WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Topvintage.nl BV v. DOMAIN ADMIN
Case No. D2017-1019
1. The Parties
The Complainant is Topvintage.nl BV of Kerkrade, the Netherlands, represented by Boels Zanders Advocaten, the Netherlands.
The Respondent is DOMAIN ADMIN of Haarlem, the Netherlands, and Dubai, United Arab Emirates.
2. The Domain Names and Registrar
The disputed domain names <shoptopvintage.com>, <top-vintage.com>, <topvintage.com>, <topvintageshop.com>, <topvintage.shopping>, and <topvintage.store> are registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2017. On May 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 25, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on June 16, 2017.
The Center verified that the Complaint together with the amended 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 June 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 10, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 11, 2017.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on July 14, 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 is a private limited company registered in the Netherlands on April 1, 2008 which operates an award winning online retro boutique selling female vintage clothing and related items at “www.topvintage.nl” and “www.topvintage.net”. The Complainant has used the trade name and unregistered mark TOP VINTAGE since its foundation. The Complainant is the owner of Benelux registered trademark no. 0998084 registered on September 6, 2016 in respect of the following figurative mark in international classes 14, 25 and 35:
The Complainant is also the owner of European Union registered trademark no. 015588668 registered on January 12, 2017, in international classes 14, 25 and 35, in respect of the following figurative mark:
Little is known about the Respondent beyond the fact that it is an entity which has used addresses in the Netherlands and United Arab Emirates and corresponds under the initials “VI”, sometimes also reproduced on the WhoIs for certain of the disputed domain names. The disputed domain name <topvintage.com> was originally created on May 1, 2005 but, according to historic WhoIs records produced by the Complainant, the Respondent acquired this domain name from its previous registrant between June 29, 2011 and August 6, 2011. This disputed domain name features no web content.
The disputed domain name <top-vintage.com> was created on July 13, 2011. This disputed domain name features no web content.
The disputed domain names <topvintageshop.com> and <shoptopvintage.com> were both created on April 18, 2013 and point to a website featuring a range of advertisements and pay-per-click links described as “SourceMatch.com INTERNET Resource Center”.
The disputed domain names <topvintage.shopping> and <topvintage.store> were both created on November 16, 2016 and point to a website describing itself as a domain name marketplace.
All of the disputed domain names are linked by the provision of common present or historic contact addresses on the WhoIs records and by the Respondent’s use of the same distinctive email address as the email contact for each.
Between about November 15, 2016 and November 29, 2016 the Parties engaged in email correspondence. An email from the Respondent to the Complainant’s CEO dated November 15, 2016 notes “I would like to know if you are interested and what your offer is for domain <topvintage.com>. Without an offer, we will mark you as not interested and move forward.” In a later email of the same date, the Respondent indicated that it was seeking a “transfer fee” of EUR 150,000 for <topvintage.com>. On November 29, 2016, in a further email to the Complainant, the Respondent stated “We want you to use the domain as well and therefore we have contacted you. So please place your offer so we can move on.”
5. Parties’ Contentions
The Complainant contends that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain names and that the disputed domain names have been registered and are being used in bad faith.
The Complainant contends that the Respondent is the registrant of all of the disputed domain names due to the Respondent’s use of addresses initially in Haarlem, Netherlands and later in Dubai, United Arab Emirates, each used in association with the same distinctive email contact address from which the correspondence referred to in the factual background section above originated. The Complainant notes that the current resident at the Haarlem address indicates that he has received mail for a person named “Mr. Victor [I.]” and adds that this corresponds to the letters “VI” used in the Respondent’s email and on certain records in the WhoIs for the disputed domain names.
The Complainant argues that the disputed domain names are identical or confusingly similar to its TOP VINTAGE trade name and registered trademarks, noting that the latter contain the word element TOP VINTAGE. The Complainant submits that the disputed domain names are not used, nor are there demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. The Complainant adds that the only reasonable conclusion is that the Respondent acquired the disputed domain names for the sole purpose of “gaining leverage” over the Complainant.
The Complainant states that it was invited to place an offer for the disputed domain name <topvintage.com> in emails from the Respondent commencing on November 15, 2016 and adds that during this correspondence the Respondent requested EUR 150,000 for the said disputed domain name and also registered the disputed domain names <topvintage.shopping> and <topvintage.store>. The Complainant argues that in light of the correspondence no other conclusion can be made than that the disputed domain names were registered and used for the purpose of selling them to the Complainant in an amount far in excess of the Respondent’s directly related documented out-of-pocket costs.
The Complainant notes that four out of six of the disputed domain names have been passively held and adds that this can also be an indicator of bad faith. The Complainant also contends that the registration of multiple domain names by the Respondent corresponding to the mark TOP VINTAGE demonstrates a pattern of conduct for the purposes of the Policy.
The Complainant states that all of the disputed domain names, with the exception of <topvintage.com>, were registered by the Respondent after the Complainant began to trade and registered its official trade name. The Complainant argues that the Respondent must have been aware of the Complainant’s rights as its brand is well-established in the Netherlands, enjoys extensive publicity and is one of the fastest growing webshops in the Netherlands.
The Complainant asserts the disputed domain name <topvintage.com> may also be held to have been registered in bad faith due to previous cases under the Policy introducing concepts of retroactive registration in bad faith. The Complainant points to the fact that registrants provide a warranty under paragraph 2 of the Policy that they will not knowingly use the domain name in violation of any applicable laws or regulations, adding that the Respondent has breached this warranty.
The Complainant points to the report which it has produced containing the historic WhoIs records for the disputed domain name <topvintage.com>. The Complainant notes that the report states that the Respondent, using the initials “VI” and quoting the Haarlem, Netherlands address, purchased the said domain name between June 29, 2011 and August 6, 2011.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Preliminary Issue – Multiple Respondents
The registrants of all of the disputed domain names are listed as “DOMAIN ADMIN”. However, while five of the disputed domain names feature the same registrant contact address in Dubai (<topvintage.com>, <topvintageshop.com>, <shoptopvintage.com>, <topvintage.shopping> and <topvintage.store>), the remaining disputed domain name features a contact address in Haarlem, Netherlands (<top-vintage.com>).
The difference in contact address potentially gives rise to a situation where there are multiple Respondents in this case (see section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) for a discussion of this topic). In the present case, there are several features indicating that the disputed domain names are subject to common control and/or that the Respondent in each case is one and the same person.
First, each disputed domain name is linked to the same distinctive email contact address. Secondly, that email address has been used, in an email of November 29, 2016, to correspond with the Complainant about a potential purchase of all of the disputed domain names. Thirdly, while only <top-vintage.com> features the contact address in Haarlem, Netherlands, the historic WhoIs records for a different disputed domain name, <topvintage.com>, show this same contact address thus linking both potential contact addresses for the Respondent independently of the email contact address. In these circumstances, the Panel considers that there are sufficient factors to determine that consolidation is appropriate. The Panel also considers that it would be fair and equitable to both of the Parties and procedurally efficient to consolidate the Complaint in respect of all the disputed domain names.
B. Identical or Confusingly Similar
The Complainant relies upon both registered and unregistered rights in connection with this element of the Policy. The Complainant’s registered rights consist of two figurative marks, as set out in the factual background section above, which contain the words “TopVintage” separated from the less prominently depicted capitalized words “RETRO BOUTIQUE” by a line and heart device.
The Panel notes the discussion in section 1.10 of the WIPO Overview 3.0 which indicates how trademark registrations with design elements are typically treated in assessing identity or confusing similarity. Figurative or stylized elements are largely disregarded for this purpose to the extent that they would be incapable of representation in domain names. Accordingly, subject to exceptions not relevant here, trademarks with design elements prima facie satisfy the requirement that the Complainant show rights in a mark for further assessment as to confusing similarity.
In the present case, the Panel is satisfied that each of the disputed domain names is confusingly similar to the Complainant’s registered trademarks. The primary textual element in the marks, “TopVintage” is to the Panel’s mind a somewhat distinctive and non-typical combination of words which matches the second level of all of the disputed domain names (noting that the hyphen in <top-vintage.com> is the only additional character present in the second level of each). The various generic Top-Level Domains (“gTLDs”) in each of the disputed domain names are commonly disregarded for the purposes of comparison in cases under the Policy on the grounds that they are required for technical reasons only. It is not necessary for the assessment under this element of the Policy that the registration date of the relied-upon trademarks pre-date the creation date of the disputed domain names (see section 1.13 of the WIPO Overview 3.0).
While strictly speaking not necessary to the resolution of the Panel’s assessment under this element, the Panel turns to the Complainant’s claim to unregistered rights in its trading name and notes that the Complainant provided only limited information in support of its various assertions. Evidence was produced that the Complainant has traded under the name “Topvintage.nl B.V.” since 2008. However, that on its own is insufficient to establish unregistered or common law trademark rights for the purposes of the Policy (see section 1.3 of the WIPO Overview 3.0 for a discussion of what is typically required). That said, the Complainant did list hyperlinks in the Complaint to both URLs from which its retail website operates together with a description of its activities as an online retro boutique selling female vintage clothing. Given that the URLs had been provided in the context of the claim to unregistered rights, the Panel determined that it was appropriate to undertake limited factual research (see section 4.8 of the WIPO Overview 3.0) by visiting the Complainant’s website to ascertain whether this contained any evidence supportive of the Complainant’s more general submissions in the Complaint.
The Complainant’s website provided a wealth of material including a history of the Complainant’s activities from 2008 to date, major trading milestones, third party awards won by the Complainant’s online shop from 2011 to date and links to online versions of various television commercials for the Complainant’s offerings. This material, taken together, satisfies the Panel on the balance of probabilities that the mark “TopVintage” has become a distinctive identifier which consumers associate with the complainant’s goods and services and thus that the Complainant has demonstrated that it has unregistered rights in this mark. This mark is equally identical or confusingly similar to the disputed domain names for the same reasons outlined above in connection with the Complainant’s registered rights.
The Panel notes in passing that complainants seeking to rely on such material for the purpose of establishing unregistered or common law trademark rights under the UDRP would do well to take the safest course of annexing copies along with their submissions rather than, as in the present case, merely relying on the Panel to follow one or more URLs provided in the Complaint. The Panel further notes for completeness that it decided not to issue a procedural order to give the Parties an opportunity to comment on the information identified on the Complainant’s website. In the first place, this material is known to the Complainant and in the second place it is readily available to the Respondent. This approach is broadly consistent with the terms of section 4.8 of the WIPO Overview 3.0, namely that the information relied upon was both readily accessible and publicly available. Furthermore, it was referenced in the Complainant’s submissions in a manner whereby adequate notice of its existence was provided to the Respondent.
In all of these circumstances, the Panel finds that the Complainant has rights in a trademark and that the disputed domain names are confusingly similar to such mark. Accordingly, the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. Where the panel finds that a complainant has made out such a prima facie case, the burden of production shifts to the respondent to bring forward evidence of such rights or legitimate interests.
The Panel is of the view that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant submitted that the disputed domain names are not used, nor are there demonstrable preparations to use them. There is no evidence that the Respondent is commonly known by the disputed domain names. The Panel notes that the disputed domain names are either not configured for web use or are displaying parking pages with generic third party content and pay-per-click links. Neither of these uses necessarily confers rights or legitimate interests on a respondent (see the discussion in section 2.9 of the WIPO Overview 3.0 regarding parking pages).
Accordingly, the burden of production shifts to the Respondent to bring forward evidence of its rights or legitimate interests in the disputed domain names. The Respondent has not filed a Response and thus has not provided any submissions or evidence pointing to any rights or legitimate interests which it may have. In the absence of such, the Panel has been unable to identify any possible case which the Respondent might have made on this topic. Furthermore, as discussed in the section on registration and use in bad faith below, the evidence produced by the Complainant supports the notion that the Respondent targeted the Complainant and its rights while engaging in a high pressure sales approach regarding the disputed domain names, including registering two of the disputed domain names during the period when it was still in communication with the Complainant. In the opinion of the Panel, such activity cannot give rise to rights and legitimate interests within the meaning of the Policy.
As the Respondent has failed to rebut the Complainant’s prima facie case regarding rights and legitimate interests, the Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
It is widely accepted among UDRP panels that for bad faith registration and use to be made out there must be a degree of targeting of the Complainant or its mark, or at the very least that the Respondent must have had the Complainant or its trademark in mind when selecting the disputed domain names (The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743).
The date of registration of the Complainant’s European Union registered trademark of January 1, 2017 post-dates the creation date of all of the disputed domain names, while the date of registration of the Complainant’s Benelux registered trademark of September 6, 2016 post-dates the creation date of all but <topvintage.shopping> and <topvintage.store>. In these circumstances, it is either impossible or extremely unlikely that the Respondent had knowledge of or intent to target the Complainant’s registered trademarks via its registration of the domain names at issue dating from 2011 to 2016. Anticipating this issue, the Complainant argues in favor of a concept of retroactive bad faith, as explored by a number of cases in 2009 and 2010 (see section 3.2.1 of the WIPO Overview 3.0). The Panel does not subscribe to this particular reading of the Policy and considers that the requirement to prove registration and use in bad faith necessitates a proof of both the registration and use elements.
Nevertheless, the Panel is of the opinion that in the circumstances of this particular case, and on the basis of the evidence submitted, the Complainant is not required to rely upon the concept of retroactive bad faith to make out its case on registration in bad faith. The historic WhoIs report relating to the disputed domain name <topvintage.com> shows that this domain name was previously offered for sale by its original registrant from at least April 3, 2007 and was acquired by the Respondent between June 29 and August 6, 2011. Within the same time frame, namely on July 13, 2011, the Respondent registered <top-vintage.com>. The historic WhoIs of <topvintage.com> and the current WhoIs of <top-vintage.com> both show a Netherlands address for the Respondent. By the date of the registration/acquisition of those domain names, the Complainant’s retail website had been established in the Netherlands for several years, operating at the Netherlands country code domain name <topvintage.nl> and also using the domain name <topvintage.net>. That year, the Complainant’s website itself had won the first of what would become multiple awards.
This raises the reasonable inference in the Panel’s mind that the acquisition/registration of <topvintage.com> and <top-vintage.com> were made by a person based in the Netherlands in the knowledge that the Complainant had established a successful business under its “TopVintage” trading name and with intent to target such business. In the case of <topvintage.com>, the Panel reminds itself that it is the date of acquisition by the Respondent that is the appropriate point for an assessment of registration in bad faith, not the original creation date of the disputed domain name in 2005 (see section 3.9 of the WIPO Overview 3.0 (“…the transfer of a domain name registration from a third party to the respondent is not a renewal and the date on which the current registrant acquired the domain name is the date a panel will consider in assessing bad faith”)).
The disputed domain names <topvintageshop.com> and <shoptopvintage.com> were both registered by the Respondent on April 18, 2013. In these domain names, the Respondent appears to have coupled the Complainant’s mark with the word “shop”, thus denoting retail business as is carried out by the Complainant. Nothing further took place until the correspondence between the Parties in November 2016. During this correspondence, while seeking EUR 150,000 in return for a transfer of <topvintage.com> to the Complainant, the Respondent registered the remaining two disputed domain names, <topvintage.shopping> and <topvintage.store>, again combining the Complainant’s mark with standard retail terms, in this case, in the gTLDs themselves.
In all of these circumstances, the Panel is satisfied that the Complainant has made out a case that all of the disputed domain names were acquired/registered in the knowledge of the Complainant’s rights and with intent to target these. The disputed domain names were either parked or passively held for a period of time and then formed part of a high pressure sales attempt in correspondence with the Complainant. The Panel therefore finds that there are circumstances indicating that the Respondent registered or acquired the disputed domain names primarily for the purpose of selling them to the Complainant for valuable consideration in excess of documented out-of-pocket costs in terms of paragraph 4(b)(i) of the Policy. The Respondent has chosen not to respond to the Complaint and thus has provided no alternative explanation for its conduct regarding the disputed domain names, nor can the Panel identify any potential good faith motivation on the Respondent’s part in the particular circumstances of this case.
Accordingly, the Panel finds on the balance of probabilities that the disputed domain names have been registered and are being used in bad faith and therefore that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
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 names, <shoptopvintage.com>, <top-vintage.com>, <topvintage.com>, <topvintageshop.com>, <topvintage.shopping>, and <topvintage.store> be transferred to the Complainant.
Andrew D. S. Lothian
Date: July 28, 2017