The Complainant is LELOi AB of Stockholm, Sweden, represented by von lode advokat ab, Sweden.
The Respondent is WebXclusive V.O.F. of Prinsenbeek, the Netherlands, internally represented. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with SIDN through TransIP BV. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2015. On December 1, 2015, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On December 2, 2015, SIDN transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on December 3, 2015. In accordance with the Regulations, article 7.1, the due date for Response was December 23, 2015. The Respondent filed an email communication (including attachments) with the Center on December 3, 2015. The Center informed the Respondent that if no further communications or formal Response would be received by the due date for Response, the Respondent’s email communication of December 3, 2016 would be regarded as the Response. Having received no further communications from the Respondent the Center, on December 28, 2016, informed the parties that the email communication of December 3, 2016 would be regarded as the Response and forwarded to SIDN.
On January 5, 2016 SIDN commenced the mediation process. On February 15, 2016, SIDN informed parties that the dispute had not been solved in the mediation process.
The Center appointed Willem Hoorneman as the panelist in this matter on February 23, 2016. 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
The Complainant is holder of, inter alia, the following registrations for its trademark LELO (the “Trademark”):
- Community Trademark no. 009574906 LELO (word), filed on December 6, 2010 and registered on June 24, 2015, covering goods of international class 35;
- Community Trademark no. 012798567 LELO (word), filed on April 16, 2014 and registered on September 10, 2014, covering goods of international classes 03, 09 and 10.
The Domain Name was registered by the Respondent on June 11, 2013. The Domain Name resolves to a webshop where Complainant’s products are offered for sale. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s Trademark. The mere addition of the word “store” after the Trademark does not serve to distinguish the Domain Name from the Trademark as it only suggests that the products concerned can be bought online through the website of the Respondent.
Furthermore, the Complainant states that the Respondent has no rights or legitimate interests in the Domain Name. The Respondent has no connection with the Complainant, nor has the Respondent been otherwise allowed by the Complainant to make any use of its Trademark.
The Complainant contends that the Respondent has registered and is using the Domain Name in bad faith as (1) the Respondent must have known of the existence of the Complainant as well as the Trademark when registering the Domain Name and (2) the Respondent sells goods that originate from the Complainant. B. Respondent
The Respondent argues that it is a legitimate reseller as it acquires the original Lelo products from one of Lelo’s official distributors. The Respondent contends that it has registered and uses the Domain Name in good faith. The visitors of the website are not confused as there is no suggestion of a relationship between the Respondent and the Complainant. The identity of its own firm Weblectronics is sufficiently exposed on the website by using the phrase “Welkom bij webshop keten Weblectronics. Weblectronics biedt een breed assortiment aan Lelo producten”1 on a prominent place on the website. The Respondent solely uses, as a trade name, the word “Weblectronics” on its website to identify its company. Moreover, the Respondent has refrained from using any logo’s or any other part of the Complainant’s corporate identity on the website. The Trademark is only used in the Domain Name to identify that the respective products are sold via the Respondent’s website.
Finally, the Respondent asserts that it has used the Domain Name for a number of years and has substantially invested in the Domain Name. The Complainant was aware of this use of the Domain Name but has only now submitted the Complaint. 6. Discussion and Findings
Pursuant to article 2.1 of the Regulations, the Complainant’s request to transfer the 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.
The Respondent may demonstrate such rights or legitimate interests on its part, inter alia, through the circumstances mentioned in article 3.1 of the Regulations. The Complainant may provide evidence that the Domain Name has been registered or is being used in bad faith, inter alia, through the circumstances mentioned in article 3.2 of the Regulations. A. Identical or Confusingly Similar
It is established case law that the country code Top-Level Domain (“ccTLD”) “.nl” may be disregarded in assessing the similarity between the domain name on the one hand, and the relevant trademark on the other hand (see: Taylor Made Golf Company, Inc. v. Lotom Group S.A.,WIPO Case No. DNL2010-0067; Roompot Recreatie Beheer B.V. v. Edoco LTD,WIPO Case No. DNL2008-0008).
The Domain Name is confusingly similar to the Complainant’s Trademark, because the Domain Name incorporates the Trademark in its entirety. The Domain Name differs from the Trademark only in that the Trademark is followed by a generic or descriptive term, namely “store”. The addition of such a generic or descriptive term does not eliminate the confusing similarity with the Trademark (see Seiko EPSON Corporation v. ANEM Computers / ANEM,WIPO Case No. DNL2010-0024, in which case the word “shop” was considered descriptive and generic).
Therefore, the Panel finds that the Domain Name is confusingly similar to the Trademark within the meaning of the Regulations. The Complainant has thus established the first element of article 2.1 of the Regulations. B. Rights or Legitimate Interests
While the overall burden of proof rests with the complainant, previous panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied the second element of article 2.1 of the Regulations.
The Respondent has asserted that it is a legitimate reseller of Lelo products. The Complainant on the one hand asserts that the Respondent is not a legitimate reseller, but on the other hand asserts that the Respondent (re)sells goods that originate from the Complainant. As both parties therefore agree that the Respondent resells original goods from the Complainant, and the Complainant has not shown that the resale of these goods infringe its trademark rights, the Panel finds that the Respondent is a legitimate reseller of Lelo products.
However, only under specific circumstances may a reseller of trademarked goods have a legitimate interest in a domain name incorporating the trademark of the original manufacturer. Pursuant to the UDRP2 panel decision in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, the use of a trademark in a domain name by an authorized sales agent of trademarked goods may be considered a bona fide offering of goods, constituting a legitimate interest, if several requirements are met. In later decisions under both the Regulations and the UDRP, the same has been acknowledged in respect of such use by an (unauthorized) reseller, such as the Respondent (see, amongst others: Maison Louis Latour v. Jos Beeres Wijnkoperij,WIPO Case No. DNL2011-0074; and Seiko EPSON Corporation v. ANEM Computers / ANEM, supra.
The referenced requirements include, at minimum, the following:
a) the Respondent must actually offer the goods and services at issue;
b) the website must sell only the trademarked goods;
c) the website must accurately and prominently disclose the Respondent’s relationship with the Complainant; and
d) the Respondent must not try to “corner the market” in domain names that reflect the Trademark.
The Panel notes that the website under the Domain Name prima facie meets the requirements under a, b and d.
The question is, however, whether the website of the Respondent, that is used under the Domain Name, does accurately and prominently disclose the Respondent’s relationship, or absence of it, with the Complainant.
On the one hand, the website is solely used for selling products originating from Complainant. Moreover, the Respondent;s website includes a statement welcoming visitors to the webshop of the (retail) chain Weblectronics and stating that Weblectronics offers a broad range of Lelo products on the website.
On the other hand, the Respondent does not expressly disclose that it is not an official distributor of the Complainant. In fact, certain statements on the website (e.g., “Lelo vibrators koopt u bij de Lelo Store van Nederland”, translation: “Lelo vibrators are sold at the Netherlands Lelo Store”), that are displayed on the print screen submitted by the Complainant, suggest that the Respondent is an official distributor of the Complainant. The website at the disputed Domain Name in its current format does therefore not meet the Oki Data criteria. Therefore the Respondent, for purposes of the Regulations, has not been using the Domain Name for a bona fide offering of goods or services.
Based on the foregoing, the Panel is of the opinion that the Respondent has no rights to or legitimate interests in the Domain Name under the Regulations. C. Registered or Used in Bad Faith
The Respondent has, according to the information submitted by the Complainant – which has not been disputed by the Respondent –, been using the Domain Name for (re)selling original products of the Complainant for as long as the Domain Name has been registered. The registration of the Domain Name predates the registration of the Trademark (which however was applied for prior to the registration of the Domain Name), the Respondent is therefore most likely to have known of the Complainant, its products, (other) trademarks and domain names (e.g., ) prior to registering the Domain Name. As such, given the fact that the LELO brand of the Complainant was known to the Respondent, registration in bad faith can be inferred.
As regards the use of the Domain Name, the Panel agrees that even given the fact that the Respondent offers genuine Lelo goods (e.g., as a non-authorised reseller), misleading Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business, or that the Respondent’s activities are approved or endorsed by the Complainant, indicates bad faith (see Swarovski Aktiengesellschaft v. S ,WIPO Case No. D2013-1529, and also Swarovski Aktiengesellschaft v. bingbing chen,WIPO Case No. D2011-1524).
Therefore, the Panel finds that the Respondent registered and is using the Domain Name in bad faith. The third requirement of the Regulations has been 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 the Complainant.
Willem Hoorneman
Panelist
Date: April 8, 2016
1 Translation: “Welcome to the webshop of the (retail) chain Weblectronics. Weblectronics offers a broad range of Lelo products”.
2 The mechanism of the Regulations is in part comparable to the Uniform Domain Name Dispute Resolution Policy “UDRP”). The Panel will refer to the UDRP where applicable.
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