WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Livelle v. Martijn Noordermer
Case No. D2016-2524
1. The Parties
The Complainant is Livelle of Villeneuve-d’Ascq, France, represented by SafeBrands, France.
The Respondent is Martijn Noordermer of Arnhem, the Netherlands.
2. The Domain Name and Registrar
The disputed domain name <3suisses.shop> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2016. On December 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2017. The Response was filed with the Center on January 3, 2017.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on January 13, 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.
4. Factual Background
The Complainant holds a number of trademark registrations, inter alia, European Union Trade Mark (“EUTM”) registrations for 3 SUISSES, registration number 372698 in classes 16, 25, 38, 39, registered on January 1, 1999; and GROUPE 3 SUISSES, registration number 1634492 in classes 35, 38, 39, registered on June 7, 2001.
The disputed domain name was registered on October 16, 2016 and resolves to a website containing a blog in Dutch.
5. Parties’ Contentions
The Complainant asserts that it is part of 3SI group, an e-commerce group whose brand websites attract 20 million unique visitors per month in Europe. The Complainant owns the mail-order brand 3 SUISSES, which offers fashion and décor articles in France and Belgium.
According to the Complainant, the mark 3 SUISSES has a strong reputation in the European Union. The Complainant also asserts that it owns a number of domain names incorporating the mark 3 SUISSES, inter alia <3suisses.com>, <3suisses.fr> and <3suisses.be>.
The Complainant contends that the disputed domain name is identical to its registered trademark 3 SUISSES. The “.shop” extension is of no relevance in the present context, according to the Complainant.
According to the Complainant’s best knowledge, the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the name “3 Suisses”, nor does that mark indicate the nature of the activities of the Respondent. Those activities have no relation with the Complainant, and the Respondent is not authorized to use the registered trademark 3 SUISSES.
The Complainant wrote to the Respondent seeking to resolve the matter amicably. The Respondent answered that his website was private and added “I would like to discuss the possibilities to construct an affiliate programm for e-commerce from website: 3suisses” and put a link to the Complainant’s website “3suisses.fr”. The Complainant offered EUR 250 for a transfer whereupon the Respondent asked for EUR 300,000.
According to the Complainant, there was therefore neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. In truth, the Respondent was not interested in using the disputed domain name in connection with any legitimate purpose. According to the Complainant, the Respondent registered the disputed domain name in order to obtain financial benefit by taking advantage of the reputation of the Complainant’s trademark.
The Complainant further asserts that the disputed domain name resolves to a website which says “Welkom op onze website van onze famile” (meaning “Welcome to the website of our family”) and contains two photos of young boys, some unresolved links, a map of Switzerland, a picture of three puppies super-scribed with “3 suisses – 3 Zwitsers”. According to the Complainant, the Respondent’s obvious purpose was to justify his domain name registration in this manner.
The Complainant also asserts that the Respondent is the owner of a large number of domain names registered with the generic Top-Level Domain (“gTLD”) “.shop” which are identical to well-known registered trademarks, such as <yves-rocher.shop>, <yvesrocher.shop>, <spartoo.shop>, <venca.shop>, and others. According to the Complainant, each of those domain names resolves to a website identical or at least similar to the website to which the disputed domain name resolves.
According to the Complainant, the only purpose of the establishment of these websites is to benefit from the reputation of well-known registered trademarks for commercial gains, in particular by selling them to trademark owners.
According to the Complainant, given the high repute attached to the 3 SUISSES mark for a very long time, in particular in Belgium, the Respondent could not have been ignorant of the mark at the time of registration of the disputed domain name.
In any case, according to the Complainant, knowingly using a third-party’s trade mark in a domain name amounts to bad faith. But in addition, as the Respondent owns numerous other domain names that are identical to well-known trademarks belonging to third parties, the Respondent appears to be engaged in a pattern of cybersquatting.
Further, the Complainant sent a cease-and-desist letter explaining that the use of the disputed domain name infringed the Complainant’s prior rights over its trademarks. As indicated above, after informing the Complainant that his website only served a private purpose, the Respondent suggested a commercial affiliation with the Complainant. According to the latter, this conduct confirms that the Respondent registered the disputed domain name for commercial gain and not for “private use”.
The Respondent’s conduct is also indicative, the Complainant contends, of his intention to prevent the Complainant from reflecting its well-known registered trademark in a corresponding domain name and a fortiori getting the contested domain name back.
According to the Respondent, “3suisses” is not registered as a wordmark by the Complainant. Rather, the Complainant has registered a figurative mark. According to the Respondent the trademark 3 SUISSES is totally unknown, and not active in the Netherlands, and the domain name <3suisses.nl> is currently for sale.
The Respondent asserts that he acquired the disputed domain name in the “General Availability phase” of the new gTLD which follows the “Sunrise and Land-rush” periods. The General Availability phase is an open period based on a “first come, first served” policy. The Respondent asserts that the Complainant’s assertion that the disputed domain name is very important for its business, is unconvincing and unbelievable because the Complainant did not register it in advance in “the sunrise period”. The latter is a special period during which trademark holders may pre-register names that are the same or similar to their trademarks to avoid any disputes.
According to the Respondent, he has the right to use the disputed domain name, as “3suisses” means “3swiss”, a combination of words that can be used by anyone depending on the context. Further, the Complainant did not register this combination of words as a wordmark therefor it may be used by anyone.
In any case, the Respondent contends that being the owner of a registered trade mark does not automatically entitle you to use that mark as a domain name. The Respondent uses the disputed domain name for private use only he asserts, proudly displaying his family by way of photos and other content. He adds that he tells the story of his three Saint Bernard dogs from the western Alps in Switzerland on the relevant website.
Further, according to the Respondent the disputed domain name does not appear in the google search results if a customer should search for “3suisses” or “3suisses webshop”. Thus the Respondent asserts that he cannot damage the Complainant by using the disputed domain name. The Respondent asserts that the Complainant could also register domain names with other extensions, for example “.shopping”, “.store” and “.buy”.
The Respondent admits that he has registered more “sites” that he finds interesting but asserts that he did so without commercial purpose. The Respondent contends that he uses the relevant sites to learn to build websites and to blog. He displays his family (kids and pets), and asserts that he did not make any effort to contact any company. He asserts that he wants to use the relevant sites only for private noncommercial purposes.
The Respondent also says that he never contacted the Complainant, rather the Complainant’s officer contacted him by email demanding transfer of the disputed domain name. He was threatened immediately with legal action. He responded that he used the relevant site as a private user, wanted to remain the owner of the site, and therefore offered the option of an affiliate-site for free. He says he did not ask for any money for this option.
In reaction to the email sent on behalf of the Complainant, asking the Respondent whether he was prepared to sell the disputed domain name in order to prevent any legal proceedings and to name an approximate price, the Respondent asserts that he made clear that he had no interest in selling. In response to the Complainant’s further offer of EUR 250 the Respondent says that he offered to pay the Complainant this EUR 250. This was with a view to remaining the owner of a website that he put a lot of effort into building and which has emotional value to him.
A further offer was then made on behalf of the Complainant, in the following terms: “Our client propose you to solve this issue amicably. To avoid any legal proceedings, our client propose to buy your domain name <3suisses.shop>. Further to your email, our client reviewed its budget in order to propose you a new offer. USD 1500 is the final offer from our client for this domain name before legal action”. In his answer the Respondent clarified that he does not use the relevant website for a commercial purpose, and therefore it does not infringe any trademark.
The content of the website is in Dutch and has nothing at all to do with the brand “3suisses”, according to the Respondent, and the trademark 3 SUISSES is totally unknown in the Netherlands.
Finally the Respondent asserts that he asked for a “ridiculously high amount”, in the hope that the Complainant would leave him alone. He concludes that the representative of the Complainant asked questions and advanced certain propositions only to provoke some reaction from him, with the intent of using it to suggest bad faith on his part. However, the Respondent asserts again that he did not register and did not use <3suisses.shop> in bad faith.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is identical to the Complainant’s trademark 3 SUISSES. The extension “.shop” is of no consequence in this regard, and therefore there are no relevant differences between the Complainant’s trademark and the disputed domain name.
Therefore the Panel holds that the disputed domain name is identical to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Respondent in this matter contends that he makes private noncommercial use of the disputed domain name. The Respondent claims the term “3 SUISSES” stand for “3 Zwitsers” or “3 Swiss” (people or beings). According to the Respondent, the site to which the disputed domain name resolves reflects his intention to establish a website about his family, which is somehow associated with three Swiss Saint Bernard puppies which are portrayed there, as well as two young boys who are pictured and who he maintains are his children. However, since he is based in the Netherlands and speaks Dutch, and his family is presumably also there, it is not apparent why he has chosen a domain name with “Suisse” in French rather than in Dutch for this purpose. It is not at all clear why the Respondent would require a domain name with a “.shop” extension for the purely private purpose of displaying information about his family. If he requires domain names for the purpose of practicing website construction, as he contends, there are plenty of others available that do not happen to coincide with trademarks with a well established reputation that belong to unrelated third parties.
It is also apparent from his practice of acquiring a number of other domain names incorporating well-known trademarks, that the Respondent is well versed in the selection of well-known marks and their incorporation in domain names with some of the new gTLD extensions. There is clearly no real connection between 3 Suisses and his family, the website appearing as a sham to attempt to justify his acquisition of a domain name incorporating a widely known brand to which he has no rights. The fact that the relevant trademark may or may not be known or used in the Netherlands is of little consequence, given the Respondent, unprompted, raised the possibility of an affiliate website which tends to establish his own knowledge of the trademark and its status in terms of existing consumer goodwill in Europe.
The Respondent’s willingness to engage in negotiations concerning the disputed domain name with the Complainant discloses the real purpose behind his registration of <3suisses.shop>. His explanation of the course of negotiation is not persuasive, all the more so given his tendency to acquire other domain names that incorporate well recognized trademarks in the “.shop” extension. The Complainant approached the Respondent and attempted to obtain an amicable solution in a totally orthodox manner; it was the Respondent’s reactions that point to his ultimate goal of a profitable financial settlement on the back of another-party’s trademark.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The 3 SUISSES trademark of the Complainant has a well-established reputation in Belgium and France, and has a very significant presence on the Internet. There is no genuine reason for the Respondent to register a domain name incorporating these terms, as he has no real connection with Switzerland, not being based there, or having business there, nor with three Swiss individuals or dogs. He does not go by the name “3 Suisses” nor does he do any legitimate business under that name. The Respondent is apparently well versed in Internet affairs and the presence of businesses on the internet, and with the roll-out of new gTLDs and the like. It is wholly improbable that the Respondent was not aware of the trademark rights of the Complainant at the time of registration of the disputed domain name.
Therefore the Panel holds that the disputed domain name has been registered and used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <3suisses.shop> be transferred to the Complainant.
William A. Van Caenegem
Date: January 24, 2017