WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pneus Online Holding SARL (formerly Pneus Online Suisse SARL) v. Delti.com AG, Timon Samusch

Case No. D2011-1244

1. The Parties

Complainant is Pneus Online Holding SARL (formerly Pneus Online Suisse SARL) of Carouge, Switzerland, represented by CMS Bureau Francis Lefebvre Lyon, France.

Respondent is Delti.com AG, Timon Samusch of Hannover, Germany, represented by Hogan Lovells International LLP, Germany.

2. The Domain Names and Registrars

The disputed domain names <pneu-online.com>, <pneuonline.com> and <pneusonline.com> are registered with 1&1 Internet AG.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2011. On July 22, 2011, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain names. On July 26, 2011, 1&1 Internet AG 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 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”).

On July 27, 2011, the Center transmitted an e-mail communication to the parties in both German and English regarding the language of the proceeding. On July 29, 2011, Complainant requested that English be the language of the proceeding. On July 29, 2011 and on August 4, 2011, Respondent objected that the proceeding will be conducted in German. On August 16, 2011, Complainant replied to the objections of Respondent.

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 28, 2011. The Response was filed with the Center on August 26, 2011.

The Center appointed Alfred Meijboom as the sole panelist in this matter on September 6, 2011. 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 September 9, 2011, Complainant submitted additional observations to the Center.

4. Factual Background

Complainant filed a complaint regarding the disputed domain names in 2006, concerning the same Respondent. This complaint resulted in the decision Pneus-online Suisse SARL v. Delti.com AG, WIPO Case No. D2006-0479 (“Pneus-online”), which rejected the complaint. As the current Complaint is therefore a refiled complaint and can be qualified as a refiled complaint of the first type as meant in paragraph 6 below, the factual background of the case is largely identical to the background of Pneus-online.

Complainant’s business is the online sale of tires mostly in French speaking markets. In January 2001, Complainant has registered the domain name <pneus-online.com> and has been using this domain name in relation to a website since June 2001. On August 7, 2003, Complainant has filed a trademark application in France for the figurative trademark as well a subsequent application for an international trademark with WIPO.

Complainant has also filed a trademark application for the word mark PNEUS ONLINE in France as well as an application for an international trademark with WIPO on March 25, 2008.

Respondent is a direct competitor of Complainant and is in the business of online sales of tires at least since August 2000. Respondent has registered the disputed domain name <pneuonline.com> on June 15, 2001 and the disputed domain names <pneusonline.com> and <pneu-online.com> on May 24, 2002.

5. Parties’ Contentions

A. Complainant

Complainant has been active in selling tires through the Internet since 2001 and has been extensively using the brand name PNEUS ONLINE in France, Switzerland, Luxembourg and other countries. Complainant holds the figurative trademark and the word mark PNEUS ONLINE. The disputed domain names are identical or at least confusingly similar thereto.

Respondent has never made any legitimate use of PNEUS ONLINE as a trademark, trade name or company name. In the decision Pneus-online it was considered that it was not demonstrated that Respondent did not have a right or legitimate interest in the disputed domain names, as “Pneu Online” is a descriptive term without secondary meaning, which could be legitimately subject to registration as domain names on a “first come, first serve” basis. However, French courts have since held that the words “Pneus Online” were not purely descriptive in France at the time they were chosen. Also, at the time the disputed domain names were registered, Respondent did not have any commercial activity in French speaking countries and the disputed domain names were not used until 2003, when they were used for the website “www.123pneus.com” of Respondent. This demonstrates that Respondent did not have an interest in the French market before that time. Considering all this, Respondent has no right or legitimate interest in the disputed domain names.

Respondent has further registered and used the disputed domain names in bad faith. Respondent registered the domain name <pneuonline.com> immediately after the launch of Complainants website “www.pneus-online.com” in June 2001. Respondent was obviously aware of Complainant’s activity under the name PNEUS ONLINE. At the end of the year 2001, the Parties negotiated a cooperation under which Respondent was to supply tires to Complainant, which failed. The disputed domain names <pneusonline.com> and <pneu-online.com> were registered by Respondent in May 2002. This shows that, at least with respect to the disputed domain names <pneusonline.com> and <pneu-online.com>, the disputed domain names were registered primarily for the purpose of disrupting the business of Complainant. The Court of Appeal in Lyon has confirmed that the company ANS & Co (at that time the name of the company Pneus Online Holding SARL) had taken the decision to use the domain name <pneus-online> (and the corresponding trade name) before the registration of the disputed domain names by Respondent. Respondent has also registered other domain names including “PNEUS ONLINE” in Switzerland and Belgium between 2002 and 2006.

Respondent only started using the disputed domain names in 2003, when they were used to redirect to Respondent’s French website “www.123pneus.com”. The Lyon Court of Appeal has held that Respondent’s use of the disputed domain names constituted unfair competition and qualifies as parasitic behavior, which decision was confirmed by the French Supreme Court. The Lyon Commercial court has held that Respondent showed bad faith in trying to circumvent this decision of the Lyon Court of Appeal. This is an acknowledgement of Respondent’s bad faith.

As a result of these judgments, Respondent has no choice other than to display blank pages on the websites linked to the disputed domain names. This is damaging for Complainant’s business, whose website is exploited under similar domain names. Therefore, the disputed domain names have to be transferred to Complainant.

B. Respondent

The disputed domain names are not identical or confusingly similar to a trademark held by Complainant at the time of registration of the disputed domain names. Under the Policy, only the time of registration is relevant for the assessment in this respect. At the time of registration of the disputed domain names, Complainant had no trademark rights in the signs “Pneus Online” or “Pneus-Online.com”. Further, in 2001 Complainant acted under the name of “ANS & Co. SARL”, and continued to act under this name until 2004. Complainant therefore had no trade name rights with respect to “Pneus Online” at the time of registration. In 2001, Complainant also used the domain name <911flat6.com>. Complainant therefore acted under the names of “ANS & Co. SARL” and <911flat6.com> rather than “Pneus Online”. Complainant cannot rely on any rights resulting from the mere registration of <pneus-online.com> as such, and does not satisfy the criteria for “secondary meaning” as set out in WIPO Administrative panel decisions for the establishment of common law rights. Finally, Complainant’s device mark and word mark PNEUS ONLINE have only slightly distinctive character and therefore enjoy a limited scope of protection. This has been confirmed by a decision of the Court of Appeal in Munich.

Complainant has not sufficiently demonstrated that Respondent does not have a right or legitimate interest in the disputed domain names. Every party that wishes to register a purely descriptive term as a domain name has a legitimate interest within the meaning of the Policy according to previous WIPO Administrative Panel decisions. Also, according to previous WIPO Administrative Panel decisions a respondent has a legitimate interest if it has used the disputed domains for the bona fide offering of goods and services, or has made preparations for such use. This holds true for Respondent. Respondent has been market leader in the online tire sales since 2000. It has generated much revenue under various second level domains in 21 countries. It is part of Respondent’s marketing strategy to register and use generic second level domains in the language of various countries. Respondent has supplied customers in France since 2000, and therefore has a legitimate interest in the disputed domain names, including the years 2001 and 2002. Complainant’s claim that Respondent is no longer able to use the disputed domain names as a result of the French court decisions is incorrect, as Respondent is only prohibited to use the disputed domain names for online tire sales in France.

Complainant has not demonstrated that Respondent has registered and uses the disputed domain names in bad faith. That Respondent has also registered other domain names which include the words “PNEUS ONLINE” is irrelevant in this respect. The mere fact that Complainant has registered the domain name <pneus-online.com> before the registration of the disputed domain names by Respondent is insufficient to prove that Respondent has registered the disputed domain names in bad faith. It is also insufficient to demonstrate that Respondent should have been aware that Complainant intended to use the descriptive “Pneus Online” as a trademark. Rather, Respondent could rely in good faith on the assumption that Complainant had registered the domain name <pneus-online.com> for the same reasons as Respondent has registered the disputed domain names: in order to use the generic name to attract customers. At the time of registration, Complainant was completely unknown. Complainant has not taken the opportunity to register the domain names <pneusonline.com> and <pneu-online.com> after <pneuonline.com> had been registered by Respondent. This also shows that Respondent did not have to consider that Complainant intended to run its online tire business under the name “Pneus Online”. That the disputed domain names were not used until 2003 is insufficient to demonstrate the registration was in bad faith and meant to disrupt Complainant’s business. Respondent sold tires to French customers at the time of registration and needed time to plan its further internationalization.

Finally, Respondent does not use the disputed domain names in bad faith, as was already decided in Pneus-online.

6. Discussion and Findings

Language of the Proceedings

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The purpose of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679). In this respect, the Panel must take into account “all relevant circumstances” (SWX Swiss Exchange v. SWX Financial LTD, WIPO Case No. D2008-0400).

In this case, the language of the Registration Agreement is German.

Complainant has submitted a request that the language of the proceedings shall be English. Complainant argues that the language of the proceedings should be English because the first complaint concerning the disputed domain names, filed by Complainant in 2006, was also in English, as well as the subsequent decision in Pneus-online. Further, Complainant argues that the correspondence between the parties preceding the filing of the Complaint was in English. Complainant further argued that it would be disadvantaged if it had to translate the Complaint into German, however it indicated that it was willing to accept submission of the Response in German.

Respondent has objected to English being the language of the proceedings, and has requested that the language of the proceedings shall be German. It has further requested that the Complaint shall be translated into German. Respondent has submitted its Response in German.

Considering that:

Respondent has submitted a Response showing that it has fully understood every aspect of the Complaint by discussing the Complaint in detail and quoting various decisions in English:

the language of the decision in Pneus-online is English;

Complainant has sufficiently demonstrated that correspondence between the parties preceding the filing of the Complaint took place in the English language; and that

Complainant did not object to the Response being filed in German,

the Panel finds that it is demonstrated that Respondent is sufficiently comfortable with the English language in order to understand the Complaint. Therefore, the Panel finds that conducting the proceedings in English, and accepting that the Response was filed in German, is not disadvantageous to Respondent.

The Panel therefore decides that the language of the proceedings shall be English, and accepts the Response in German.

Admissibility of a Refiled Complaint

A "Refiled Complaint" is a subsequent complaint (whether or not precisely the same in substance) in relation to the same domain name, that is filed by the same complainant against the same respondent to a previous complaint (Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490 (“Creo”)). The present Complaint qualifies as such Refiled Complaint.

The Policy nor the Rules provide any guidance on the admissibility of Refiled Complaints. Whether a Refiled Complaint should be admitted should therefore be determined on a case-by-case basis (Creo). In several decisions, notably Creo and Grove Broadcasting Co Ltd. v. Telesystems Communications Limited, WIPO Case No. D2000-0703 (“Grove”), panelists have formulated guidelines regarding the admissibility of refiled complaints. It follows from these guidelines that the burden of establishing that the refiled complaint should be entertained under the Policy rests on the refiling complainant, and that this burden is high. Also, the grounds which allegedly justify entertaining the refiled complaint needs to be clearly identified by the refiling complainant.

Complainant has argued that it has new evidence that was not available at the time of the first Complaint. In this respect, it refers to several judgments from French and Swiss courts, as well as to the decision in Pneus Online Holding Sarl contre Delti.com AG, Timon Samusch, WIPO Case No. DCH2010-0026. According to Complainant, these judgments demonstrate that Respondent does not have a legitimate interest in the disputed domain names and that it has registered and used the domain names in bad faith.

Respondent has argued that the evidence referred to by Complainant does not present any new facts. It has argued that the judgments Complainant refers to only relate to the distinctive character of the trademark PNEUS ONLINE and the use of the disputed domain names, and do not address the legitimate interest of Respondent in the disputed domain names nor the bad faith registration of the disputed domain names by Respondent. Respondent therefore argues that the Refiled Complaint is not admissible.

In the above-mentioned decision Creo the panelist found that there are two types of refiled complaints. First, refiled complaints that concern the act which formed the basis of the original complaint. Second, refiled complaints that concern acts which have occurred subsequent to the decision on the original complaint. In the present case, the Refiled Complaint qualifies as the first type. According to the panelist in para. 6.13 of the decision in Creo the acceptance of refiled complaints of the first type should be exceptional. In the afore mentioned decision of Grove the panelist listed several circumstances which under common law can give rise to re-litigation of a case and which could be applied to such refiled complaints. One of such circumstances is the discovery of credible and material evidence which could not have been reasonably foreseen or known at trial. With respect to the discovery of new evidence, the panelist stated that: "… first, it must be shown that the evidence could not have been obtained with reasonable diligence for use at the trial: second, the evidence must be such that, if given, it would probably have an important influence on the result of the case, although it need not be decisive: third, the evidence must be such as is presumably to be believed, or in other words, it must be apparently credible, although it need not be incontrovertible".

In the present case, the Panel is of the opinion that the analysis is not materially different for civil law systems and finds that Complainant has made a prima facie case that the judgments it refers to constitute new evidence that satisfies the criteria as mentioned above. The judgments presented by Complainant were not yet rendered at the time of the decision in Pneus-online, and may potentially have an important influence on the outcome of the proceedings.

The Panel finds that the Refiled Complaint in this particular case is therefore admissible.

Admissibility of supplemental filings of Complainant

Complainant has submitted additional comments on August 16, 2011 (concerning the language of proceedings), and on September 9, 2011 (containing observations said to be in response to Respondent’s submissions). No explicit provision is made under the Rules for supplemental filings. It is therefore at the discretion of the Panel whether it will consider such supplemental filings, in accordance with ICANN Rules, paragraph 10(d).

The Panel considers that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission, that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself (The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 and the decisions referred to therein).

Complainant has not explained why the Panel should consider its supplemental filings, nor has it explained or demonstrated that its supplemental filings relate to any materials the existence or relevance of which could not have been foreseen by Complainant when submitting its Complaint. Taking this into account, and considering that the purpose of the Policy and the Rules is to provide an expeditious and relatively inexpensive procedure for determining a certain type of domain name dispute, in which each party is entitled to make just one submission (The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 and the decisions quoted therein), the Panel declines to admit Complainant’s supplemental filings.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires that Complainant demonstrates that the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights.

In the present case Complainant has sufficiently demonstrated that it holds the device mark and the word mark PNEUS ONLINE. Respondent has argued that the condition under Paragraph 4(a)(i) of the Policy is not fulfilled, as Complainant had no rights in these trademarks at the time of registration of the disputed domain names. However, paragraph 4(a)(i) of the Policy does not require that the trademark ort service mark is registered prior to the disputed domain name(s) (see also Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827). The consensus view of WIPO Administrative Panelists is that this element is more of importance with respect to paragraph 4(a)(iii) of the Policy, requiring proof of bad faith registration, than with respect to paragraph 4(a)(i) of the Policy, requiring proof of trademark rights (see also Esquire Innovations, Inc. v. Iscrub.com c/o Whois Identity Shield; and Vertical Axis, Inc, Domain Adminstrator, WIPO Case No. D2007-0856).

As it is well established that top level domain extensions such as “.com” should not be considered in the assessment under paragraph 4(a)(1) (e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), and the disputed domain names are practically identical to – at least – Complainant’s word mark PNEUS ONLINE, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii)of the Policy requires that Complainant demonstrates that Respondent has no rights or legitimate interests in the disputed domain names.

Complainant has argued that Respondent has never made any legitimate use of “Pneus Online” as a trademark, trade name or company name, did not have any commercial activity in French speaking countries at the time of registration, and did not use the disputed domain names until 2003. Complainant further argues that French courts have held that the words “Pneus Online” were not purely descriptive in France at the time they were chosen, as a result of which – so the Panel understands – the disputed domain names were not legitimately subject to registration as domain names on a “first come, first served” basis for Respondent. Complainant has therefore made a prima facie case that Respondent has no right or legitimate interest in the disputed domain names. In accordance with the WIPO Administrative Panelists consensus view (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1), once such prima facie case is made, the burden of proof shifts to Respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain names. Respondent has argued that it has a legitimate interest because the disputed domain names consist of purely descriptive terms, and because they are part of Respondent’s marketing strategy to register and use generic second level domains in the language of various countries and to use these domains for tire selling.

In this respect, Respondent has sufficiently demonstrated that it has made preparations in order to use the disputed domain names in connection with the offering of goods and services within the meaning of Paragraph 4(c)(i)of the Policy. Respondent has shown that it has registered several second level domain names in various languages, directed at potential customers in countries where such language is used (Annex 19 Response). However, in this Panel’s assessment, whether the intention to offer good and services in relation to the disputed domain names was bona fide, as required by paragraph 4(c)(i)of the Policy, depends in significant part on whether Complainant has sufficiently demonstrated that it could rely on common law or unregistered trademark rights at the time of registration of the disputed domain names and that Respondent should have been aware of such rights of Complainant. This is considered below.

It is undisputed that at the time of registration of the disputed domain names, Complainant did not have any trademark or service mark rights in the sign “Pneus Online”. Complainant has however argued that the sign “Pneus Online” had acquired secondary meaning at the time of registration of the disputed domain names. In this respect, it refers to several rulings of French courts.

In accordance with the WIPO Administrative Panelists consensus view (see WIPO Overview 2.0, paragraph 1.7), in order to demonstrate common law or unregistered trademark rights, complainant must show that the mark has become a distinctive identifier associated with complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. Complainant has submitted sales figures, however not with respect to 2001. With respect to the figures submitted by Complainant related to 2002, it is unclear whether these concern sales under the sign “Pneus Online”. Complainant further has submitted figures with respect to advertising expenses, however these relate to the years 2004-2007 and 2009. Therefore, these documents submitted by Complainant do not demonstrate secondary meaning at the necessary time.

Further, the Panel finds that the judgments submitted by Complainant do not sufficiently demonstrate that at the time of registration of the disputed domain names, the sign “Pneus Online” had secondary meaning as set out above. The Court of Appeal of Lyon has ruled that the domain name <pneus-online.com> had a certain originality at the time it was chosen and was not purely descriptive, however this in itself does not constitute evidence that at the time of registration of the disputed domain names “Pneus Online” had become a distinctive identifier associated with Complainant or its goods or services as required under the WIPO Administrative Panel consensus view. In this respect, it should also be noted that in 2001 and 2002 Complainant acted under the name of “ANS&Co” and not under a trade name that contained “Pneus Online”. Finally, the mere fact that Complainant has registered the domain name <pneus-online.com> is insufficient to find secondary meaning as set out above.

Considering the above, the Panel finds that Complainant has not successfully demonstrated on the record in these Policy proceedings that it had common law rights or unregistered trademark rights in the sign “Pneus Online” at the time of registration of the disputed domain names. It is therefore difficult for the Panel to conclude that Respondent should have been aware of Complainant’s rights on registration, let alone that Respondent’s bona fides at that time were compromised by an intent to target such rights. Therefore, the Panel finds the more probable conclusion on this record to be that Respondent’s preparations to use the disputed domain names in relation to the offering of goods and services were bona fide.

C. Registered and Used in Bad Faith

From the above, it follows that it is not sufficiently demonstrated in the present Policy proceedings that Respondent registered the disputed domain names in bad faith, since Complainant apparently did not have any trademark rights at the time of registration and has not proven that it had any common law or unregistered trademark rights at that time. The Panel is satisfied that the more probable explanation on the present record is that Respondent registered the disputed domain names for their descriptive nature and, at that time, was not aware of Complainant’s intention to use “Pneus Online” as a mark (or trade name), or of a possibly secondary meaning of “Pneus Online”.

The Panel therefore finds that Complainant has not demonstrated that Respondent registered the disputed domain names in bad faith.

Considering the above, it is not necessary to consider whether Respondent has used the disputed domain names in bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Alfred Meijboom
Sole Panelist
Dated: September 19, 2011