WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Shopware AG v. Laurent Bernardin
Case No. D2013-0536
1. The Parties
The Complainant is Shopware AG of Schöppingen, Germany.
The Respondent is Laurent Bernardin of Niederanven, Luxemburg.
2. The Domain Name and Registrar
The disputed domain name <shopware.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2013. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Still on March 19, 2013, 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.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 11, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 16, 2013.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on April 26, 2013. 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.
4. Factual Background
Hamman-Media GmbH holds a German semi-figurative trademark consisting of a logo and the word “SHOPWARE”, was got registered on March 4, 2009 under classes 35, 38 and 42 of the Nice Classification, with a priority date as of October 7, 2008.
The Complainant, seated in Germany, holds the CTM word trademark SHOPWARE, was got registered on April 20, 2009 under classes 35, 38 and 42 of the Nice Classification.
The Respondent is Laurent Bernardin, Niederanven, Luxemburg.
The disputed domain name <shopware.com> was first registered on August 8, 1998. At the time the Complaint was filed, the disputed domain name was linked to the website of a company named “nobilitas” (which includes a copyright notice of 2001). Nobilitas appears to offer a service of design and development of Internet website and an application giving access to an electronic commerce system.
5. Parties’ Contentions
The Complainant asserts that the disputed domain name contains the word “shopware”, which is identical to its trademark. The fact that the Respondent offers identical services to the ones provided by the Complainant would lead to a high risk of confusion for internet users.
The Complainant further considers that the Respondent would have no rights or legitimate interests in the disputed domain name. The Complainant alleges that the Respondent is not using the disputed domain name on its own behalf, but is connected to the Nobilitas’ website. According to the information found by the Complainant on “www.nobilitas.com”, Nobilitas GmbH would have been founded by three persons including the Respondent. Neither the Respondent nor Nobilitas GmbH would use or would have used the word “shopware” except as the disputed domain name. The latter would merely redirect to Nobilitas’ website. Furthermore, the Complainant affirms that the Respondent did not respond to its attempt to get in touch with the Respondent.
Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. It alleges that the Respondent obviously holds the disputed domain name in order to hold it or to sell it. This would be confirmed by the fact that the word “shopware” is not used by the Respondent or by the holder of the linked website. The Respondent would only be attempting to attract Internet users to the Nobilitas’ website by creating a confusion with the Complainant’s trademark. In addition, the Complainant considers that the absence of any response by the Respondent to its email would demonstrate that the Respondent does not attach any importance to update his contact details.
The Respondent did not reply to the Complainant’s contentions.
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; and
(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.
A. 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.
While the Complainant asserts to be the exclusive licensee of Hamman-Media GmbH, which holds the semi-figurative German trademark SHOPWARE, the Complainant did not provide the Panel with any evidence to that effect, such as a licensing agreement. As a result, the Panel shall disregard that particular trademark.
The Complainant however proves to be the holder of a CTM word trademark consisting of the word “shopware”.
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). Such happens to be the case here.
As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.
B. 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 names.
As the UDRP panel stated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, demonstrating that the Respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task”. Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent UDRP panels developed a consensual view that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent’s burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see, e.g., paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
In the present case, the Complainant has no business or relationship with the Respondent, who does not appear to use the word “shopware” on the website linked to the disputed domain name. Based upon the file at hand, there is no hint that the Respondent would be known as “shopware” or would sell any product named “shopware”.
As a result, the Panel finds that the Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.
Consequently, it was up to the Respondent to demonstrate rights or legitimate interests by showing, among other circumstances, any of the following elements (paragraph 4(c) of the Policy):
(i) Before any notice to it of the dispute, he used or made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) The Respondent is commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) The Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In the case at hand, the Respondent did not respond to the Complainant’s allegations and therefore did not rebut the Complainant’s prima facie case, failing to invoke any circumstances that could demonstrate any rights or legitimate interests in the disputed domain name.
Consequently, on the basis of the Complainant’s unrebutted prima facie case, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.
C. Registered and Used in Bad Faith
For a complaint to succeed, a UDRP panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
The disputed domain name was first registered on August 8, 1998. No evidence is on the record to demonstrate a registration date by the Respondent at a later time. Rather, the evidence supports a finding that the disputed domain name was registered well before the Complainant’s trademark registration. The Complainant’s trademark was registered on March 4, 2009.
Panels’ consensual view is that, absent exceptional circumstances, when a domain name is registered by the Respondent before the Complainant’s relied-upon trademark right, the domain name cannot have been registered in bad faith, as the Respondent could obviously not have been aware of the non-existing Complainant’s trademark as of the time the domain name got registered (see, e.g., paragraph 3.1 WIPO Overview 2.0).
In the present case, the disputed domain name was registered long before the Complainant’s trademark was even applied for. The Complainant presents no explanation as to why, at that time of registration, the Respondent knew or should have known that the Complainant was intending to use or register any potential mark and how such registration could have occurred in bad faith.
Based upon the file at hand, the Complainant does not demonstrate how and why the Respondent would have been in bad faith when he registered and subsequently used the disputed domain name. The Complainant did not even deem it worth providing the Panel with the alleged email or letter it would have sent to the Respondent. While the Complainant argues that the Respondent “obviously” holds the disputed domain name in order to hold it or to sell it and that it would only attempt to attract Internet users to the Nobilitas’ website by creating confusion with the Complainant’s trademark, the Complainant does not provide any evidence to support what proves to be merely unsupported allegations.
As a result, the Panel finds that the Complainant has not succeeded in proving that the domain name was registered in bad faith, and considers paragraph 4(a)(iii) of the Policy not to be fulfilled.
For the foregoing reasons, the Complaint is denied.
Date: May 10, 2013