Complainant is PEUGEOT SA, France, internally represented.
Respondent is Autobedrijf M. Lijzenga, the Netherlands, represented by De Boer & Egberts Advocaten, the Netherlands. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2019. On April 1, 2019, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Names. On April 2, 2019, SIDN transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 5, 2019, providing the registrant and contact information disclosed by SIDN, and requesting Complainant to submit an amendment to the Complaint in this light. Complainant filed an amended Complaint on April 17, 2019. The Center verified that the Complaint together with the Amended 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 April 25, 2019. In accordance with the Regulations, article 7.1, the due date for Response was May 15, 2019. On April 25, May 7, and May 15, 2019, the Center received email communications from Respondent. On May 16, 2019, SIDN commenced the mediation process. SIDN extended the mediation process several times, to an exceptional duration. On October 5, 2020, SIDN confirmed to the parties that the dispute had not been solved in the mediation process. The Center appointed Remco M.R. van Leeuwen as the panelist in this matter on November 9, 2020. 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 a French multinational manufacturer of automobiles and motorcycles sold under, amongst others, the brands “peugeot” and “citroën”. Complainant is the proprietor of various trademark registrations, including the following trademark registration valid in the Netherlands: - the International figurative mark PSA PEUGEOT CITROËN, registered on January 24, 2000, with registration number 729145, for goods and services in classes 7, 12, 35, 36, 37, 39 and 42 (the “Trademark”). The Domain Name Complainant has submitted evidence that at the time the Complaint was filed the Domain Names were not resolving to an active webpage. The Panel accessed the websites linked to the Domain Names on November 17, 2020. The Domain Names are not resolving to active websites. The Domain Names are connected to registrar/hosting parking pages. 5. Parties’ Contentions A. Complainant Complainant notes that the Trademark predates the registration of the Domain Names. Complainant argues that the Domain Names are almost identical or at least very similar to the Trademark as both Domain Names include the words “peugeot” and “citroën” with no other distinctive element. Complainant also argues that this will surely lead the average consumer to think that the Domain Names are linked to Complainant and its world-famous brands “peugeot” and “citroën” for the territory of the Netherlands. Complainant argues that Respondent has no rights or legitimate interests in the Domain Names, since Respondent is not affiliated in any way with Complainant. Complainant further argues that Respondent is not known under the name “peugeot” and/or “citroën” and is not in any way part of the network of the car manufacturer “Peugeot” and/or “Citroën”. Moreover, Respondent is not authorized through an express or implied license agreement by Complainant, or any of its affiliates, to use the names “peugeot” and “citroën” in any manner whatsoever. In addition, Complainant argues that Respondent has registered or acquired the Domain Names in bad faith, primarily for the purpose of selling the Domain Names to Complainant for remuneration in excess of Respondent’s out-of-pocket costs directly related to the Domain Names. Complainant notes that in June 2017 – after it sent a cease and desist letter to Respondent based on the infringement of it trademark rights – it offered Respondent a cost compensation for the transfer of both Domain Names. Respondent has refused this offer. Complainant requests the transfer of the Domain Names. B. Respondent Respondent’s main business is the sale and servicing of cars of the brands “peugeot” and “citroën”. Respondent claims it registered the Domain Names in good faith, confident that this was permitted. On June 15, 2017, Complainant offered Respondent cost compensation for the transfer of the Domain Names. Respondent initially refused and made a counteroffer to Complainant. On May 6, 2019, after Complainant filed the Complaint, Respondent’s representative informed Complainant that Respondent was willing to transfer the Domain Names to Complainant for the amount of cost compensation initially offered. 6. Discussion and Findings Pursuant to article 2.1 of the Regulations, Complainant’s request to transfer the Domain Names must meet three cumulative conditions: a) the Domain Name is identical or confusingly similar to: I. a trademark, or trade name, protected under Dutch law in which 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 Complainant undertakes public activities on a permanent basis; and b) 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 Complainant has submitted a copy of the registration of the Trademark demonstrating that Complainant is the holder of the Trademark. The Trademark is protected under Dutch law. The Panel may assume the validity of the Trademark and will review the Complaint on this basis. The Panel notes that it is established “.nl” case law that the country code Top-Level Domain suffix “.nl” may be disregarded in assessing confusing similarity between the relevant trademark on the one hand, and the disputed domain name on the other hand (see, e.g. Caterpillar Inc. v. H. van Zuylen Materieel,WIPO Case No. DNL2011-0073; Roompot Recreatie Beheer B.V. v. Edoco LTD,WIPO Case No. DNL2008-0008). The Domain Names include the dominant parts of Complainant’s Trademark. Consequently, the Domain Names to a high degree are textually, visually and phonetically similar. Based on the foregoing the Panel finds that the Domain Names are confusingly similar to the Trademark for purposes of the Regulations. Therefore, the first requirement of article 2.1(a) under I. of the Regulations has been met. B. Rights or Legitimate Interests Article 2.1(b) of the Regulations requires Complainant to demonstrate that Respondent has no rights to or legitimate interests in the Domain Names. This condition is met if Complainant makes out a prima facie case that Respondent has no such rights or legitimate interests and if Respondent fails to rebut this with appropriate allegations or evidence demonstrating a right to or legitimate interests in the Domain Names (see, e.g., Technische Unie B.V. and Otra Information Services v. Technology Services Ltd.,WIPO Case No. DNL2008-0002). Complainant alleges that Respondent lacks rights to or legitimate interests in the Domain Names for the reasons set out in section 5.A above. Complainant has demonstrated that the Domain Names are not resolving to active websites. Instead, the Domain Names are connected to parked domain name pages showing the Registrar’s name. Further, no commercial relationship exists between Complainant and Respondent. The Panel could not establish any indication that any of the circumstances as described in article 3.1 of the Regulations apply, nor that Respondent in any possible other way has rights to or legitimate interests in the Domain Names. The Panel finds that Complainant has fulfilled the obligation to establish prima facie that Respondent has no rights to or legitimate interests in the Domain Names. Respondent apparently has never used the Domain Names and has not advanced any reason why it registered the Domain Names. The Response primarily focusses on Respondent’s wish to settle the case and does not refute the arguments of Complainant and/or show rights to or legitimate interests in the Domain Names. Consequently, the Panel is satisfied that Respondent has no rights or legitimate interests in the Domain Names and concludes that Complainant has met the second requirement of article 2.1(b) of the Regulations. C. Registered or Used in Bad Faith When Respondent registered the Domain Names, the Trademark had already been registered and used in connection with Complainant’s activities. Complainant alleges that Respondent must have known the Trademark when it registered the Domain Names. This is also suggested by Respondent’s choice of registration, namely of Domain Names which include the dominant parts of Complainant’s Trademark. Respondent has argued that it registered the Domain Names in good faith, but has not substantiated this. The Panel notes that the Domain Names currently do not resolve to active websites. It is well established that non-use of a domain name does not prevent a finding of bad faith use under the doctrine of passive holding (see section 3.3. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).1 The record shows that Respondent was willing to transfer the Domain Names for an amount considerably exceeding the cost of registration. Noting also Respondent’s failure to use the Domain Names itself, the Panel finds it highly likely that Respondent registered the Domain Names to negotiate compensation from Complainant. The Panel finds that the requirement of registration or use in bad faith of the Domain Names pursuant to article 2.1(c) of the Regulations has been met. 7. Decision For the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain names Remco M. R. Van Leeuwen 1 In view of the fact that the Regulations are to an extent based on the Uniform Domain Name Dispute Resolution Policy (“UDRP”), it is well established that cases decided under both the Regulations and the UDRP, and therefore the WIPO Overview 3.0, are relevant to this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V., WIPO Case No. DNL2008-0050).
Panelist
Date: November 26, 2020
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