WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Orchestra-Premaman Belgium v. Ascione Antonella, Flay Di Ascione Antonella

Case No. D2017-1196

1. The Parties

The Complainant is Orchestra-Premaman Belgium of Bruxelles, Belgium, represented by Cabinet Brev&Sud, France.

The Respondent is Ascione Antonella, Flay Di Ascione Antonella of Fiano Romano, Italy, represented by Helenio Francesco Maiello, Italy.

2. The Domain Name and Registrar

The disputed domain name <premamanonline.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 21, 2017. On June 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 22, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On June 29, 2017, the Center notified the Parties in both English and French that the language of the Registration Agreement for the disputed domain name was English. On the same day, the Complainant requested for French to be the language of the proceeding, to which the Respondent opposed to July 4, 2017 requesting English to be the language of the proceeding.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("the Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2017. The Response was filed with the Center on August 1, 2017.

The Center appointed Philippe Gilliéron as the sole panelist in this matter on August 16, 2017. 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 Rules, paragraph 7.

On August 29, 2017, the Panel issued Administrative Procedural Order No. 1 requesting the Complainant to provide evidence of its letter (to which the Respondent responded by email dated April 1, 2017) offering to explore amicable settlement options, of the Respondent's reply to this letter refusing to explore such options, and requesting the Respondent to provide a translated version in English of the Italian Supreme Court Decision quoted in its Response.

The Complainant and the Respondent made supplemental filings respectively on August 30, 2017 and September 6, 2017.

4. Factual Background

The Complainant is a Belgian company which is active in the trade of clothes and accessories for babies since 1968 and which, since 2012, belong to the Orchestra group.

The Complainant holds several trademarks consisting of the word PREMAMAN, such as:

- Int. Reg. No. 395559 (fig.) filed on December 14, 1972 under classes 2, 3, 5, 8, 9, 10, 11, 15, 16, 17, 18, 20, 21, 22, 24, 25, 26, 27 and 28, protected in France, Germany and Switzerland;

- Int. Reg. No. 826792 filed on May 13, 2004 under classes 12, 20 and 25 in numerous countries, notably in the European Union ("EU").

The Complainant also owns numerous national trademarks consisting of the word PREMAMAN in Benelux and France.

The Complainant registered the domain name <premaman.be> on April 4, 1995 and <premaman.com> on July 19, 1996.

On May 31, 2012, the Respondent registered <premamanonline.com>. The website attached to the domain name sells clothes for pregnant women and delivers in Belgium, France, Germany, Great Britain, Italy, Spain and Switzerland.

On February 14, 2017, the Complainant filed a cease-and-desist letter to the Respondent, drawing its attention upon its trademarks' rights and inviting it notably to immediately stop using the disputed domain name <premamanonline.com> and to transfer it to the Complainant. Following a response received from the Respondent on April 1, 2017, the Complainant reiterated its request in a letter of April 14, 2017.

5. Parties' Contentions

A. Complainant

The Complainant first argues that the domain name <premamanoline.com> is similar to its trademarks PREMAMAN as it fully incorporates the Complainant's trademark PREMAMAN and the mere addition of a descriptive term such as "online" does not enable to exclude the likelihood of confusion resulting from the entire capture of its PREMAMAN trademarks.

The Complainant further considers that the Respondent would have neither rights nor a legitimate interest in the disputed domain name. The Complainant would never have authorized the Respondent to use its PREMAMAMN trademarks. The latter does not own any registered trademark consisting of the term PREMAMAN. The activities carried out by the Respondent through the website attached to the disputed domain name cannot amount to a legitimate interest as these clearly infringe upon the Complainant's trademarks and amount to free-riding.

The Complainant finally claims that the disputed domain was registered and is being used in bad faith. Considering the Complainant's reputation, such registration cannot be the result of a mere coincidence, and the Respondent was obviously aware of the Complainant's trademarks when it registered the disputed domain name <premamanonline.com>. According to the Complainant, the use made by the Respondent demonstrates a clear intent to benefit from the Complainant's reputation that cannot be considered as a use in good faith, as demonstrated by the registration by the Respondent of the domain names <premamanonline.co.uk>, <premamanoline.it>, <premamanonline.es> and <premamanonline.fr> which resolve to the same website selling clothes for pregnant women.

B. Respondent

The Respondent argues that most of the Complainant's trademarks are combined ones, and that Complainant is not the only trademark holder to own brands consisting of the term "PREMAMAN". As an example, the Italian company PRENATAL S.p.A filed on April 30, 1955 the Int. Reg. No. 184487A PREMAMAN (figurative) trademark that is still active. The Italian Supreme Court would also have considered on November 28, 1984 that the sign PREMAMAN was to be considered descriptive; although requested to do so, the Respondent however did not provide an accurate English translation of that ruling. In any case, and as a result of the above, the Respondent considers that the Complainant would not be in a position to invoke any exclusive rights in Italy.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to "[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

Prior to turning to the merits of the case, the Panel however has to address a formal issue regarding the language of the proceedings.

A. Language of the proceedings

The Complaint was filed in French on June 21, 2017.

On June 29, 2017, the Center notified the Parties in both English and French that the language of the Registration Agreement for the disputed domain name was English. The Center invited the Complainant to provide satisfactory evidence of an agreement between the parties to the effect that the proceedings should be in French, to submit the Complaint translated in English or a request for French to be the language of the proceedings.

In its Complaint, confirmed by email of June 29, 2017 the Complainant requested the proceedings to take place in French, based upon the following arguments: clicking on the French flag available on the disputed domain name leads users to the domain name <premamanonline.fr>, which is fully displayed in French; in addition, the Respondent would own accounts on several social medias displaying several publications in French related to the website attached to the domain name <premamanonline.fr>. The Respondent further argues that, all in all, fairness requires Respondent to conduct the proceedings in French, as Respondent would, unlike the Complainant, be a company that would have the financial resources to do so.

On July 4, 2017, the Respondent opposed for French to be the language of the proceedings. No agreement has ever been made between the Parties to that effect. There would be no reason to deviate from English as language of the proceedings, which would constitute an undue advantage for the Complainant, all the more as the Respondent's counsel is only fluent in Italian and English.

Based upon the above, the Panel considers that there is no reason for French to be the language of the proceedings. It was up to the Complainant to file its Complaint in English in the first place, and the fact that <premamanonline.fr> is displayed in French leads to no different conclusion, all the more than the website at stake in the present case is <premamanonline.com>. Absent any agreement between the parties to that effect, the decision shall be rendered in English.

B. Identical or Confusingly Similar

According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant holds numerous word trademarks throughout the world consisting of the word "PREMAMAN".

UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629). This is all the more true when the inserted trademark consists of the dominant part of the disputed domain name, and that the added elements are merely descriptive.

Such happens to be the case. The applicable generic Top-Level Domain name ("gTLD"), in the present case ".com", is usually disregarded under the confusing similarity test and the addition of a descriptive term such as "online" does not exclude the confusing similarity (see, among others: Playboy Entreprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768; Inter-IKEA Systems B.V. v. Evezon Co. Ltd, WIPO Case No. D2000-0437; Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363).

As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.

C. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.

In the present case, the Respondent proves to have put in place an e-commerce website selling clothes, similar to the ones of the Complainant, that not only delivers its products in Italy, but also in Belgium, France, Germany, Great Britain, Spain and Switzerland.

While the Complainant does indeed prove to own a PREMAMAN trademark, including in Italy, the Panel considers the trademark – while certainly valid in terms of its registration in a number of EU countries – to largely be descriptive of the products sold by the parties. All in all, the Panel considers that Respondent is arguably using the domain name <premamanonline.com> in an acceptable manner. A number of questions have to be weighed up and determined in proper context. The relevant context in this particular case includes that, at least on the face of it, there is no evidence of misuse of the disputed domain name so as to target the Complainant as opposed to using the disputed domain name descriptively and while it is not necessarily clear that the Respondent relied as such on this there was inaction on Complainant's part (in this case arguably in the order five years).

Similarly to the Panel in WIPO Case No. D2016-0561, NYLSTAR S.A. v. Domain Administrator, Meryl Blog, the Panel hereby considers that is not unreasonable that relevant delay in taking legal action against the registration and the use of the disputed domain name can be taken into account. It seems extreme to say as some panels have said that it is wholly irrelevant and cannot even be looked at. Further, the Panel respectfully adopts the position that this is contrary to the Rules which make it clear that the Panel is able to take any relevant consideration into account particularly "principles of law."

The present case typically is one where delay and the overall circumstances can and should be taken into account. The domain name <premamanonline.com> was registered in May 2012 apparently for its descriptive nature; from then on, the Respondent has developed a business, marketing and selling clothes and related accessories more particularly to pregnant women. Having carried out such an activity for five years without having encountered any reaction from the Complainant, the Respondent over the years may have developed a legitimate expectation as to its business which, five years later, cannot be considered as per se excluding any legitimate interest in the domain name. Such circumstances need to be taken into account and the respective interests of the parties balanced, as best the Panel can.

D. Registered and Used in Bad Faith

For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).

For the same reasons, the Panel finds it hard to assess that the disputed domain name was registered and is being used in bad faith. Although the Panel is not prepared to deem the Complainant's trademark registrations as carrying no weight, given the descriptive nature of the disputed domain name the Complainant does not provide adequate details in regard to bad faith registration.

In the Panel's view, this typically is a case which is out of scope of the proceedings and should be reverted to a Civil Court to rule on the substance of the matter.

7. Decision

For the foregoing reasons, the Complaint is denied.

Philippe Gilliéron
Sole Panelist
Date: September 11, 2017