The Complainant is NLY Scandinavia AB of Borås, Sweden, represented by Ports Group AB, Sweden.
The Respondent is Khashayar Shahrivar Nia, Babyglobe of Spijkenisse, Netherlands. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 14, 2017. On July 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 16, 2017, the Registrar transmitted by email to the Center its verification response confirming:
(a) it is the Registrar for the disputed domain name;
(b) the registrant name and contact details for the disputed domain name;
(c) the Respondent became the registrant of the disputed domain name by at least December 6, 2016;
(d) the language of the registration agreement is English;
(e) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), and the UDRP applies to the disputed domain name.
Other information before the Panel indicates that the disputed domain name was first created on September 27, 2016.
The Complainant filed an amended Complaint on July 20, 2017.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Policy, 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 July 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2017.
The Respondent sent an email communication to the Center on August 8, 2017. Following this email communication, the Center sent a possible settlement email to the Parties on August 11, 2017, informing the Parties that, should they wish to explore settlement options, the Complainant should submit a request for suspension by August 16, 2017. Such request was submitted by the Complainant to the Center on August 16, 2017, and subsequently the Center notified the Parties that the administrative proceeding had been suspended until September 15, 2017, for purposes of settlement discussions concerning the disputed domain name. Following a request by the Complainant on September 14, 2017, the suspension was extended until October 15, 2017. On October 16, 2017, the Complainant requested for the proceeding to be reinstituted. Accordingly, on October 16, 2017, the Center notified the Parties that the proceeding had been reinstituted and that the new due date for Response was October 21, 2017. The Respondent did not submit any further response. Accordingly, the Center notified the Parties of the commencement of Panel appointment process on October 25, 2017.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on November 8, 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 incorporated in Sweden. According to the Complaint, the core of its business is the sale of fashion items, particularly clothing, underwear, shoes and accessories, online. It has online sales outlets in Sweden, Norway, Denmark, Finland, The Netherlands, Belgium, France, Germany, Austria and the United Kingdom of Great Britain and Northern Ireland. In addition, its "international" website at ships the Complainant's products to many other countries.
According to the Complaint, the Complainant's business under the NELLY brand began in 2004. Amongst other things it has the following European Union Registered Trademarks:
(a) EUTM No. 006509699, NELLY, which was registered on June 3, 2010, in respect of retail, advertising and information services in International Class 35; and
(b) EUTM No. 010655298, NELLY, which was registered on June 28, 2012, in respect of goods in International Classes 14, 18 and 25.
The Complainant has also provided evidence of numerous other registrations for trademarks based on "Nelly" in the European Union and in many other jurisdictions.
As noted above, the disputed domain name was first created on September 27, 2016. According to the Registrar, it has been registered by the Respondent since at least December 6, 2016.
When the Complaint was filed, the disputed domain name did not resolve to an active website. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
Two preliminary matters call for consideration before considering the substantive issues.
The Registrar's response to the Center's request for confirmation of the registrant details stated that the disputed domain name was not registered to the Respondent. This appears to be because the Complaint named Khashayar Shahrivar Nia as the respondent. That is indeed the "Registrant Name" included in the WhoIs details provided by the Registrar. The WhoIs details also state that the "Registrant Organization" is Babyglobe. The contact details are otherwise as submitted in the Complaint. Khashayar Shahrivar Nia and Babyglobe are also specified in the WhoIs details as, respectively, the Admin Name and the Admin Organization.
In its email to the Center on August 8, 2017, Khashayar Shahrivar Nia stated:
"I have received your e-mail regarding my domain www.. I would like to start off by clarifying that the accusations that you have made in this e-mail are false. Consequently, I would like to offer my domain if you compensate the costs relating to this domain.
"First of all, I must stress that I have never heard of your brand until I had received your mail. Moreover, without being disrespectful, I must stress that your brand is not well known in the Netherlands. The latter clarifies why I have not heard of your brand. Moreover, since you are a insignificant [sic] brand in the Netherlands, I did in no way intend to buy this domain to use it for its marketing values. My intention was to sale (car-related) accessoires [sic] through a Dutch-bassed [sic] website on this domain.
"Now that has been clarified, I would like to offer you my domain www., for a reasonable compensation of my costs related to this domain. If you are interested in the foregoing offer, feel free to contact me via the following e-mail address: "khashi.nia@[...]". If you are not interested in the foregoing offer, I would like to stress that I in no way intend to make use of your trademark, and that I intend to use this domain to offer (car-related) accessories." (emphasis supplied)
The Panel notes that Khashayar Shahrivar Nia refers to "my domain name" and his or her plans, intentions and objectives. All of these suggest that Khashayar Shahrivar Nia is the person who registered the disputed domain name and is, in any event, the person in control of the registration. From this, it appears that Khashayar Shahrivar Nia is in fact the registrant. In addition, the email address Khashayar Shahrivar Nia used, and directed further correspondence to, is the same as the email address for the registrant confirmed as correct by the Registrar. If Khashayar Shahrivar Nia is not formally the registrant and there is a separate and different entity, Babyglobe, Khashayar Shahrivar Nia is plainly authorised to deal with the disputed domain name on behalf of that entity.
In these circumstances, the Panel considers that the Complaint and the Amended Complaint have been properly directed to the registrant of the disputed domain name and the registrant has had a full opportunity to respond to the Complaint. Hereinafter, when referring to the Respondent, the Panel refers to both the registrant name and the registrant organization for the disputed domain name (i.e., Khashayar Shahrivar Nia and Babyglobe).
The second preliminary matter is that the Respondent's email on August 8, 2017, does offer to surrender the disputed domain name. However, it is a conditional offer only. It is not an irrevocable and unconditional offer. The Panel is not in a position, therefore, to treat it as an agreement by the Respondent to surrender the disputed domain name. Accordingly, the Panel turns to consider the substantive requirements under the Policy. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the two EUTMs for NELLY identified in section 4 above, and numerous other "Nelly" based trademarks.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (gTLD) component as a functional aspect of the domain name system: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Apart from the ".shop" gTLD, the disputed domain name is identical to the Complainant's two EUTMs for NELLY. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant's trademarks and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., section 2.1 of the WIPO Overview 3.0.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is plainly not derived from the Respondent's name. Even taking the date the disputed domain name was created, September 27, 2016, as the date the Respondent registered the disputed domain name as the date most favourable to the Respondent, the disputed domain name was registered many years after the Complainant acquired its trademark rights.
In these circumstances, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
In the email on August 6, 2017, sent by the Respondent, the Respondent states that it has never heard of the Complainant and registered the disputed domain name with the intention of selling car parts online.
As noted above, the disputed domain name is not active and does not appear ever to have been. Apart from the claim made in the email, the Respondent has not provided any objective evidence of preparations to set up a business of the kind claimed. Nor has the Respondent provided any explanation of any particular obstacles or difficulties which the Respondent has encountered and which have delayed set up or commencement of the claimed business.
As noted in section 2.2 of WIPO Overview 3.0, where the disputed domain name is not in use, Panels typically require "clear contemporaneous evidence of bona fide pre-complaint preparations" to sustain a claim of rights or legitimate interests on the basis of demonstrable preparations to use the disputed domain name. The Respondent has not provided any such information. The bald claim in the email is insufficient to make out that claim.
Accordingly, the Respondent has not rebutted the Complainant's prima facie case. The Panel therefore finds the Complainant has established the second requirement under the Policy also. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The Complainant argues that it has been using the trademark NELLY since 2004, 12 years before the registration of the disputed domain name and that the disputed domain name includes the entire NELLY trademark. Accordingly, it is obvious that the disputed domain name was registered with knowledge of the Complainant's business and trademarks and was registered at the very least to inflict damage on the Complainant's business.
The Respondent, however, says it has never heard of the Complainant and, as noted above, registered the disputed domain name for the proposed car parts business.
The evidence submitted with the Complaint does not enable the Panel to find that the Respondent is in fact using the disputed domain name to sell clothing or other fashion items in competition with the Complainant. So far as the evidence goes, the disputed domain name does not resolve to an active website. The Complaint also does not provide the Panel with information about the Complainant's sales revenues or advertising and promotional activities, either globally or in the Netherlands. It appears from the online financial records of the Complainant's parent that the Complainant's sales revenues in 2016, globally, were in the order of USD150 million.
On the other hand, the Panel does not feel this is a case where the Respondent's claim that it had never heard of the Complainant must necessarily be accepted at face value. First, the word "Nelly" is or can be used as a nickname or person's name, but is not otherwise a common or ordinary word in English or (so far as the Panel is aware) any other language. Certainly, the Respondent has not suggested "Nelly" has any particular meaning. Secondly, accepting that online brands often try to distinguish themselves by adopting "quirky" or unusual words for their brand, "Nelly" does not naturally suggest itself as a brand name for a business selling car parts. The Panel is unaware of any reason why someone would choose "Nelly" as the name for such a business. Further, as already noted, the word "Nelly" does not appear to have any connection with the Respondent. It is not in any way derived from its name . Thirdly, as already discussed in section 5B above, the Respondent has not provided any credible basis to accept the claim that the disputed domain name was registered for use in connection with a business selling car parts.
The only use that appears to have been made of the disputed domain name is the offer of its sale to the Complainant. The Complainant has not provided details of that offer. From the Complainant's agreement to pay the Respondent's out of pocket costs, but only those costs, for a transfer, the Panel infers that the Respondent was seeking payment of considerably more than the mere registration fees. In the absence of rights or legitimate interests in the disputed domain name, such conduct is use in bad faith.
As discussed above, the Panel has not been able to accept the Respondent's claim that the disputed domain name was registered for a business selling car parts. As that is the explanation for registering the disputed domain name offered by the Respondent, therefore, it cannot be relied on to support the claim that registration was in good faith. That, together with the (inferred) offer to sell the disputed domain name for a price in excess of out of pocket costs, leads the Panel not to accept the Respondent's denial of awareness of the Complainant and its trademark. Accordingly, the Panel finds that the disputed domain name was registered and is 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 name be transferred to the Complainant.
Warwick A. Rothnie
Sole Panelist
Date: November 22, 2017
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