” respectively. The Panel is of the opinion that the mere addition of non-distinctive text and a hyphen to a complainant’s trademark does not avoid a finding of confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see Karen Millen Fashions Limited v. Akili Heidi,WIPO Case No. D2012-1395, where the domain name was held to be confusingly similar to the KAREN MILLEN trademark; Belstaff S.R.L. v. Jason Lau, Sharing,WIPO Case No. D2012-0783, where the domain name was held to be confusingly similar to the BELSTAFF trademark; Lime Wire LLC v. David Da Silva/C,WIPO Case No. D2007-1168, where the domain name was held to be confusingly similar to the LIME WIRE trademark, especially with addition of the word “download” because users typically download complainant’s software).
Accordingly, Complainant has made out the first of the three elements of the Policy that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant has the burden of establishing that the respondent has no rights or legitimate interests in respect of the disputed domain names.
It is well established under the Policy that it is sufficient for a complainant to make a prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on the respondent. See, Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; 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.
The Panel notes that Respondent has not apparently been commonly known by the Disputed Domain Names and that Respondent does not seem to have acquired trademark or service mark rights. Respondent’s use and registration of the Disputed Domain Names was not authorized by Complainant. There are no indications that a business connection exists between Complainant and Respondent, other than the fact that Respondent has been in contact with Complainant regarding an order confirmation and shipment. The websites linked to the Disputed Domain Names include to following sentence embedded within a paragraph small font text otherwise describing Complainant’s color system: “Color Harzen is a reseller of RAL products and delivers the classic RAL products for (almost) all over the world.” However, it is unclear who Color Harzen is, or how Color Harzen is related to Respondent. In any event, neither Color Harzen nor Respondent seem to be authorized by Complainant to use Complainant’s trademark in connection with a domain name. Respondent does not show to be an authorized reseller of Complainant.
In addition, the websites linked to the Disputed Domain Names contain links to websites in Dutch, Italian, French and Portuguese on which RAL colors are advertised next to “British Standard Colors”, “Federal Standard 595 Colors” and “Pantone Colors”. According to the Panel, this cannot be considered as fair use of the Disputed Domain Names. Even if Respondent was an authorized reseller of RAL products, the use of the RAL trademark in the Disputed Domain Names to sell other goods than the trademarked goods can be seen as a use of the mark to bait Internet users and then switch them to other goods. Such use is not bona fide. See Nikon, Inc. v. Technilab,WIPO Case No. D2000-1774; Experian Information Solutions, Inc. v. Credit Research, Inc.,WIPO Case No. D2002-0095.
Furthermore, even considering the embedded reseller text above to be a disclaimer (which the Panel does not credit as it is insufficiently clear or prominent), the existence of a disclaimer cannot by itself cure bad faith, when bad faith has been established by other factors (see WIPO Overview 2.0, paragraph 3.5).
Therefore, the Panel finds that Complainant has established that Respondent has no rights or legitimate interests in the Disputed Domain Names. C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the Disputed Domain Names were registered in bad faith and that these are being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use are (i) the registration of a 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 Respondent has engaged in a pattern of such conduct and (ii) the use of a domain name to intentionally attempted to attract, for commercial gain, Internet users to a web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location.
In the present case, it is inconceivable that Respondent was unaware of Complainant and its trademark rights when it registered the Disputed Domain Names. The Disputed Domain Names include the Complainant’s RAL trademark in its entirety, and it is apparent that Respondent had Complainant in mind when registering the Disputed Domain Names.
Respondent not only registered the Disputed Domain Names, but also a number of domain names containing Complainant’s RAL trademark. The website accessible through the Disputed Domain Names contains links to these domain names. As a result, the Panel considers Respondent has engaged in a pattern of trying to prevent the trademark owner of reflecting its own mark in a corresponding domain name. In addition, Respondent is using Complainant’s trademark without authorization to offer products that are linked to Complainant’s products and services as well as products from Complainant’s competitors without a sufficient disclaimer clearly identifying Respondent or its relationship with Complainant. Doing so, Respondent tries to intentionally attract Internet users to visit his website for commercial gain, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site or location and of the products offered for sale on the web site (see Simyo GmbH v. José Castrellón, CyberCast,WIPO Case No. D2014-1660).
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Names were registered and are being used in bad faith. 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 Complainant.
Flip Jan Claude Petillion
Sole Panelist
Date: February 28, 2017
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