Complainant is Sporoptic Pouilloux of Paris, France, represented by SCP August & Debouzy, France.
Respondent is Graasfstal Optiek B.V. of Wassenaar, the Netherlands, represented by de Merkplaats B.V., the Netherlands. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with SIDN through MoveNext - media design. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2014. On March 4, 2014, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On March 4, 2014, SIDN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 6, 2014. In accordance with the Regulations, article 7.1, the due date for Response was March 26, 2014. The Response was filed with the Center on March 26, 2014.
On April 2, 2014, SIDN commenced the mediation process. On April 17, 2014 SIDN informed parties that the dispute had not been solved in the mediation process.
The Center appointed Gregor Vos as the panelist in this matter on April 25, 2014. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2. 4. Factual Background
Complainant is Sporoptic Pouilloux S.A., a French company which markets sunglasses under the name ‘Vuarnet’.
Complainant is the owner of, inter alia, the following trademark rights:
- Community trademark registration VUARNET (word mark), no. 658278, filed on October 10, 1997 for goods in class 9;
- Community trademark registration V VUARNET (word/device mark), no. 744979, filed on January 30, 1998 for goods in class 9;
hereinafter referred to as “the Trademarks”.
Respondent is Graafstal Optiek B.V., a Dutch optician. Respondent registered the Domain Name on April 21, 2000. 5. Parties’ Contentions A. Complainant
Complainant bases its Complaint on its Trademarks.
The Domain Name is identical or confusingly similar to Complainant’s Trademarks
Complainant argues that the Domain Name is identical to the Trademarks and therefore tends to create a likelihood of confusion in the consumer’s mind. According to Complainant, consumers will undoubtedly associate the Domain Name with Complainant’s Trademarks and will believe that Respondent and Complainant are somehow connected.
Respondent has no rights to or legitimate interests in the Domain Name
Complainant argues that Respondent has no rights to or legitimate interests in the Domain Name, for the following reasons;
- Respondent is not part of Complainant’s group;
- Respondent does not distribute the VUARNET-sunglasses;
- Complainant has never granted Respondent consent to register and use the Domain Name;
- Respondent does not own any trademark related to the VUARNET sign;
- Respondent is not commonly known under the name VUARNET;
- “Vuarnet” has no meaning in the Dutch language.
Respondent has registered and is using the Domain Name in bad faith
According to Complainant, the VUARNET sunglasses are distributed and sold throughout the world, also in the Netherlands. Complainant argues that as Respondent’s website refers to the VUARNET sunglasses, Respondent must have been aware of Complainant’s rights at the time of registration. Also, Complainant argues that Respondent had the obligation to verify whether any third party had preexisting rights to the sign VUARNET, prior to registering the Domain Name. According to Complainant, the fact that Respondent has failed to do so is a strong hint of Respondent’s bad faith in registering and using the Domain Name. B. Respondent
The Domain Name is identical or confusingly similar to Complainant’s Trademarks
According to Respondent, Complainant’s Trademarks have been registered more than five years ago, which means that Complainant must prove that the Trademarks have been genuinely used in the relevant territory.
Respondent further argues that Complainant has only recently become the owner of the Trademarks (December 2013).
Respondent argues that as Complainant only recently became the owner of the Trademarks and has not produced any evidence that the Trademarks were genuinely used in the relevant territory, the Trademarks cannot be taken into account in these proceedings, especially since the Domain Name was registered thirteen years ago.
Respondent has no rights or legitimate interests in the Domain Name
Respondent argues that its sole purpose for the use of the Domain Name is the promotion and (re)selling of Vuarnet sunglasses. Respondent further contends that the Domain Name has been consistently used since its registration and that Respondent invested a lot of effort and money in developing and maintaining the Domain Name. Respondent therefore argues it has a legitimate interest in the Domain Name.
Respondent has registered or is using the Domain Name in bad faith
Respondent argues that from 2000–2008, a Distribution Agreement existed between Complainant and Hadafio B.V., a subsidiary of Respondent. According to Respondent, Hadifio was given the exclusive right to distribute the VUARNET sunglasses. 6. Discussion and Findings
Based on article 2.1 of the Regulations, a request to transfer a domain name must meet three cumulative conditions:
a. The domain name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which the complainant has rights, or other name by means of article 2.1(a) under II of the Regulations; and
b. The respondent has no rights to or legitimate interests in the domain name; and
c. The domain name has been registered or is being used in bad faith.
Considering these conditions, the Panel rules as follows. A. Identical or Confusingly Similar
Article 2.1(a) of the Regulations demands that a complainant states with good reason that the domain name in question is identical or confusingly similar to a trademark protected under Dutch law. The validity of such a trademark must be assessed on the basis of the legal status of the trademark at the time of filing the complaint.1 The Panel has established that Complainant was the owner of the Trademarks at the time the Complainant was filed. The fact that Complainant only recently became the owner prior to filing the Complaint, is not relevant.
With regard to Respondent’s contention that the Trademarks are subject to non-use (which, according to Respondent, means that Complainant may not rely on its Trademarks in these proceedings), the Panel points out that it is not for a panel in the administrative proceedings under the Regulations to decide whether or not a complainant’s trademarks are subject to non-use.2 Such a challenge to the validity of a trademark must be brought before the appropriate bodies such as the authorized courts or OHIM.
With regard to the identity or confusing similarity between the Domain Name and the Trademarks, the Panel rules as follows. The Domain Name incorporates the dominant and distinctive element of the word mark VUARNET, which is also the dominant element in the word/device mark V VUARNET. It is settled case law under the Regulations that a domain name that wholly incorporates a complainant’s registered mark may be sufficient to establish confusing similarity for the purpose of the Regulations.3
The Panel finds that the Domain Name is confusingly similar to Complainant’s Trademarks. B. Rights or Legitimate Interests
The Panel holds that it is sufficiently established that Respondent has no trademark- or trade name rights with regard to the name ‘Vuarnet’. However, this does not automatically lead to the conclusion that Respondent has no rights to or legitimate interests in the Domain Name. Such a right to or legitimate interest in the Domain Name on behalf of Respondent can exist, under the condition that Respondent meets the relevant criteria which were established in UDRP-case law and which have been adopted in case law under the Regulations, known as the Oki Data criteria.4 These criteria are:
- the respondent must actually be offering the goods or services;
- the respondent must use the website to sell only the trademarked goods (otherwise, it could be using the trademark to bait Internet users and then switch them to other goods);
- the website must accurately disclose the registrant’s relationship with the trademark owner;
- the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
The Panel reiterates that the Oki Data requirements are cumulative, which means that a respondent must meet all requirements in order to have a right to or legitimate interest in the domain name. Applied to the case at hand, the Panel holds that on the website linked to the Domain Name, sunglasses of other brands are sold as well. Moreover, the Domain Name immediately refers the Internet user to the website “/vuarnet”, which is the website of Respondent. It must therefore be concluded that not all of the Oki Data-criteria have been met.
The Panel is therefore satisfied that Respondent has no rights to or legitimate interests in the Domain Name. C. Registered or Used in Bad Faith
Article 2.1(c) of the Regulations requires that the Domain Name was registered or is being used in bad faith.
The Panel holds that is has not been sufficiently established in these proceedings that the Domain Name was registered in bad faith. Although it is likely that Respondent was aware of the Complainant and its Trademarks and specifically registered the Domain Name for the offering for sale of Vuarnet sunglasses, it is unclear what the relationship between Complainant and Respondent was at the time of registration. Respondent submitted proof from which follows that its subsidiary Hadafio was at one point the official distributor of Vuarnet in the Netherlands, at least in July 2003 (when the agreement was signed). Therefore, the Panel cannot entirely exclude the possibility that Complainant has given its consent to register the Domain Name (even though the Domain Name was registered prior to the signing of the document which Respondent submitted as Annex 6).
As to the assertion whether or not the Domain Name is being used in bad faith, the Panel rules as follows.
Regardless of the nature of the relationship between Complainant and Respondent’s subsidiary in the past, it must be held that Respondent is no longer connected to Complainant. This can be concluded from the fact that the distribution agreement ended in 2008, and the fact that Complainant has filed a complaint under the Regulations and has asked for the Domain Name to be transferred to it. In this regard, the Panel reiterates its findings under 6.B: when entering the Domain Name, the Internet user is immediately diverted to Respondent’s own website. On this website, sunglasses of other brands are sold as well. This means that Respondent is using the Domain Name for commercial gain by intentionally attracting Internet users to its website where Respondent is also offering goods of Complainant’s competitors, through trading off the goodwill of the Trademark and the likelihood of confusion which may arise with the Trademark as to the source, sponsorship and endorsement of the website. Furthermore, it currently is impossible for Complainant to exclusively market its products under the Domain Name, which is identical to its VUARNET word mark, while Respondent may very well market the Vuarnet (and other sunglasses) under its own domain name .
In the light of the above, the Panel holds that the third condition of article 2.1 of the Regulations is met. 7. Decision
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain name be transferred to Complainant.
Gregor Vos
Panelist
Date: May 7, 2014
1 See in this regard Disney Enterprises Incorporated v. Stichting Domain City,WIPO Case No. DNL2011-0009.
2 Qlik Technologies, Inc., QlikTech International AB v. You like IT VOF, Qlikworld B.V.,WIPO Case No. DNL2011-0045.
3 Altro Limited v. Handelsonderneming H.M.S. B.V.,WIPO Case No. DNL2012-0047.
4 See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, which UDRP-decision has been adopted in case law under the Regulations (for example Honda Nederland B.V. v. Hode BV, WIPO Case No. DNL2010-0077.)
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