WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Blue Sugar SAS v. DIGITALLEY SL / Franck Garden, Digitalley
Case No. D2019-1731
1. The Parties
The Complainant is Blue Sugar SAS, France, represented by Lancian, France.
The Respondent is DIGITALLEY SL, Spain / Franck Garden, Digitalley, Spain.
2. The Domain Names and Registrar
The disputed domain names <bonbox.net> and <coffee-box.org> (together the “Disputed Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2019. On July 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 25, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 25, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 26, 2019.
The Center verified that the Complaint together with 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 July 30, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 23, 2019. The Center received a request of extension to file the Response on August 15, 2019. The Respondent was granted the automatic four calendar day extension for response under paragraph 5(b) of the Rules. On August 21, 2019 the Center declined to grant any further extension. No Response was filed at that moment. The Commencement of Panel Appointment Process was sent by the Center on August 26, 2019.
The Center appointed Nick J. Gardner as the sole panelist in this matter on August 29, 2019. 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 18, 2019 the Respondent submitted a late Response. This is discussed below.
4. Factual Background
The Complainant is a French company which has created and developed subscription websites offering “thematic” boxes. Among those websites are:
- a website accessible at “coffee-box.fr”, through which the Complainant offers a monthly subscription service offering boxes containing, among other things, coffee capsules;
- a website accessible at “bonbox.fr”, through which the Complainant offers a subscription service offering boxes containing, among other things, sweets.
The Disputed Domain Names were each registered on October 30, 2018. They each resolve to an active website. <bonbox.net> resolves to a website which offers a monthly subscription service delivering boxes of sweets to subscribers. <coffee-box.org> resolves to a website which offers a monthly subscription service delivering coffee to subscribers. Each of these websites is remarkably similar to the corresponding website of the Complainant (albeit with different telephone numbers) – in each case whilst not a literal copy it clearly cannot have been independently designed. The Respondent’s websites are, like the Complainant’s, in French.
5. Parties’ Contentions
The Complainant says that it has unregistered trade mark rights in the terms “coffee-box” and “bonbox”. The nature of the Complainant’s case and its evidence is discussed below.
The Complainant says that the Respondent has no rights or legitimate interests in the term “coffee-box” or “bonbox”.
The Complainant says that the Respondent’s registration and use of the Disputed Domain Names is in bad faith. It says they each link to websites which reproduce almost exactly the Complainant’s websites. It says the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website.
As indicated, above on September 18, 2019 the Respondent filed a Response. This was filed outside the applicable time limits and is not admissible unless the Panel in its discretion allows it. Normally the Panel would require some sort of explanation as to why a Response out of time should be allowed. None has been proffered here. In all the circumstances the Panel is not minded to allow the Response. However because (for reasons explained below) the Response appears to take no account of the underlying facts and makes little (if any) sense, the Panel feels the Respondent should at least understand why his proffered explanation is insufficient. Accordingly the Panel will nevertheless admit the Response.
The Respondent says in effect that the names the Complainant relies upon are not registered trademarks, and are generic and anyone can use them. He denies in any way acting in bad faith and says the Complainant has “fabricated evidence”. He does not explain what evidence is said to “fabricated”, or in what respects. The Response provides no information at all about the content of the websites to which the Disputed Domain Names resolve and does not seek to offer any explanation as to why these websites clearly replicate those of the Complainant.
6. Discussion and Findings
To succeed, in relation to each Disputed Domain Name, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with 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 Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has filed significant evidence as to the nature of its activities in relation to its marks and each of the Disputed Domain Names. For example:
Since 2013, the Complainant has sold more than four hundred thousand boxes under the name COFFEE BOX; has achieved a total number (cumulated) of 115,008 (one hundred and fifteen thousand eight) subscribers to its services provided under the name COFFEE BOX; and has generated a turnover of 12,232,728 (twelve million two hundred thirty- two thousand seven hundred twenty-eight) Euros through its services provided under the name COFFEE BOX.
Since January 2017, the Complainant has sold more than a hundred thousand boxes under the name BONBOX; has achieved a total number (cumulated) of 70,066 (seventy thousand sixty-six) subscribers to its services provided under the name BONBOX; and has generated a turnover of 3,396,926 (three million three hundred eighty-six thousand nine hundred twenty-six) Euros through its services provided under the name BONBOX.
The Panel would readily accept this type of activity would give rise to unregistered trademark rights in a common law jurisdiction. The Complainant is however based in France, a civil law jurisdiction. In this regard the Panel adopts the approach set out in, S.N.C. Jesta Fontainebleau v. Po Ser, WIPO Case No. D2009-1394:
“For the purpose of assessing what might constitute an equivalent to a common law trade mark right, it is important to understand what a common law trade mark is. In this context it is a name or sign, the use of which (or a confusingly similar variant of which) a person can restrain by way of a passing off action. For the purposes of a passing off action the plaintiff needs to be able to prove that (a) it has a reputation and goodwill in respect of the name or sign in question, (b) the defendant is using it or a confusingly similar variant of it to cause deception in the marketplace and (c) the plaintiff is suffering or is likely to suffer consequential damage.
In other words, in a common law jurisdiction, if a third party set up in competition with the Complainant under the same or a confusingly similar name, the Complainant could succeed in a passing off action and stop the activity complained of if it were able to establish those three elements.”
Where the Complainant is established in a civil law jurisdiction such as France, the Panel stated in this case:
“In a civil law jurisdiction such as France, the Panel believes that the Complainant could achieve a result comparable to that available under an action for passing off by way of an unfair competition action, provided of course that it could prove a reputation and goodwill in respect of the name, the deceptive activity of the defendant and the likelihood of damage. In other words, albeit by way of a somewhat different route, the Complainant’s rights in respect of its name are potentially no different from those of a trader in a common law jurisdiction.”
The Panel accordingly adopts this approach and accepts that the Complainant’s use of the terms “coffee-box” and “bonbox” amount to rights in trademarks for the purposes of paragraph 4(a)(i) of the Policy.
It is well established that the generic Top-Level Domain (“gTLD”), in this case “.net” and “.org”, does not affect the Disputed Domain Names for the purpose of determining whether they are identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly the Panel finds that each of the Disputed Domain Names is identical to one of the Complainant’s trademarks and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, 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) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Names or to use COFFEE-BOX and BONBOX trademarks. The Complainant has prior rights in the COFFEE-BOX and BONBOX trademarks which precede the Respondent’s acquisition of the Disputed Domain Names. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Names and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Names (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003‑0455).
The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Names. The Respondent simply says the Disputed Domain Names are generic and anyone can use them. The Panel disagrees. Whilst ordinary words (at least for “coffee” more than “box”) are used in the Disputed Domain Names the Panel finds the Complainant has developed a significant business in offering monthly subscription service for the items in question (see above) and the words have become distinctive of the Complainant’s business. Further the content of the websites to which the Disputed Domain Names resolve (see above) clearly shows that the Disputed Domain Names were chosen as part of a deliberate attempt to replicate the Complainant’s business model. Accordingly the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Names and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
On the evidence that the Respondent has linked the Disputed Domain Names to websites which are clearly substantially based upon the Complainant’s own websites (see below). This appears to be a case of deliberately trading off the Complainant’s successful business reputation to confuse customers and divert business to the Respondent. As such it is within the Policy, paragraph 4(b)(iv), as evidence of the registration and use of a domain name in bad faith:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location”.
In view of the Response (see above) and the Respondent’s allegation that the Complainant has been “fabricating” evidence, the Panel has visited each of the websites linked to the Disputed Domain Names as well as each of the Complainant’s websites. Having done so it finds that each of the websites linked to the Disputed Domain Names are very substantially similar to the corresponding Complainant’s website in terms of layout, menu options and “look and feel”. It is in the Panel’s opinion inconceivable that those websites were independently derived. Further they each involve precisely the same business model in terms of offering customers a regular supply of the items in question in return for a monthly subscription.
The Panel would have no hesitation in concluding that either of the Respondent’s websites deliberately copied and imitated the corresponding website of the Complainant. The fact that the Respondent has two such websites, each copying a similar site of the Complainant makes the relevant comparison all the more obviously a case of plagiarism and unfair diversion of customers.
If the Respondent’s websites are examined it will be found that both sites say in their terms that “Le Site est édité et exploité par la société Wave Rock ltd (ci-après « la Société ») dont le siège social est situé 1 George Street #10-01, Singapore 049145”. The Panel has no idea who this Singapore company is or what if any relationship it has with the Respondent. Further although both the Respondent’s websites are in French and clearly directed at French customers each contain an address for the return of products in Barcelona in Spain. None of this has been explained by the Respondent.
All of this at the very least cries out for a proper explanation from the Respondent if he really is suggesting his actions were in good faith. Instead a Response has been filed which simply ignores all of this evidence, asserts the Respondent has acted in good faith, says the Complainant has no relevant rights, and accuses the Complainant of “fabricating evidence”. The Respondent then requests a finding of Reverse Domain Name Hijacking. The Panel simply does not understand this Response – it bears no relation to the facts and ignores the manner in which the Respondent’s websites clearly replicate those of the Complainant. The Respondent does not explain what it is he says is “fabricated” but it cannot be the website content as the Panel has inspected the websites in question directly. There is not (so far as the Panel can determine) any other relevant material which can be said to be “fabricated”.
In all the circumstances the Panel does not accept the Respondent’s arguments and finds that the Disputed Domain Names have each been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <bonbox.net> and <coffee-box.org> be transferred to the Complainant. The Panel declines the Respondent’s request for a finding that the Complaint has been brought in bad faith.
Nick J. Gardner
Date: September 20, 2019