The Complainants are Verisure Sàrl, Switzerland and Securitas Direct AB, Sweden (jointly referred to as the “Complainant”), represented by BrandIT GmbH, Switzerland.
The Respondent is Emiel Timmerman, Netherlands.
2. The Domain Name, Registry and RegistrarThe Registry of the disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2021. On October 18, 2021, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On October 19, 2021, the Registry transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 1, 2021, providing the registrant and contact information disclosed by the Registry, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 5, 2021.
The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 10, 2021. In accordance with the ADR Rules, Paragraph B(3)(a), the due date for Response was December 22, 2021. The Respondent did not submit a formal response to the Complaint. Accordingly, the Center notified the Respondent’s default on December 27, 2021. The Respondent however sent two informal emails to the Center, on November 10 and December 28, 2021.
The Center appointed Edoardo Fano as the sole panelist in this matter on January 5, 2022. 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 ADR Rules, Paragraph B(5).
The language of the proceeding is English, being the language of the Registration Agreement, as per Paragraph A(3)(a) of the ADR Rules.
4. Factual BackgroundThe Complainant is Verisure Sàrl, a Swiss company operating in the field of professionally monitored security solutions, together with Securitas Direct AB, a Swedish parent company of the former. Verisure Sàrl owns several trademark registrations for VERISURE, among which the following ones:
- European Union Trade Mark Registration No. 006674915 for VERISURE, registered on March 26, 2010;
- European Union Trade Mark Registration No. 010532737 for VERISURE SMART ALARM, registered on May 9, 2012.
The Complainant operates on the Internet, owning several domain name registrations for VERISURE, among which
The Complainant provided evidence in support of the above.
The disputed domain name
On August 13, 2021, the Complainant’s representatives sent a cease-and-desist letter to the Respondent and on August 20, 2021, the Respondent replied stating the following:
“I have claimed this domain name because it is free to claim at first. It is very unusual that any domain name is claimable or is forgotten to claim. If Verisure is so extremely vigilant and puts pressure on this ownership, than it is strange that this name verisurealarm is at least not claimed as an own domain name. We have an new concept launched in April wherewith we verivicate alarms. In this concept fits the domain name verisurealarm as verisure an alarm. The name verisurealarm as whole together is not an registerd trademark. Verisure and alarm are only common words. Normally it can work together and sterngthen the both concepts. The Synergy of these could be an win win for the both companys. We do not see this as any issue at all. Hoping to have informed you enough with this.”
5. Parties’ Contentions A. ComplainantThe Complainant states that the disputed domain name
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, nor is the Respondent commonly known by the disputed domain name. The Complainant asserts the Respondent is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since the Complainant’s trademark VERISURE is distinctive and internationally known. Therefore, the Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain name, with the purpose to intentionally attract, for commercial gain, Internet users and to create a likelihood of confusion with the Complainant’s trademark as to the disputed domain name’s source, sponsorship, affiliation or endorsement, especially because the Respondent operates in the same field as the Complainant.
B. RespondentThe Respondent did not submit a formal response to the Complainant’s contentions.
The Respondent submitted two informal email communications, on November 10 and December 28, 2021, stating the following:
“Every e mail with zip files wont be opend! As i mentioned in every email we are open for discussion. If you have any juridic informaition pls send it in our language, Dutch. We are not satisfied with warnings about something where your client has some shortcomings. As i told before ignociate and discus your clients problems so we can find a proper solution for the both of us. If you still continue with this juridic mail transmissions and threts we are wortly to take public actions.” (November 10, 2021)
“As you have seen in the previous emails i have responded. At every mail and had no anser at all at my questions.” (December 28, 2021)
6. Discussion and FindingsAs stated in paragraph A(1) of the ADR Rules “[the] ADR Rules are applicable to domain name disputes where the domain name has been registered under the .eu Top Level Domain”. Article 22(2) of the Commission Regulation (EC) No 874/2004 of April 28, 2004 laying down public policy rules concerning the implementation and functions of the .eu Top Level Domain and the principles governing registration states that “[p]articipation in the ADR procedure shall be compulsory for the holder of a domain name”. In addition, section 15 of the Domain Name Registration Terms and Conditions for “.eu” domain names states that: “[t]he Registrant must participate in ADR Procedures if a third party (a ‘Complainant’), in compliance with the Dispute Resolution Rules, assents to an ADR Provider and initiates a complaint against the Registrant on the basis of speculative or abusive registration.”
In order to succeed in its Complaint, the Complainant is required under Paragraph B(11)(d)(1) of the ADR Rules to demonstrate the following:
(i) that the disputed domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by national law of a Member State and/or European Union law; andeither
(ii) that the disputed domain name has been registered by the Respondent without rights or legitimate interests in the name; or
(iii) that the disputed domain name has been registered or is being used in bad faith.
(i) Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or European Union law
The Panel finds that the Complainant is the owner of the European Union Trade Mark VERISURE and that the disputed domain name
Regarding the addition of the term “alarm”, the Panel notes that it is now well established that the addition of terms or letters to a trademark in a domain name does not prevent a finding of confusing similarity between the domain name and the trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti,WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713). 1 The addition of the term “alarm” does not therefore prevent the disputed domain name from being confusingly similar to the Complainant’s trademark.
It is well established in decisions under the ADR Rules that the country-code Top-Level Domain (“ccTLD”) “.eu” is typically ignored when assessing the similarity between a trademark and a domain name.
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to Paragraph B(11)(d)(1)(i) of the ADR Rules.
(ii) Rights or Legitimate Interests
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that it has no relationship or association with the Respondent, and has not authorized the Respondent to use or register in a domain name the VERISURE trademark, that the Respondent is not commonly known by the disputed domain name and is not using it in connection with the offering of goods or services, or making a legitimate noncommercial or fair use of it.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it. The Respondent has not claimed any rights or legitimate interests in his emails of November 10 and December 28, 2021. Furthermore in his email of August 2021 (prior to this ADR proceeding) he was claiming that he wanted to launch a concept where he would “verificate alarms” but he has not provided any documentation to support this allegation.
The Panel could not find any evidence by referring to the examples listed in Paragraph B(11)(e) of the ADR Rules that:
(i) prior to commencing this proceeding the Respondent has used the disputed domain name in connection with the offering of goods or services or has made demonstrable preparations to do so; or that
(ii) the Respondent as an undertaking, organization or natural person has been commonly known by the disputed domain name; or that
(iii) the Respondent is making a legitimate and noncommercial or fair use of the disputed domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognized or established by national law and/or European Union law.
The Panel therefore finds that Paragraph B(11)(d)(1)(ii) of the ADR Rules has been satisfied.
(iii) Registered or Used in Bad Faith
According to Article 21(1) of the Regulation and Paragraph B(11)(d)(1) of the ADR Rules (ii) lack of rights or legitimate interests and (iii) registration or use in bad faith are alternative requirements. The Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name and therefore there is no need to consider also the bad faith element.
In any case, considering the international renown of the Complainant’s trademark VERISURE, the Panel considers that bad faith may exist even in cases of so-called “passive holding”, as found in the landmark UDRP decision Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In the circumstances of this case, the Panel finds that such passive holding amounts to bad faith registration and use, pursuant to Paragraph B(11)(d)(1)(iii) of the ADR Rules.
7. DecisionFor the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name
Edoardo Fano
Sole Panelist
Date: January 8, 2022
1 Considering the substantive similarities between the ADR Rules and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel also refers to UDRP cases, where appropriate.
2 As the Complainant Securitas Direct AB is located in Sweden, a Member State of the European Union, it satisfies the general eligibility criteria for registration of the disputed domain name set out in Article 4(2)(b) of Regulation (EC) No. 733/2002 as amended by Regulation (EU) 2019/517. Therefore, the Complainant is entitled to request the transfer of the disputed domain name.