WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eat Online SA v. Erik Bobbink, Wavetek, Inc
Case No. D2018-1128
1. The Parties
The Complainant is Eat Online SA of Paris, France, represented by Stobbs IP Limited, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
The Respondent is Erik Bobbink, Wavetek, Inc of New York, United States of America (“United States”), represented by SCAN Avocats, France.
2. The Domain Names and Registrar
The disputed domain names <allo-resto.com>, <allo-resto.info>, and <allo-resto.net> are registered with Uniregistrar Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2018. On May 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 23, 2018, 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 May 24, 2018, the Center received an informal communication from the Respondent.
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 May 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 18, 2018. The Response was filed with the Center June 15, 2018.
The Complainant made an unsolicited supplemental filing on June 29, 2018.
The Center appointed Adam Taylor, Jane Lambert, and Richard G. Lyon as panelists in this matter on July 9, 2018. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. Each member of 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’s group operates online food delivery marketplaces in various countries, principally under the name “Just Eat”.
In France the Complainant and its predecessors originally traded under the name “Allo Resto” since 1998.
The Complainant owns a number of “Allo Resto” trade marks including French Trade Mark Reg. No. 3745029 for “alloresto.com”, filed on June 9, 2010 and registered on October 29, 2010, in classes 38, 42, and 43 and European Union Trade Mark Reg. No. 15401854 for a logo including the stylized words “allo resto”, filed on May 4, 2016 and registered on October 18, 2016, in classes 9, 16, 35, 38, 39, 42, and 43.
The Complainant’s turnover by reference to the name “Allo Resto” was some EUR 27 million in 2016, and EUR 33 million in 2017, with marketing expenditure of some EUR 17 million in each of those years.
In November 2017, the Complainant announced that it intended to rebrand in France to “Just Eat” at some point in 2018.
The Respondent acquired <allo-resto.com> on December 29, 2017, for USD 1,500 and at some unspecified point thereafter started to use it for a food delivery website.
In January 2018, the Complainant officially rebranded from “Allo Resto” to “Just Eat France”.
The Respondent registered <allo-resto.net> on February 18, 2018.
On March 22, 2018, the Respondent applied for a Monaco trade mark for ALLO RESTO in classes 38 and 39. That trade mark was later registered (on May 2, 2018) under No. 1800277.
The Respondent registered <allo-resto.info> on April 15, 2018.
On April 30, 2018, the Complainant sent a cease and desist letter to the Respondent. Thereafter the Respondent deactivated the website at <allo-resto.com> and, on the WhoIs, the disputed domain name appeared to be offered for sale.
On May 7, 2018, the Respondent applied under serial No. 87909786 for a United States trade mark for ALLO RESTO in class 39, claiming a first use date of April 23, 2018. That application is still pending.
On May 13, 2018, the Respondent emailed the Complainant stating that it had suspended its activities in France while it sought legal advice. The Respondent noted that “Just Eat” was not trading under the ALLO RESTO trademark and mentioned that it would be focussing on Monaco where it owned a trade mark.
At an unspecified point, the Respondent launched a redesigned website at <allo-resto.com>.
The disputed domain names <allo-resto.net> and <allo-resto.info> have been redirected to <allo-resto.com> at various times (although it is not clear exactly when).
5. Parties’ Contentions
A summary of the Complainant’s contentions is as follows:
The Complainant has built up a vast amount of goodwill in the mark ALLO RESTO, deriving from its use in France in particular, since before registration of the disputed domain names.
The disputed domain names consist of the Complainant’s ALLO RESTO mark in its entirely without any modification apart from the insertion of a hyphen.
The disputed domain names are confusingly to the Complainant’s registered and unregistered trade mark rights.
The Respondent lacks rights or legitimate interests in the disputed domain names. The Complainant had not licensed the Respondent to use its trade mark.
The Respondent has not used the disputed domain names for a bona fide offering of goods or services. The disputed domain names <allo-resto.net> and <allo-resto.info>. After the Complainant sent a cease and desist letter to the Respondent, they were put up for sale on the aftermarket. The disputed domain name <allo-resto.com> was previously used for a webpage which was a replica of the Complainant’s own website.
The Respondent is not known by the name “Allo Resto” and has no trade mark registrations or other rights to that brand.
The disputed domain names were registered and are being used in bad faith.
The Respondent was clearly aware of the Complainant’s well-known trade mark when it registered the disputed domain names. Indeed, the Respondent is a French citizen.
The Respondent used one of the disputed domain names for a website with abusive and infringing content.
The Respondent registered the disputed domain names primarily for sale to the Complainant, as shown by the Respondent’s listing of <allo-resto.com> for sale after receipt of the Complainant’s letter.
The Complainant retains a significant reputation in the ALLO RESTO mark, notwithstanding the rebranding in January 2018.
The Respondent registered <allo-resto.com> before the Complainant rebranded and the remaining disputed domain names were registered just after the rebranding.
The Respondent attempted to create a likelihood of confusion with the Complainant’s mark and to divert traffic from the Complainant by creating a website at <allo-resto.com>, which was a replica of the Complainant’s website.
The Respondent registered the disputed domain names to prevent the Complainant from registering those domain names containing the Complainant’s mark.
The Respondent set out to disrupt the business of the Complainant, a competitor, as the disputed domain names are currently inactive.
The WhoIs information for the disputed domain names may not be accurate as the Respondent has provided a postal address in France.
A summary of the Respondent’s contentions is as follows:
The Complainant’s trade mark is not a strong one for the activities of contacting and ordering meals from a restaurant. The Complainant’s trade marks are descriptive and there is no evidence of confusion.
The Complainant has never used its trade mark outside France.
The Respondent possesses rights or legitimate interests in the disputed domain names.
The Respondent is in the business of registering "non-infringing" domain names, including descriptive domain names.
The Respondent registered the disputed domain names because they were an attractive combination of two generic words in French and English: “allo”, an abbreviation for “hello” used over the telephone, and “resto”, a common abbreviation for “restaurant”.
The Complainant did not coin this term as the disputed domain name <allo-resto.com> was first registered in 2005, before the Complainant acquired it.
The Respondent legitimately registered its trade mark and domain names “while” (presumably meaning “after”) the Complainant had publicly announced its decision to switch from “Allo Resto” to “Just Eat” in November 2017.
The Respondent registered the disputed domain names to develop a system of ordering / booking meals online in the United States and Monaco, where the Complainant has never operated and has no trade mark rights. As trade marks are territorial, parties can legitimately use the same mark in different territories. The domain name suffixes “.com”, “.net”, and “.info” are not country-related and parties with a right in one country should not be able to stop such domain names being used in countries where they do not have rights.
The Respondent possesses rights or legitimate interests in the disputed domain names by virtue of his Monaco trade mark. The Respondent mentioned this in correspondence with the Complainant but the Complainant did not disclose it. The Monaco trade mark has been licensed by Erik Bobbink to Wavetek, Inc (the United States entity which he controls).
There is no requirement that the Respondent’s rights be “better” than those of the Complainant or that its use is the most efficient or even commercially viable use.
The existence of the Complainant’s trade mark is not of itself a bar to a finding of rights or legitimate interests on the part of the Respondent.
The Respondent’s website at <allo-resto.com> is active but has been suspended in France and the United Kingdom where the Complainant operates, whilst the Respondent takes legal advice.
The Respondent has incurred significant costs developing the website and on search engine optimisation.
The Respondent also operates a website in the United States at “www.alloresto.us”.
The above constitutes legitimate use or at least preparations for a bona fide offering of goods and services.
The Respondent carried out trade mark searches in March / April 2018 for Canada, Madagascar, Monaco, and the United States, in which no trade mark of the Complainant appeared.
Uniregistry has confirmed that the listing on its marketplace was made by the previous owner of the disputed domain name <allo-resto.com>. The Respondent has never listed it for sale.
The disputed domain names have not been registered or used in bad faith.
When the Respondent first launched his website, the Complainant’s websites at “www.alloresto.com” and “www.alloresto.fr” redirect to “www.just-eat.fr” and the Complainant has stopped using the brand “Allo Resto”. In January 2018, the Complainant said that no one orders from a restaurant by telephone and that that name took the Complainant back to the past.
The Complainant must establish that the Respondent registered the disputed domain names because of their trade mark value.
The Respondent is an entrepreneur, not a cybersquatter, who has never previously been involved in a UDRP case. He is a United States, not French, citizen with an address in France which he uses occasionally. This is not sufficient to establish that he had prior knowledge of the Complainant’s trade mark. Even if he did, the Complainant has not established that the disputed domain names have been registered to disrupt its business or take advantage of its supposed goodwill.
Many other companies in France, unrelated to the Complainant, have been using the term “Allo Resto” for food delivery in France for many years.
The Respondent is making good faith use of the disputed domain names to support his own platform to order meals online, which is currently available in the United States and Monaco, where the Complainant has no registered trademark rights.
The Respondent request a finding of reverse domain name hijacking by bringing a substantially groundless, frivolous, and vexatious Complaint which was filed in bad faith and intended to take the disputed domain names which the Respondent legitimately owns.
6. Discussion and Findings
A. Supplemental Filing
The Complainant has made an unsolicited supplemental filing.
Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings. Paragraph 10(d) states: “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. Paragraph 12 states: “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties”.
The Panel has decided to disallow the supplemental filing on the grounds that it does not add anything material to the parties’ primary submissions and is not necessary for the Panel’s decision. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6.
B. Identical or Confusingly Similar
The Complainant has established rights in the marks ALLO RESTO and “alloresto.com” by virtue of its registered trade marks as well as unregistered trade mark rights deriving from its extensive use of that name. The fact that the Complainant has recently rebranded from “Allo Resto” to “Just Eat” is irrelevant; the registered trade marks remain in place and the substantial unregistered rights / goodwill generated in relation to the former name did not instantly disappear at the point of the rebrand.
The disputed domain names are confusingly similar to the Complainant’s trade mark, differing only by the addition of hyphens between each word.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests in the disputed domain name.
As to paragraph 4(c)(i) of the Policy, before it was removed following the Complainant’s cease and desist letter, the Respondent operated a food delivery website at the disputed domain name <allo-resto.com>, which bore a striking resemblance to the Complainant’s website, including the following common features: the “Allo Resto” logo in red font on the top left of page, a large banner photo across the top of the site showing people enjoying a meal (different photos) with a superimposed marketing message (in French) in identical white font and an identical search box in blue / white in exactly the same location; three smaller photos / listings below; and beneath those a navigation section with six identical or similar, principally red, icons laid out identically.
Notably, despite the extensive Response and exhibits submitted by the Respondent, it does not attempt to explain, or even mention, the assertions by the Complainant as to the “replica” version of the Complainant’s site.
In the Panel’s view, such use of the website at <allo-resto.com>, which the Panel considers was part of a scheme to capitalise on the Complainant’s mark (see further under section 6D below) does not qualify as a bona fide offering of goods or services. On the contrary, it indicates that the Respondent lacked bona fides.
The Respondent seeks to legitimise its use of the disputed domain name <allo-resto.com> on the grounds that (a) its offering is intended to target only Monaco and the United States, where the Complainant does not operate or possess trade marks, and (b) the Complainant has rebranded from “Allo Resto” to a different name. These matters are discussed further in section 6D below. For the moment the Panel simply comments that, even if there were any substance to those arguments (and the Panel considers that there is not), the Respondent’s former use of a replica version of the Complainant’s site completely undermines its position. Further, and not that this would cure its lack of bona fides, the Respondent has not provided any evidence which indicates that its former website at <allo-resto.com> was specifically targeted to Monaco. (Clearly it was not directed to the United States as it was in the French language.)
The Respondent has more recently reinstated a new and different version of its website at <allo-resto.com> but this does not assist the Respondent in relation to paragraph 4(c)(i) of the Policy; moreover the use began after the Respondent had notice of this dispute.
Further, the website development and search engine optimisation costs incurred by the Respondent do not qualify as “demonstrable preparations” because the Respondent has not satisfied the Panel that that expenditure was directed towards an ultimate bona fide offering.
Paragraph 4(c)(i) of the Policy does not apply to the other disputed domain names, <allo-resto.net> and <allo-resto.info>, in that either they have not been used for any kind of offering of goods or services at all or, if they did formerly redirect to the “replica” site at <allo-resto.com> (which is not entirely clear), then the above comments in relation to such use of <allo-resto.com> apply equally to these two domain names.
Nor is there any evidence that paragraph 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Respondent relies also on its Monaco trade mark as constituting rights or legitimate interests. However, as explained in section 2.12 of the WIPO Overview 3.0, a respondent’s registration of a trade mark corresponding to the disputed domain name will not by itself suffice to establish rights or legitimate interests if the overall circumstances demonstrate it was obtained primarily to circumvent the application of the UDRP or otherwise prevent the complainant’s exercise of its rights, even if only in a particular jurisdiction.
While the Complainant applied for the Monaco trade mark before the Complainant’s cease and desist letter, nonetheless the Panel considers that the circumstances – including the Respondent’s use of a website replicating that of the Complainant as well as the Complainant’s substantial prior reputation in the mark ALLO RESTO – indicate that the Respondent has the Complainant very much in mind when it applied for the Monaco trade mark and that it did so in an attempt to circumvent the UDRP or otherwise as a defensive move vis-à-vis the Complainant. Certainly, the Respondent has not provided evidence that it seriously intended to operate its business in Monaco.
(Before leaving this point, the Panel wishes to note that the Complainant fails to address the Monaco trade mark in its Complaint and omits the Respondent’s pre-action email which mentioned it. Generally, complainants would be well-advised to disclose all pre-action correspondence and face up to any issues raised, rather than to keep quiet and hope that potentially inconvenient matters do not come to light.)
For the above reasons, the Panel concludes that the Respondent lacks rights or legitimate interests in the disputed domain names and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
It follows from the comments in section 6C above that the Panel considers that the Respondent has registered and used the disputed domain names in bad faith.
While the Respondent does not make an express admission, it does not seriously dispute its prior knowledge of the Complainant’s mark. Nor indeed could it credibly have done so, given that the Complainant has established a substantial reputation in France under the name “Allo Resto”, that the Respondent is engaged in exactly the same kind of business as the Complainant, that the Respondent registered the first disputed domain name relatively soon after the Complainant announced its proposed rebrand, that the Respondent admits that it has a connection with France and, above all, that the Respondent’s former website at the disputed domain name <allo-resto.com> mimicked that of the Complainant. The Panel rejects the Respondent’s assertion that it registered the disputed domain names purely because they constituted an attractive combination of two generic terms. Indeed, neither word, nor the combination, qualifies as "generic" of the services offered by the Complainant.
It does not help the Respondent that it only registered the first disputed domain name after the Complainant announced its rebrand and that that the Respondent only launched its website after the rebrand actually occurred. It must have been obvious to the Respondent that the Complainant’s very substantial reputation in the name “Allo Resto” would take many years to dissipate and the Respondent’s use of the replica Complainant website shows that it set out to take advantage of that continuing reputation.
Nor does the alleged intended territorial restriction of the Respondent’s proposed business to Monaco and the United States assist the Respondent. Even if the Respondent genuinely intended to limit its business this way (as to which the Respondent has provided no evidence) and even if the Respondent had not mimicked the Complainant’s website (thus showing that the Respondent was still targeting the Complainant’s mark), the Respondent would had to have worked very hard indeed to convince the Panel that the Respondent’s adoption of the Complainant’s well known trade mark in France for exactly the same business in another country was not designed to capitalise on the Complainant’s mark. Clearly, in this online age, territoriality is less relevant than before and reputations can easily and rapidly spread beyond borders.
The Panel concludes from the foregoing that the Respondent registered and used the disputed domain name <allo-resto.com> in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
As to the disputed domain names <allo-resto.info> and <allo-resto.net>, they were clearly registered as part of the same illicit scheme and indeed these were redirected to <allo-resto.com> at various times. Accordingly, the Panel considers that these domain names were also registered and used in bad faith.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.
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, <allo-resto.com>, <allo-resto.info>, and <allo-resto.net> be transferred to the Complainant.
Richard G. Lyon
Date: July 27, 2018