WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

SunPower Corporation v. Relaxbaden B.V.

Case No. DNL2016-0047

1. The Parties

Complainant is SunPower Corporation of San Jose, California, United States of America, represented by Merkenbureau Knijff & Partners B.V., the Netherlands.

Respondent is Relaxbaden B.V. of Oss, the Netherlands, internally represented.

2. The Domain Name and Registrar

The disputed domain name <sunpower.nl> (the “Domain Name”) is registered with SIDN through Realtime Register.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2016. On August 23, 2016, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On August 24, 2016, SIDN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).

In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 26, 2016. In accordance with the Regulations, article 7.1, the due date for Response was September 15, 2016. The Response was filed with the Center on September 15, 2016.

On September 16, 2016, SIDN commenced the mediation process. On October 4, 2016, SIDN informed the Parties that the dispute had not been resolved in the mediation process.

The Center appointed Remco M.R. van Leeuwen as the panelist in this matter on October 19, 2016. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.

4. Factual Background

The Complainant

Complainant is an American energy company that inter alia designs and manufactures crystalline silicon photovoltaic cells, roof tiles and solar panels. As stated at Complainant’s website (“www.sunpower.com”), SunPower has been developing record-breaking solar technology since the 1970s and leading global solar innovation since 1985.

The Trademarks

Complainant is inter alia holder of the Benelux trademark SUNPOWER (word mark), filed on January 11, 1999, with registration number 0645519, for goods in class 9 (solar panels); the European Union Trade Mark SUNPOWER (word mark), registered on April 5, 2006, registration number 003834496, for goods and services in classes 9 (photovoltaic cells and modules), 37 (installation, repair and maintenance of photovoltaic cells and modules) and 42 (technology consultation in the field of photovoltaic cells, photovoltaic modules and solar cell modules); and the European Union Trade Mark SUNPOWER (word mark), registered on December 15, 2011, registration number 009583303, for goods in classes 6 (mounting systems for solar collectors), 11 (solar photovoltaic collectors) and 19 (roofing, not of metal, incorporating solar cells) (hereinafter referred to as the “Trademarks”).

The Domain Name

The Domain Name was registered by Respondent on October 16, 2013.

On June 13, 2016 the website associated with the Domain Name resolved to a landing page which only showed the Trademarks and other registered trademarks held by Complainant such as European Union figurative trademarks SUNPOWER, registration numbers 010496719 and 011008026, and SUNPOWER MORE ENERGY, FOR LIFE, registration number 0011405792. On June 13, 2016, Complainant’s trademark attorney informed Respondent that its registration of the Domain Name constituted an unauthorized use of the Trademarks.

On June 14, 2016, Respondent replied to Complainant that the landing page associated with the Domain Name had been removed. According to Respondent, it created the Domain Name and informed Complainant in the hope of obtaining a dealership relationship with Complainant, and it further offered the Domain Name for sale to Complainant.

After Respondent, on August 2, 2016, proposed to sell the Domain Name to Complainant for EUR 5,000, no agreement was reached and Respondent did not transfer the Domain Name to Complainant.

At the filing date of the Complaint the Domain Name did not resolve to an active website. After commencement of this proceeding, Respondent brought online a new webpage to which the Domain Name resolved for the purpose of promoting Respondent’s “Sun-Power” sauna cabins with therapeutic daylight qualities.

5. Parties’ Contentions

A. Complainant

Complainant contends, summarized, the following.

The Domain Name is identical or confusingly similar to the Trademarks

According to Complainant, it is established case law that the country code Top-Level Domain (“ccTLD”) “.nl” may be disregarded in assessing the similarity between the relevant trademark(s) on the one hand, and the disputed domain name on the other hand. Therefore, the Domain Name is identical to the Trademarks for purposes of the Regulations.

The Respondent has no rights or legitimate interests in the Domain Name

According to Complainant, Respondent has no rights to or legitimate interests in the Domain Name. Respondent does not own any trademark rights in the mark SUNPOWER. Respondent is not commonly known by the Domain Name, but under inter alia the names “Relaxbaden B.V.”, “Topsaunas.nl” and “Nobel Saunas”. Respondent is not connected to Complainant’s business. Respondent is a trading company, active in the field of saunas, whirlpools and wellness. Complainant has never authorized Respondent to use the Domain Name and Complainant has never granted a license to Respondent to use the Trademarks or its company name.

The Domain Name has been registered or is being used in bad faith

Referring to the facts mentioned in Section 4 above, Complainant asserts that the Domain Name has been registered or is being used in bad faith.

Complainant notes in particular Respondent’s admission that the website was created and alerted to Complainant in the hope of achieving a dealer relationship, and Respondent’s attempt to receive unreasonable consideration far in excess of its out-of-pocket expenses.

The Complaint includes documents in support of the above.

B. Respondent

Respondent has outlined a timeline and on this basis contends, summarized, the following.

On June 13, 2016, Respondent was informed by Complainant’s trademark attorney of allegedly unfounded use of the Domain Name. On June 14, 2016, Respondent informed Complainant that no website was in use as such, and expressed willingness to sell the Domain Name to Complainant.

On July 27, 2016, Respondent wrote that there is no legal ground to claim the Domain Name, mainly due to the fact that it is not a brand name but a term composed of two existing words. In addition, Respondent noted that it started to use the Domain Name in relation to the health industry, not the solar power industry. Respondent repeated its willingness to negotiate a price for the Domain Name.

On July 28, 2016, Respondent was informed by Complainant that Complainant would prefer to settle for a low fee, instead of taking further steps.

After Complainant requested an offer for the transfer of the Domain Name, Respondent on August 2, 2016 asked EUR 5,000 for the Domain Name.

After Complainant on August 3, 2016 declined this asking price as unreasonable, on August 10, 2016 it offered EUR 1,000.

On September 8, 2016, Respondent informed Complainant of the current use of the Domain Name for the purpose of promoting the latest generation of Sun-Power saunas with therapeutic sunlight qualities.

Furthermore, Respondent renewed its offer to transfer the Domain Name to Complainant for EUR 5,000.

6. Discussion and Findings

Pursuant to article 2.1 of the Regulations, Complainant’s request to transfer the Domain Name must meet three cumulative conditions:

a. the Domain Name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which Complainant has rights, or other name by means of article 2.1(a) under II of the Regulations; and

b. Respondent has no rights to or legitimate interests in the Domain Name; and

c. the Domain Name has been registered or is being used in bad faith.

Considering these conditions, the Panel rules as follows.

A. Identical or Confusingly Similar

Complainant bases its Complaint on the Trademarks. It has submitted a copy of its trademark registrations demonstrating that it is the holder of the Trademarks. These are protected under Dutch law. The Panel will assume the validity of the Trademarks and review the Complaint on this basis.

It is established case law that the ccTLD “.nl” may be disregarded in assessing the similarity between the relevant trademark(s) on the one hand, and the disputed domain name on the other hand (see Caterpillar Inc. v. H. van Zuylen Materieel, WIPO Case No. DNL2011-0073; Taylor Made Golf Company, Inc. v. Lotom Group S.A., WIPO Case No. DNL2010-0067; Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).

The Domain Name incorporates the Trademarks in full. Consequently, the Panel finds that the Domain Name is identical to the Trademarks for purposes of the Regulations; the first requirement of article 2.1(a) under I of the Regulations is thus met.

B. Rights or Legitimate Interests

Pursuant to article 2.1(b) of the Regulations, a complainant must make out a prima facie case that the respondent lacks rights to or legitimate interests in a domain name. Once a complainant establishes a prima facie case that the respondent lacks rights to or legitimate interests in the domain name, the burden of proof shifts to the respondent to show that it has rights to or legitimate interests in the domain name (paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), which views are also relevant under the Regulations¹ ).

Complainant has established rights in the Trademarks. Furthermore, it is undisputed that Complainant has not granted any license or otherwise authorized Respondent to use the Trademarks or obtain any domain name incorporating the Trademarks. Also, no commercial relationship exists between Complainant and Respondent.

Respondent has not shown rights to or legitimate interests in the Domain Name. The Panel could not establish indications that any of the circumstances as described in article 3.1 of the Regulations apply, nor that Respondent appears to have rights to or legitimate interests in the Domain Name in any other way.

Based on the foregoing, the Panel rules that Complainant has fulfilled its obligation to establish prima facie that Respondent has no rights to or legitimate interest in the Domain Name; Complainant has met the requirement of article 2.1(b) of the Regulations.

C. Registered or Used in Bad Faith

Pursuant to article 2.1(c) of the Regulations, a complainant must establish that the domain name has been registered or is being used in bad faith. Article 3.2 of the Regulations provides the following
non-exclusive list of circumstances that may evidence registration and use of a domain name in bad faith:

a. the domain name has been registered or acquired primarily for the purpose of selling, renting or transferring it to the complainant or to the complainant’s competitors for valuable consideration in excess of the cost of registration;

b. the domain name has been registered in order to prevent the complainant from using it;

c. the domain name has been registered primarily for the purpose of disrupting the complainant’s activities;

d. the domain name has been or is being used for commercial gain, by attracting Internet users to a website of the registrant or other online location through the likelihood of confusion which may arise with the trademark, trade name, personal name, name of a Dutch public legal entity or name of an association or foundation registered in the Netherlands as to, for example, the source, sponsorship, affiliation or endorsement of the website of the registrant or other online location(s) or of products or services on the domain registrant’s website or another online location.

In pre-filing correspondence between the Parties, Respondent apparently stated:

“The web page is gone, this was made at some point and forwarded to SunPower Corp in the hope of a dealership. Obviously Sunpower Corp. can make a nice bid on the domain sunpower.nl. I also have another nice domain name on offer: (…)”.

Considering this statement and Complainant’s prior rights, the Panel finds that Respondent was aware of Complainant and the Trademarks at the time it acquired the Domain Name. The Parties’ pre-filing correspondence indicates that Respondent solicited Complainant to buy the Domain Name, after it no longer resolved to a landing page. It appears that Respondent registered the Domain Name primarily to sell it for valuable consideration in excess of Respondent’s registration expenses. Under the Regulations, an offer of this nature may be treated as evidence of bad faith.

The changes which Respondent made to the webpage to which the Domain Name resolves after the Complaint was submitted also provide an indication of bad faith.

Noting the specific cumulative circumstances in this case (see The Coca-Cola Company v. P. Engbers, WIPO Case No. DNL2012-0037; and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), the Panel finds that the requirement of registration and/or use in bad faith of the Domain Name pursuant to article 2.1(c) of the Regulations has been met.

7. Decision

For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name <sunpower.nl> be transferred to Complainant.

Remco M.R. van Leeuwen
Panelist
Date: October 28, 2016

¹ While the Complaint is brought under the Regulations, and not the Uniform Domain Name Dispute Resolution Policy (“UDRP”), given the similarities between the two, where applicable the Panel considers UDRP precedent relevant to the current proceeding, and will refer to it throughout.