WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DELSEY v. W de Vires

Case No. DNL2017-0033

1. The Parties

The Complainant is DELSEY of Tremblay-en-France, France, represented by Alain Bensoussan SELAS, France.

The Respondent as registered is W de Vires of Sliedrecht, Netherlands.

2. The Domain Name and Registrar

The disputed domain name <delseyshop.nl> is registered with SIDN through Registrar.eu.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 9, 2017. On the same day, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain name. On June 12, 2017, SIDN 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 sent an email communication to the Complainant on June 13, 2017 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 amendment to the Complaint on June 14, 2017.

The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on June 15, 2017. In accordance with the Regulations, article 7.1, the due date for Response was July 5, 2017. A brief Response was filed with the Center on July 7, 2017.

The Center appointed Hub J. Harmeling as the panelist in this matter on July 12, 2017. 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

Delsey is a French company founded in 1928 that designs and sells goods related to luggage and luggage accessories, such as suitcases, backpacks and attaché cases. Complainant owns the following trademark registrations of DELSEY:

Trademark

Registration

Number

Registration date

(Nice) Classification

DELSEY

International

No. 638334

June 26, 1995

18

DELSEY

International

No. 401887

October 26, 1973

18

DELSEY

European Union

No. 002565034

July 29, 2003

18

DELSEY

European Union

No. 002568509

July 8, 2003

18

DELSEY

European Union

No. 015683253

November 23, 2016

18

 

The Complainant furthermore holds domain names composed of its DELSEY trademark. It has provided evidence of registration of the following domain names:

- <delsey.com> registered on January 14, 1999

- <delsey.net> registered on November 18, 2002

- <delsey.nl> registered on January 29, 2003

- <delsey.info> registered on August 23, 2001

The Respondent is officially registered in the SIDN register as "W de Vires". This is an evident typographical error, since the Respondent's actual name, as provided in the Response, is "de Vries", and not "de Vires". This typographical error has not resulted in any deficiencies in the notification under the Regulations. In any event, the Complaint and this decision address the domain name registrant as provided for in the SIDN register.

The Respondent has registered the domain name <delseyshop.nl> on October 21, 2005 (the "Disputed Domain Name"). The Disputed Domain Name resolves to the Respondent's website "www.bagagespecialist.nl", where the Respondent offers for sale products in the same field as the Complainant's. The Complainant states that a cease and desist letter was sent to the Respondent on July 20, 2016.

5. Parties' Contentions

A. Complainant

The Complainant claims rights in the trademark DELSEY, which it has registered in several jurisdictions. The Complainant contends that the Disputed Domain Name is confusingly similar to the trademarks registered by the Complainant. The Respondent has, according to the Complainant, no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant further contends that the Disputed Domain Name is registered and is being used in bad faith.

The Complainant has cited a number of previous decisions under the Uniform Domain Name Dispute Resolution Policy ("UDRP") that it considers to be supportive of its case.

The Complainant requests the Disputed Domain Name to be transferred to itself.

B. Respondent

The Respondent did not reply to the Complainant's contentions within the time limits set by the Regulations. On July 7, 2017, two days after the expiration of the deadline, the Respondent sent an email to the Center in the Dutch language stating that representatives of the Complainant had approved the registration of the Disputed Domain Name, that Delsey is indeed a brand that is being sold on the website hosted under the Disputed Domain Name, and that the Disputed Domain Name has already been operational for twelve years.

Administrative Panels have the discretion to decide whether to consider an untimely response. The Administrative Panel holds that it will take the Respondent's position into account in its discussion whether the Complaint satisfies the requirements of the Regulations.

6. Discussion and Findings

Article 2.1 of the Regulations states that complaints may be submitted by any party which asserts and establishes that:

(a) a domain name is identical or confusingly similar to:

I. a trademark, or trade name, protected under Dutch law in which the complainant has rights; or

II. a personal name registered in the General Municipal Register ("gemeentelijke basisadministratie") of a municipality in the Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in the Netherlands under which the complainant undertakes public activities on a permanent basis; and

(b) the registrant 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.

The Complainant has made the relevant assertions as to the above. The dispute is properly within the scope of the Regulations and the Panel has jurisdiction to decide the dispute.

While the Complaint is brought under the Regulations and not the UDRP, given the similarities between the two, where applicable the Panel considers UDRP precedent relevant to the current proceeding, and will refer to it where appropriate.

A. Identical or Confusingly Similar

The Disputed Domain Name is <delseyshop.nl>. The Top-Level Domain ("TLD") designation of disputed domain names may generally be disregarded in the assessment of confusing similarity under the Regulations, and what remains of the Disputed Domain Name is "delseyshop". The Complainant seeks to prove that the Disputed Domain Name is confusingly similar to the protected trademarks registered by the Complainant.

The Panel finds that the Disputed Domain Name and the Complainant's trademarks are indeed confusingly similar. The addition of the general term "shop" is not sufficient to avoid confusion between the registered trademarks and the Disputed Domain Name. See for example Chanel Inc v Estco Group, WIPO Case No. D2000-0413, in relation to <chanelstore.com>.

B. Rights or Legitimate Interests

The Complainant contends that the Respondent does not have rights or legitimate interests in respect of the Disputed Domain Name. The Respondent may demonstrate such rights or legitimate interests on its part inter alia through the following circumstances listed in article 3.1 of the Regulations:

(a) before having any notice of the dispute, the registrant made 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;

(b) the registrant as an individual, business or other organization is commonly known by the domain name;

(c) the registrant is making a legitimate noncommercial use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish or otherwise damage the relevant trademark, trade name, personal name, name of a Dutch public legal entity or name of an association or foundation located in the Netherlands.

The Respondent does not hold any protected trademark relating to "Delsey" or "Delseyshop". The Panel has noted that the Complainant's rights in its trademarks precede the Respondent's registration of the Disputed Domain Name. Moreover, the Respondent does not trade under the name "Delseyshop", as the Disputed Domain Name redirects visitors to its proper website, namely "www.bagagespecialist.nl". The Respondent therefore is not commonly known by the Disputed Domain Name, and the Respondent cannot rely on article 3.1(b) of the Regulations.

It is undisputed that the Disputed Domain Name redirects to an online shop. Therefore, the use of the Disputed Domain Name is commercial, and the Respondent cannot rely on article 3.1(c) of the Regulations.

Lastly, the Complainant has adequately demonstrated that the Respondent has not used the Disputed Domain Name for a bona fide offering of goods or services.

In this respect, the Complainant first contends, that the Respondent has never been licensed or authorized to use the DELSEY trademarks. While disputing this contention in the Response, the Respondent however has failed to provide any evidence of such authorization. It is moreover undisputed that the Respondent has not replied to the above mentioned cease and desist letter, which, if the Respondent would indeed have been authorized or licensed to use the DELSEY trademarks, would have been the logical thing to do. The absence of such response does little to support the Respondent's authorization claim. The Respondent's suggestion of actual use of the Disputed Domain Name for twelve years remains unsubstantiated and such use in itself would not be conclusive to find a legitimate interest on the Respondent's side.

In this regard the Panel notes that, the Disputed Domain Name redirects to the Respondent's online shop with an offering of multiple luggage brands and describing itself as "De Samsonite shop van Nederland", i.e. "The Samsonite Shop of the Netherlands". The Respondent thus uses the Disputed Domain Name to redirect to an offering of brands that directly compete with the Complainant, even if the Respondent also sells DELSEY products. This cannot be considered a bona fide offering of goods and services under the Disputed Domain Name (see in this regard, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001‑0903).

The Panel is therefore satisfied that the Respondent does not have rights or legitimate interests in the Disputed Domain Name.

C. Registered or Used in Bad Faith

Paragraph 3.2 of the Regulations sets out four non-exclusive circumstances any of which, if found by the Panel, shall be evidence of registration and use of a domain name in bad faith.

In particular, paragraph 3.2(d) of the Regulations states that if the panel finds that 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 as to, for example, the source, sponsorship, affiliation or endorsement of the website of the Respondent or other online location(s) or of products or services on the Respondent's website or another online location, it should be taken as evidence that a domain name has been registered or is being used in bad faith.

The Panel finds that the evidence submitted by the Complainant supports a finding of bad faith under paragraph 3.2(d) of the Regulations. The Respondent's use of the Disputed Domain Name attracting Internet users for commercial gain is established by the fact that the website is a platform for an online shop offering products under multiple, competing luggage brands.

The Panel finds that, the Respondent has used the Disputed Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion which may arise with the Trademark as to the source, sponsorship and endorsement of the website. The likelihood of confusion as to source, sponsorship, affiliation or endorsement is established by the fact that the Disputed Domain Name is confusingly similar to the Complainant's registered trademarks. The fact that the website at the Disputed Domain Name also offers products of the Complainant does not alter the conclusion of misleading and bad faith use.

7. Decision

For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain name delseyshop.nl be transferred to the Complainant.

Hub J. Harmeling
Panelist
Date: July 26, 2017