The Complainant is Clever Cloud SAS, France, represented internally.
The Respondent is Dr.-Ing. Benjamin Poppinga, Germany, self-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2020. On October 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 31, 2020 and November 8, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is the registrant for the disputed domain name. Furthermore ,the Registrar confirmed that the registration agreement was in German and as the Complainant had already provided arguments for English to be the language of the proceedings, the Center sent a language of the proceedings email allowing the Respondent to comment on November 9, 2020. The Respondent replied on November 12, 2020, requesting German to be the language of the proceedings. 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 in both English and German, and the proceedings commenced on November 13, 2020. In accordance with the Rules, paragraph 5, the due date for the Response was December 7, 2020. The Response was filed in German with the Center on December 7, 2020. The Center appointed Tobias Zuberbühler as the sole panelist in this matter on December 10, 2020. 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 a company registered under the commercial name “Clever Cloud” in Paris and incorporated on August 2, 2010. According to the Complainant’s website “www.clever-cloud.com”, it “offers IT solutions to companies and IT professionals to achieve software delivery faster, reduce their feedback loop, focus on their core value and stop worrying about their hosting infrastructure by providing a solution for application sustainability”. The Complainant’s President has registered the French trademark CLEVER CLOUD (Reg. No. 103757946, registered on August 2, 2010 in classes 9, 38, 39, 42 and has continuously used this trademark since 2010. The disputed domain name was registered on February 16, 2016 and resolves to a blank page. 5. Parties’ Contentions A. Complainant In summary, the Complainant contends the following: CLEVER CLOUD is a trademark registered by the Complainant’s representative on August 2, 2010, related to the transmission of electronic communications and computer networks. This trademark has since been continuously used by the Complainant. The disputed domain name uses the exact same words and letters as the registered trademark CLEVER CLOUD and as the Complainant’s commercial name. It is therefore exactly similar to the registered trademark and to the registered commercial name of the Complainant. To the best of the Complainant’s knowledge, the Respondent has never made any use of the disputed domain name and has never acquired trademark or service mark rights directly or indirectly related to the disputed domain name. The Respondent’s only interest in the disputed domain name is to sell it to the Complainant at the highest possible price, which is proven by the communications between the parties submitted by the Complainant. Therefore, the Respondent registered and used the disputed domain name in bad faith. B. Respondent In summary, the Respondent contends the following: The Respondent started the “Clever Cloud-Project” in 2015 to fabricate and distribute a coloring book. There is a detailed concept and business plan for the project. The cloud was chosen carefully and on the basis of various criteria. The research on trademark protection rights and potential competitors carried out in 2015 also drew the Respondent’s attention to the Complainant. However, a detailed analysis of the Complainant’s trademark rights showed that the Complainant’s trademark does not collide with the Respondent’s coloring book project. Additionally, the CLEVER CLOUD trademark is a French trademark and the coloring book will initially only be published in German-speaking countries, therefore the interests and claims do not overlap. The disputed domain name has already been used in connection with the coloring book project with the title “Clever Cloud”. The book carries a reference to the disputed domain name and an associated email address “info@clever.cloud” on the spine and in the imprint, e.g. for feedback regarding the book. The email address is further intended to be used, e.g., to register with portals of future print service providers. With the publication of the book planned for 2021, the offering of supporting material, e.g. additional coloring pictures and merchandise articles, is planned for the website under the disputed domain name. Accordingly, it is undoubtedly clear that the disputed domain name was already used before the Complaint was received and intensive preparations for further use of the disputed domain name are ongoing. The disputed domain name was registered and used in good faith to realize the described coloring book project. There was no specific intention at any time to sell the disputed domain name for profit. The communications documented by the Complainant extend over several years and clearly prove that the Respondent exclusively reacted to the Complainant’s messages rather than proactively requested a purchase of the disputed domain name. Legal conflicts have always been considered and the Respondent never impaired the Complainant’s rights. 6. Discussion and Findings On the basis of the facts and evidence introduced by the parties, and with regard to paragraphs 4(a), (b) and (c) of the Policy, the Panel concludes as follows: A. Language of the Proceedings While the Registration Agreement for the disputed domain name is in German, the Complainant has pointed out in its Complaint that the Respondent’s personal website “www.benjaminpoppinga.de” is in English and the pre-complaint correspondence demonstrates the Respondent speaks English. Therefore, the Complainant has requested English to be the language of the proceedings. Paragraph 11(a) of the Rules stipulates that, “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”. Taking into account the circumstances of this case, the Panel does not consider it prejudicial to the Respondent if English were adopted as the language of the proceedings. The Panel finds that substantial additional expense and delay would likely be incurred if the Complaint and annexes thereto had to be translated into German. In view of the Policy aim of facilitating a time and cost-efficient procedure for the resolution of domain name disputes, the Panel finds it appropriate to exercise its discretion according to paragraph 11(a) of the Rules and allow the proceedings to be conducted in English. B. Identical or Confusingly Similar Since the Complainant’s representative, who is the President of the company, has registered the CLEVER CLOUD trademark. The Complainant has submitted sufficient evidence to demonstrate its rights in the CLEVER CLOUD trademark in France for the purpose of the Policy. The CLEVER CLOUD trademark is wholly reproduced in the disputed domain name A domain name is identical or confusingly similar to a trademark for the purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of other terms in the domain name (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). Where the applicable Top-Level Domain (“TLD”) (in this case “.cloud”) and the second-level portion of the domain name in combination contain the relevant trademark, panels may consider the domain name in its entirety for purposes of assessing confusing similarity (e.g., for a hypothetical TLD “.mark” and a trademark TRADEMARK, the domain name Therefore, the Panel concludes that the disputed domain name is identical to the Complainant’s CLEVER CLOUD trademark. The Complainant has thus satisfied the requirement under paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests The Respondent alleges that he has already used the disputed domain name in connection with his coloring book project for some time and that he intends to further use the disputed domain name and an associated email address for the planned publication of his coloring book in 2021. Further, the Respondent contends that he never intended to sell the disputed domain name for profit. The Complainant contends that the Respondent never acquired any trademark or service mark rights directly or indirectly related to the disputed domain name and that the Respondent’s only interest in the disputed domain name is to sell it at the highest possible price. The Respondent has submitted evidence, a business plan and pictures of the coloring book, to prove his legitimate interests in the disputed domain name. The Panel finds on balance that the Respondent pursues this project and that he, upon research and analysis, assumed that the Complainant’s trademark does not collide with his coloring book project. Accordingly, the Respondent has provided evidence for the purpose of the Policy that he had made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Regarding the Respondent’s alleged only interest to sell the disputed domain name, the Panel finds the Complainant’s arguments unconvincing because the Respondent only rarely responded to the Complainant’s attempts to buy the disputed domain name and never contacted the Complainant. The Respondent did not contact the Complainant; it was Complainant who reached out first. There are no indications before the Panel that the Respondent actually tried to sell the disputed domain name to the Complainant, or to third parties via Sedo. Therefore, the Respondent’s conduct in using the disputed domain name can be considered a bona fide offering of goods. Based on the Respondent’s contentions and evidence submitted, the Panel finds on balance that the Complainant, having made out a prima facie case which was rebutted by the Respondent, has not fulfilled the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith The Respondent alleges that he has registered the disputed domain name in 2016 in good faith to use for his coloring book project, and that he analyzed the Complainant’s CLEVER CLOUD trademark but came to the conclusion that due to the different classifications of the CLEVER CLOUD trademark and the coloring book project, the Complainant’s rights were not impaired by the Respondent’s registration and use of the disputed domain name. Further, there was no intention at any time to sell the disputed domain name for profit and any statements regarding a possible value of the disputed domain name were made because of the efforts invested in the described coloring book project for several years. The Complainant alleges that the Respondent’s only interest in the disputed domain name is to sell it to the Complainant at the highest possible price and that the disputed domain name was registered and used in bad faith. The Panel has considered the parties’ contentions and come to the conclusion that the disputed domain name was registered in good faith because the Respondent has credibly contended that the Complainant’s trademark rights are not impaired by the Respondent’s coloring book project. The disputed domain name is further considered to be used in good faith because the Panel is not convinced by the Complainant’s arguments that the Respondent’s only interest in the disputed domain name is to sell it to the Complainant at the highest possible price. Accordingly, the Complainant has not fulfilled paragraph 4(a)(iii) of the Policy. 7. Decision For the foregoing reasons, the Complaint is denied. Tobias Zuberbühler
Sole Panelist
Date: December 21, 2020
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