The Complainant is Coccinelle S.p.A of Sala Baganza, Italy, represented by LGA - Studio Legale Lucchini Gattamorta e Associati, Italy.
The Respondent is Kaoyuanws Trade of Hamburg, Germany. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with SIDN through R. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 10, 2017. On the same date, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On February 13, 2017, 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 February 15, 2017. In accordance with the Regulations, article 7.1, the due date for Response was March 7, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 8, 2017.
The Center appointed Willem J. H. Leppink as the panelist in this matter on March 15, 2017. 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 following facts are undisputed:
The Complainant is an Italian fashion company established in Parma, Italy in 1978. Coccinelle is a
widely-known international brand for bags and accessories.
The Complainant is the owner of a large number of registrations for the COCCINELLE trademark in various countries, including but not limited to the European Union Trademark COCCINELLE, registration number 000969626, registered on February 15, 2000 and with a filing date of October 27, 1998 (the "Trademark").
The Domain Name was registered by the Respondent on September 8, 2016. The Domain Name resolves to a website which appears to sell the Complainant's products (the "Website"). 5. Parties' Contentions A. Complainant
Insofar as relevant, the Complainant contends the following.
The Domain Name is confusingly similar to the Trademark. The Trademark is identical to the "coccinelle" element in the Domain Name, being the distinctive part of the Domain Name. The mere addition of the element "amsterdam" does not prevent the likelihood of confusion for the relevant Internet users. The term "Amsterdam" is merely a geographical description and the consumers will pay attention to the characterizing element "coccinelle".
The Respondent does not have any kind of relationship with the Complainant and is not authorized to use the Complainant's name or Trademark for a website selling Coccinelle products. By doing so, the Respondent is likely to mislead and deceive consumers into believing that the Respondent has a commercial relationship with the Complainant. The Respondent's Website is making false representations in that regard. The use of the Domain Name constitutes trademark infringement and is causing confusion as to the identity of the entity operating the Website. The Internet user will likely believe that the Website is operated by or under the control of the Complainant. The Complainant submits that, even when assuming that the products offered for sale on the Website are genuine Coccinelle branded products, the Respondent's use of the Domain Name does not amount to a bona fide offering of goods or services. The Website does not accurately and prominently disclose the Respondent's relationship with the Complainant, nor does it provide any contact information regarding the Respondent.
By choosing the Domain Name incorporating the Complainant's well-known Trademark, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its Website by creating a likelihood of confusion with the Trademark as to the source, sponsorship or affiliation or endorsement of the Website, which amounts to bad faith registration and use under the Regulations, irrespective of whether the goods offered for sale on the Website are indeed genuine. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Pursuant to article 2.1 of the Regulations the Complainant must prove each of the following three elements:
a. the Domain Name is identical or confusingly similar to:
I) a trademark or trade name protected under Dutch law in which the Complainant has rights; or
II) a personal name registered in the General Municipal Register (Gemeentelijke Basisadministratie) of a municipality in the Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in the Netherlands under which the Complainant undertakes public activities on a permanent basis; 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.
As the Respondent has not filed a response, the Panel shall rule on the basis of the Complaint. In accordance with article 10.3 of the Regulations, the Complaint shall in that event be granted, unless the Panel considers it to be without basis in law or in fact. A. Identical or Confusingly Similar
Pursuant to article 2.1(a) under I of the Regulations, the Complainant must establish that the Domain Name is identical or confusingly similar to a trademark or trade name in which the Complainant has rights.
The Complainant has shown that it has rights in the Trademark.
The Domain Name incorporates the Trademark in its entirety and adds the geographical term "Amsterdam". The Panel finds that the dominant part of the Domain Name is "coccinelle" and that the addition of the element "Amsterdam" does not neutralize the similarity with the Trademark. The Panel finds that the Domain Name is confusingly similar to the Trademark for purposes of the Regulations.
The Complainant has established the first element of article 2.1 of the Regulations. B. Rights or Legitimate Interests
Pursuant to article 2.1 of the Regulations, the Complainant must demonstrate that the Respondent has no rights to or legitimate interests in respect of the Domain Name. The Respondent may demonstrate such rights or legitimate interests on its part inter alia through the following circumstances listed in article 3.1 of the Regulations:
a. before having any notice of the dispute, the [Respondent] made demonstrable preparations to use the Domain Name (or a name corresponding to the domain name) in connection with a bona fide offering of goods or services;
b. the [Respondent] as an individual, business or other organization is commonly known by the Domain Name;
c. the [Respondent] is making a legitimate noncommercial use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish or otherwise damage the relevant trademark, trade name, personal name, name of a Dutch public legal entity or name of an association or foundation located in the Netherlands.
The Complainant alleges that the Respondent has no rights to or legitimate interests in the Domain Name for the reasons listed above under Section 5.A. The Panel is satisfied that the Complainant has made out a prima facie case that the Respondent lacks rights to or legitimate interests in the Domain Name.
If and to the extent the Respondent can be viewed as a genuine reseller, the Panel notes that the Respondent does not meet the requirements of the Oki Data test1 as the Website does not accurately disclose the Respondent's (lack of) relationship with the Complainant. However that may be, the record before the Panel gives rise to doubts whether this case should even reach the Oki Data test.
In this regard, the Panel notes that, in accordance with article 16.4 of the Regulations, the Center has fulfilled its obligation to employ reasonably available means to achieve actual notice of the Complaint to the Respondent; the Center even used the "contact us" form on the Website. However, the Written Notice to the postal address as provided to SIDN by the Respondent at registration of the Domain Name was undeliverable. The Panel also notes that no response has been submitted, that no address or commercial register details are included in the contact details on the Website, and that the Respondent's rather particular email address appears to bear no connection to the stated (or any other) business, and indeed does not provide any other relatable name or identity as would be expected in legitimate circumstances. The Panel considers that these circumstances, similar to those of "Dr. Martens" International Trading GmbH and "Dr. Maertens" Marketing GmbH v. Katja Braun's nets,WIPO Case No. DNL2016-0060, cast doubt on the authenticity of the Respondent's operations for purposes of the Regulations.
In conclusion, the Panel finds that the Domain Name was not used in connection with a bona fide offering of goods or services, and that the Respondent lacks rights to or legitimate interests in the Domain Name.
The Complainant has thus established the second element of article 2.1 of the Regulations. C. Registered or Used in Bad Faith
In light of its considerations under Section 6.B, the Panel finds that the Domain Name has been registered and used in bad faith. The Respondent has used the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its Website, by creating a likelihood of confusion which may arise with the Trademark as to the source, sponsorship and endorsement of the Website. This constitutes evidence of bad faith registration and use in accordance with article 3.2(d) of the Regulations.
The Panel finds that the Complainant has also established the third element of article 2.1 of the Regulations. 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 J. H. Leppink
Panelist
Date: March 24, 2017
1 The decision in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 guides the question as to whether a reseller is using a disputed domain name connection with a bona fide offering of goods or services. Having been rendered under the Uniform Domain Name Dispute Resolution Policy ("UDRP") this decision has been confirmed to be of relevance for the Regulations, inter alia in Seiko EPSON Corporation v. ANEM Computers / ANEM,WIPO Case No. DNL2010-0024 and Maison Louis Latour v. Jos Beeres Wijnkoperij, WIPO Case No. DNL2011-0074.
Full & Egal Universal Law Academy