WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Treezor v. Nicolas Piquerez
Case No. DEU2021-0003
1. The Parties
The Complainant is Treezor, France, internally represented.
The Respondent is Nicolas Piquerez, France, self-represented.
2. The Domain Name, Registry, and Registrar
The Registry of the disputed domain name <treezor.eu> is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the disputed domain name is Dynadot, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2021. On February 8, 2021, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On February 9, 2021, the Registry 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 .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 10, 2021. In accordance with the ADR Rules, Paragraph B(3)(a), the due date for Response was March 24, 2021. The Center received three email communications from the Respondent on February 10, 2021. In response to a notification by the Center that the Respondent’s communications were administratively deficient, the Respondent filed a compliant Response on February 17, 2021.
The Center verified that the Response satisfied the formal requirements of the ADR Rules and the Supplemental Rules. On February 18, 2021, both Parties submitted supplemental filings to the Center.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on February 23, 2021. 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 ADR Rules, Paragraph B(5).
4. Factual Background
The Complainant is Treezor, which is a French electronic money company accredited by the French banking authority to perform its activities and registered with the Paris Trade and Companies Registry since October 29, 2014.
The Complainant is the owner of the following trademarks (the “TREEZOR trademark(s)”):
- The French word trademark TREEZOR No. 4131710, registered on November 5, 2014, in class 35, 36, 38, and 42;
- The French word trademark TREEZOR No. 4690292, registered on October 9, 2020 with a request for extension to French Polynesia in classes 9, 35, 36, and 42;
- The French semi-figurative trademark TREEZOR WE DO BANKING AS A SERVICE No. 4562431, registered on June 25, 2019, in classes 36 and 42;
- The French figurative trademark TREEZOR No. 4694285, published on October 22, 2020, in classes 9, 35, 36, and 42.
The disputed domain name <treezor.eu> was registered on November 23, 2020. The disputed domain name resolves to an active website stating “Treezor Gentle skin and body made by trees” with three clickable links: “We are trees”, “Origin”, and “Contact”.
5. Parties’ Contentions
A. Complainant
In accordance with the ADR Rules, Paragraph B(1)(b), the legal and factual elements on which the Complainant relies are set out below.
First of all, the Complainant asserts that the disputed domain name is confusingly similar to prior trademarks of the Complainant, since it is identical to the TREEZOR trademarks.
Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since at the date of the registration of the disputed domain name and at the date of the complaint, the TREEZOR trademarks have only been registered by the Complainant and the Respondent did not hold any rights to the TREEZOR trademarks that could allow the Respondent to justify the registration of the disputed domain name.
The Complainant adds that it does not appear that the Respondent has made any use of such name prior to the complaint, or that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name.
Finally, the Complainant claims that the disputed domain name was registered and is used in bad faith.
The Complainant argues that the disputed domain name leads to an active website with no content whatsoever indicating either what is being sold nor its purpose, since the homepage only contains three clickable tabs without any additional text or information, one of which not leading to any page, the second one leading to a page only containing non-clickable stock photos of trees and nature, and the last one leading to a page only containing the email address “[…]@treezor.eu” without any other contact information.
The Complainant adds that the website accessible through the disputed domain name contains no legal mention of any kind.
The Complainant explains having received an email from a “company” named “Internet Service France” notifying of the existence of the disputed domain name and offering the Complainant the possibility of having it transferred for the annual fee of EUR 29,95 or a single flat rate of EUR 299,5, warning that “if a third party registers the Domain Name, it may have serious consequences” and that “confusion in search engines, loss of turnover or damage in terms of image” must be taken into account.
The Complainant indicates that while searching for more information on the “company” from which this email came, the Complainant was directed to the webpage “signal-arnaques.com”, on which many users shared similar experiences of receiving such emails from this “company”.
The Complainant adds having found that the disputed domain name holder has 59 domain names and that 26 other domain names are registered with the Respondent’s email address, some of which redirecting to legitimate webpages that appear to have no connection with the Respondent, some others being inactive, such as “ouibus.us”, and some others being offered for sale.
For all these reasons, it is requested that the disputed domain name be transferred to the Complainant.
B. Respondent
The Respondent considers that the disputed domain name is not confusing for customers as the Complainant offers a B2B accounting solution and thus its clients are accounting companies, whereas the Respondent’s website offers soap, shampoo, and body cream for B2C, its clients being individuals interested in organic soap products and small local soap shops.
The Respondent adds that its website is active and used by soap partners and shops, and that it is thus critical for its operations to maintain the disputed domain name.
The Respondent also underlines having registered the “Treezor” trademark for classes 3, 5, and 44, whereas the Complainant registered the TREEZOR trademarks in classes 9, 35, 36, and 42, so that the classes are not confusing for customers, adding that the Complainant could have registered the disputed domain name since it was publicly available for registration.
The Respondent also indicates that its website was active prior to any notice of the dispute and is now well indexed by Google, after being active for months, and that it is different from the Complainant’s website so that consumers cannot be confused.
The Respondent reminds having registered the “Treezor” trademark for a legitimate use of its website and considers making a fair use of this website and not intending to mislead the Complainant’s consumers.
The Respondent then argues that the disputed domain name was registered for the purpose of offering a soap product range made from tree oils and not in an intentional attempt to create a likelihood of confusion with the Complainant’s name, reminding that they are not competitors and that their clients are different.
Finally, the Respondent asserts not being related to the “company” that sent an email to the Complainant and indicates having a legitimate plan to develop natural and organic soap products, and points out that the Respondent founded Ouibus in 2013, which is the reason why the Respondent registered for example the domain name “ouibus.us”.
6. Discussion and Findings
Paragraph B(11)(d) of the ADR Rules provides that the Panel shall issue a decision granting the remedies requested by the Complainant in the event that the Complainant proves the following three elements:
(i) The domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or European Union law and; either
(ii) The domain name has been registered by the Respondent without rights or legitimate interests in respect of the domain name that this is the subject of the Complaint name; or
(iii) The domain name has been registered or is being used in bad faith.
A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or European Union law
According to the ADR Rules, Paragraph B(11)(d)(1)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or European Union law.
First of all, the Panel finds that the Complainant has provided evidence that it has rights on the TREEZOR trademark.
Then, the Panel notices that the disputed domain name is wholly and exclusively composed of (i) the TREEZOR trademark, to which have been added (ii) the “.eu” suffix.
The Panel wishes to remind that according to ADR panels, the panel’s review consists of a comparison between the disputed domain name and the name for which a right is recognized or established by national and/or European Union law, the “.eu” suffix should be disregarded for assessing identity or confusing similarity, as well as the use of a hyphen between words (see sections 1.7 and 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”))1 .
Moreover, the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a
side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the UDRP (See section 1.7 of the WIPO Overview 3.0).
The fact that a domain name wholly incorporates a complainant’s registered trademark may be sufficient to establish that the domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or European Union unity law for purposes of the ADR Rules.
Regarding the disputed domain name, the Panel finds that it wholly and exclusively incorporates the TREEZOR trademark, so that it is identical to the trademarks on which the Complainant has rights.
Therefore, the Panel holds that the Complainant has established the first element of Paragraph B(11)(d)(1)(i) of the ADR Rules and that the disputed domain name is confusingly similar to the Complainant’s TREEZOR trademark.
B. Rights or Legitimate Interests
According to the ADR Rules, Paragraph B(11)(d)(1)(ii), the Complainant shall demonstrate that the disputed domain name has been registered by the Respondent without rights or legitimate interests in the disputed domain name.
The ADR Rules, Paragraph B(11)(e), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.
These circumstances are:
(1) prior to any notice of the dispute, the Respondent has used the domain name or a name corresponding to the domain name in connection with the offering of goods or services or has made demonstrable preparation to do so;
(2) the Respondent, being an undertaking, organisation or natural person, has been commonly known by the domain name, even in the absence of a right recognised or established by national and/or European Union law;
(3) the Respondent is making a legitimate and noncommercial or fair use of the domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognised or established by national law and/or European Union law.
According to prior ADR panel decisions, concerning the burden of proof regarding a lack of rights or legitimate interests, the complainant only needs to establish a prima facie case and then, the onus shifts to the respondent to rebut the assertion that the respondent lacks rights or legitimate interests.
Here, the Panel finds that the Complainant has shown prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name and has not been commonly known by the disputed domain name.
The Panel notes that the Respondent claims that its website, accessible through the disputed domain name, is active and used by soap partners and shops, that it was active prior to any notice of the dispute and that it is now well indexed by Google.
The Panel also took note that the Respondent considers making a fair use of its website and not intending to mislead the Complainant’s consumers, having registered the disputed domain name for the purpose of offering soap products not in an intentional attempt to create a likelihood of confusion with the Complainant’s name, which is not its competitor, their clients being different.
Nevertheless, the Panel finds that the Respondent has not provided evidence of such use in connection with the offering of soap products, or any preparation to do so or any other fair use of the disputed domain name.
Indeed, the disputed domain name still leads, at the time of the decision, to a website with no effective content, since the homepage only contains three links, one of which does not leading to any page, the second one leads to a page containing stock photos with no other information nor link, and the last one leading to a page only containing a single email address “[…]@treezor.com”.
The Respondent does not provide any evidence of activity in connection with the offering of soap products as stated, or at least a preparation to do so.
The only evidence provided by the Respondent in connection with this activity is the application for registration of the trademark “Treezor”, which is dated February 10, 2021, and is therefore subsequent both to the registration of the Complainant’s trademarks and to the notification of the complaint in the current ADR procedure , so that it cannot be considered as evidence of rights or legitimate interests in the disputed domain name.
Therefore, the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered or Used in Bad Faith
According to the ADR Rules, Paragraph B(11)(d)(1)(iii), the Complainant shall prove that the disputed domain name has been registered or is being used in bad faith.
Thus, Paragraph B(11)(f) provides that any one of the following nonexclusive scenarios constitutes evidence of a respondent’s bad faith:
(1) Circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name to the holder of a name, in respect of which a right is recognised or established by national and/or European Union law, or to a public body; or
(2) The domain name has been registered in order to prevent the holder of such a name in respect of which a right is recognised or established by national and/or European Union law, or a public body, from reflecting this name in a corresponding domain name, provided that:
(i) the Respondent has engaged in a pattern of such conduct; or
(ii) the domain name has not been used in a relevant way for at least two years from the date of registration; or
(iii) there are circumstances where, at the time the ADR Proceeding was initiated, the Respondent has declared its intention to use the domain name, in respect of which a right is recognised or established by national and/or European Union law or which corresponds to the name of a public body, in a relevant way but failed to do so within six months of the day on which the ADR Proceeding was initiated;
(3) the domain name was registered primarily for the purpose of disrupting the professional activities of a competitor; or
(4) the domain name was intentionally used to attract Internet users, for commercial gain to the Respondent’s website or other online location, by creating a likelihood of confusion with a name on which a right is recognised or established, by national and/or European Union law, or it is a name of a public body, such likelihood arising as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location of the Respondent; or
(5) the domain name is a personal name for which no demonstrable link exists between the Respondent and the domain name registered.
First of all, the Panel finds that it is established that the Complainant’s trademarks were registered before the registration of the disputed domain name.
Moreover, the Panel finds that the Respondent knew, or should have known, that the registration of the disputed domain name would be confusingly similar to the Complainant’s trademark, given the fact that the disputed domain name exclusively reproduces the TREEZOR trademark in its entirety.
Furthermore, the Panel finds that the Complainant seems to have been the victim of an attempted scam through an email offering to transfer the disputed domain name for the annual fee of EUR 29,95 or a single flat rate of EUR 299,5 only two weeks after its registration, from a company that does not seem to exist but whose references are listed by several Internet users on a website reporting scams.
Even if the link between this email and the Respondent is not expressly established by the Complainant, this Panel notes that the Respondent is also the owner of a large number of domain names which are composed of generic names or third party trademarks (such as OUIBUS) and with which the Respondent does not appear to be affiliated and he does not appear to use them.
With respect to the trademark OUIBUS and the domain name <ouibus.us> held by the Respondent, the Respondent states that he was the founder and had registered the trademark on July 9, 2015. However, there is no indication that the Respondent actually was the founder of this SNCF subsidiary, and the Respondent further omits to state that the mark he had filed on July 9, 2015 has been fully withdrawn on August 24, 2015. Although the trademark OUIBUS is not the subject of this case, it was discussed between the parties as an example, this Panel finds it is therefore worthy of consideration and does not support good faith on the part of the Respondent.
Consequently, in view of all the elements of this case, the Panel finds that the disputed domain name has been registered and is being used in bad faith according to the ADR Rules, Paragraph B(11)(d)(1)(iii).
7. Decision
For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name, <treezor.eu>, be transferred to the Complainant2 .
Christiane Féral-Schuhl
Sole Panelist
Date: March 19, 2021
1 Considering the substantive similarities between the ADR Rules and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel also refers to UDRP case law and analysis, where appropriate.
2 (i) The decision shall be implemented by the Registry within thirty (30) days after the notification of the decision to the Parties, unless the Respondent initiates court proceedings in a Mutual Jurisdiction, as defined in Paragraph A(1) of the ADR Rules.
(ii) The Complainant, based in France, satisfies the general eligibility criteria for registration set out in Article 4(2)(b) of Regulation (EC) No. 733/2002 as amended by Regulation (EU) 2019/517.