WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BIC Graphic Europe S.A. and Société BIC v. Alpha Holding B.V.

Case No. DNL2015-0059

1. The Parties

The Complainants are BIC Graphic Europe S.A. of Tarragona, Spain and Société BIC of Clichy, France, internally represented.

The Respondent is Alpha Holding B.V. of Oud-Beijerland, the Netherlands, internally represented.

2. The Domain Name and Registrar

The disputed domain name <bic-pen.nl> (the “Domain Name”) is registered with SIDN through Virtual Registrar.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2015. On this date, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain name. On October 21, 2015, 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 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 the Respondent of the Complaint, and the proceedings commenced on October 23, 2015. In accordance with the Regulations, article 7.1, the due date for Response was November 12, 2015. On November 10, 2016, the Respondent filed a response with the Center. The Center noted that this response was submitted in the Dutch language. The language of the proceeding is determined by article 17 of the Regulations. As in this case the Complainants neither reside nor are registered in the Netherlands, the language of the proceedings in this case is English. The Center informed the Respondent accordingly and the Response, translated in English, was filed with the Center on November 12, 2015.

On November 12, 2015, the Complainants filed an email communication with the Center with a question regarding the possibility of the submission of a supplemental filing. On November 13, 2015, the Respondent filed an email communication with the Center stating, inter alia, that “Should it be possible that both parties may respond to each other, we have no problem with that”. The Complainants filed a supplemental filing with the Center on November 19, 2015; the Respondent did not file a reply to this supplemental filing.

On November 16, 2015 SIDN commenced the mediation process. On January 19, 2016 SIDN informed the parties that the dispute had not been solved in the mediation process.

On the same date, the Complainants filed a request for consolidation of this Complaint and the complaint for the domain name <bic-pennen.nl>. On January 26, 2016, the Respondent objected to the request of the Complainants for consolidation. On January 27, 2016, the Center denied the request for consolidation.

The Center appointed Remco M.R. van Leeuwen as the panelist in this matter on February 15, 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

As stated at the BIC group’s website (“www.bicworld.com”), Société BIC and its subsidiaries have an international presence with 9,550 employees around the world. Since launching its first ballpoint pen more than 60 years ago, the BIC Group continues to apply high-tech processes to improve and diversify their writing products. The BIC group also offers a complementary range of stationery accessories.

Further, the BIC’s group of companies offer lighters, shavers, promotional products and other products. Millions of BIC products are sold every day in 3.2 million retail outlets in 160 countries, on every continent, in both mature and emerging markets.

The Trademarks

According to the evidence submitted by the Complainants, Société BIC is the owner of a large number of trademarks in whole or partially consisting of the sign BIC and is the holder, together with its subsidiaries, of a large number of domain names which includes the name BIC.

Following a brief check in the relevant trademark registers, because the evidence and more in particular Annex 4 of the Complaint contains also expired trademark registrations, the Panel has established the following. The Complainant Société BIC is, inter alia, proprietor of the Community trademarks BIC (word mark), registered on October 16, 1998, registration number: 414904 and BIC (device mark; the well-known BIC logo), registered on October 2, 1998, registration number: 415067, both for goods in classes 8, 16 and 34. BIC Belgium, a(n indirect) subsidiary of the Complainants, is, inter alia, the proprietor of the Benelux trademark BIC (word mark), registered on December 28, 1971, registration number: 102251, for goods in class 16, with the note: “N usage depuis nov. 1950”.

In this decision these three (3) trademarks will also be referred to as the “Trademarks”.

Complainant BIC Graphic Europe is an indirect subsidiary of Société BIC and has acquired the right to use the Trademarks.

The Domain Name

The Domain Name, <bic-pen.nl>, was registered by the Respondent on August 9, 2013.

5. Parties’ Contentions

A. The Complainants

The Complainants contend, summarized, the following.

The Domain Name is identical or confusingly similar to the Trademarks

According to the Complainants, the fact that the Domain Name contains the word “bic”, which is identical or similar with the Trademarks, proves the use, without authorization, of the Complainants’ trademark rights and company names. The addition and use of the word “pen” in the Domain Name does not diminish such use of the Trademarks as these marks are registered for the products in the international class related to pens.

The Complainants contend that the Trademarks and their association with pens are largely known by the public and largely advertised in the Netherlands.

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

The Complainants explain that the Respondent and its group members are clients of the Complainant BIC Graphic Europe and they cannot pretend not being aware about the existence of the Trademarks as they receive yearly the BIC catalogues and (more) regularly advertising materials, such as newsletters. Further, the Complainants argue that the Complainant Société BIC also publishes various advertisements in the Netherlands depicting one or more of (the BIC products with) the Trademarks.

As a consequence and without express agreement by the Complainants, the Respondent has no legitimate interest in the Domain Name, according to the Complainants.

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

The Complainants state that the Respondent and its subsidiaries are clients of the Complainant BIC Graphic Europe and that they were contacted by the Complainants indicating that they have no rights in the Domain Name. The Respondent did not reply to the cease and desist letter of the Complainants.

The Complainants exhibit proof of the previous arguments.

B. The Respondent

The Respondent contends, summarized, the following.

The Respondent contends that the Domain Name is registered by the Respondent in order to enable Alpha Holland, an associated company, to use the Domain Name. For many years, Alpha Holland sells branded pens and is a dealer of BIC pens. Alpha Holland offers these pens via a so-called dealer site to users who cannot buy pens from Complainants directly, inter alia, accessible via the website “www.bic-pen.nl”. On the opening page of this site, visitors cannot be put on the wrong track. It is clear from the information on this page and immediately obvious that this website is not from BIC itself but the website of the dealer, according to the Respondent.

The Respondent disputes the argument of the Complainants that the Respondent has no rights or legitimate interests in the Domain Name. According to Dutch law, one may use a trademark in a domain name, provided that the company actually sells products of this brand and the products are bought within the EU. It is allowed to use the trade mark of someone else in a domain name as long as it is done in a businesslike manner in connection with sales of the brand in question, which is clear in this matter. In addition, it is undoubtedly clear to the visitor that BIC is not the owner of the opening page. It is quite clear this is about Alpha Holland, a dealer of pens/products of the BIC brand. In case there might be doubts regarding the good faith of this opening page, there cannot be any doubt. As far as applicable, the opening pages are adjusted periodically to the rules of the most recent and common law, all according to the Respondent.

The Respondent further argues that Alpha Holland offers branded pens to consumers / end-users via opening pages of the various brands of pens, including “www.bic-pen.nl”. The opening pages, where only pens / products of the BIC brand are shown, and which page is not used to sell competing products meet the wishes of BIC Netherlands to undertake activities in order to achieve the desired goals. In this way Alpha Holland has invested in marketing activities in order to increase sakes for pens with the BIC brand. Therefore, the Respondent has registered the Domain Name. This gave Alpha Holland the possibility to promote pens and products.

The Respondent does not understand that if the Complainants find the Domain Name important, they did not claim the Domain Name themselves. This must have been a deliberate choice, given the large number of domain names registered by the Complainants.

The Respondent contends that at the time of setting up the opening page, Alpha Holland had personal contact and spoke about this with the Dutch representative of BIC. The manner of investing and engaging in activities to increase the turnover of pens with the BIC brand were no problem for the representative of BIC in the Netherlands. After all, applying the Domain Name was in good faith as it was and is solely and still intended to increase the sale of pens. Even during annual assessments between the representative of the Complainants in the Netherlands and Alpha Holland it has never been raised that the use of the Domain Name should be contrary. It’s even so that in consultation with these representatives regular updates (including special offers) were carried out and the BIC range was updated.

The Respondent finds it therefore surprising that years of investing by a dealer could now be undone by a supplier of which it seems he want to “enrich” the usurping of domain names that in his eyes have become sufficiently commercially important at some point. In recent years the investments by Alpha Holland have led to increased sales of pens from the BIC brand, not to mention increase of sales of other products of the brand BIC.

Furthermore, the Respondent mentions that the policy of the Complainants is to sell only to resellers such as Alpha Holland and not to end users / consumers directly. There cannot be any disadvantage or confusion whatsoever. The Respondent refers in this respect to the judgement of the Court of Appeal of ‘s-Hertogenbosch, dated April 15, 2008 regarding the domain name <yonexbadminton.nl>, whereby the verdict of the District Court in Breda is ratified regarding the legitimate use by the dealer Belgro Badminton World of the brand YONIX in the domain name <yonexbadminton.nl>.

The Respondent argues that its use of the Domain Name in bad faith is absolutely incorrect and indeed the world upside down, given that in recent years Alpha Holland has invested with the goal to increase sales of pens and other products of the BIC brand. If someone should be accused of acting in bad faith then the Complainants should be as they apparently seem to be interested in claiming the Domain Name without any compensation or prior notification.

The Respondent exhibits proof of the previous arguments.

6. Discussion and Findings

Pursuant to article 2.1 of the Regulations, a request to transfer a domain name must meet three (3) cumulative conditions:

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

b. the 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, after its ruling concerning the Complainant’s supplemental filing and the Respondent’s application to file a response to this supplemental filing:

Supplemental submissions

The Panel does not consider that the Complainants’ supplemental filing is justified since no proper reason for its filing was advanced and therefore declines to accept it. The Respondent’s application to file a response to this supplemental filing will be treated similarly.

The parties should realize that there is no absolute right under the Regulations to file supplemental filings; no provision in the Regulations authorizes supplemental filings by either a complainant or a respondent without leave from the Panel. Article 11.1 of the Regulations provides that the panelist may invite the parties to submit further statements and/or (further) submissions. Article 11.2 of the Regulations unambiguously provides that should a party file a further submission without being so invited, the panelist (in its sole discretion) shall determine the admissibility of such submission.

In view of the fact that that the Regulations are to an extent based on the Uniform Domain Name Dispute Resolution Policy and Procedural Rules (“UDRP”), it is well established that cases decided under both the Regulations and the UDRP are relevant to this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V., WIPO Case No. DNL2008-0050).

To assist awareness of their views on certain questions that commonly arise in proceedings under the UDRP, the Center has produced an update and extension of its informal overview of panel positions on key procedural and substantial issues. In this regard the Panel notes that under the UDRP, as set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.2, it is the consensus view that as the UDRP Rules grant the Panel sole discretion to request further statements and determine the admissibility of evidence which may include an unsolicited filing, such filings, when received from a party, would typically be put before the Panel upon the Panel’s appointment - at no additional charge - for determination as to admissibility, and assessment of need for further procedural steps (if any). Panels have discretion whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. Most panels that have allowed unsolicited filings have also tended to require some showing of “exceptional” circumstances. Panels which accept a supplemental filing from one side typically allow the other party the opportunity to file a reply to such supplemental filing.

The relevant decisions on this point are: Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; AutoNation Holding Corp. v. Rabea Alawneh, WIPO Case No. D2002-0058; De Dietrich Process Systems v. Kemtron Ireland Ltd., WIPO Case No. D2003-0484; Wal-Mart Stores, Inc. v. Larus H. List, WIPO Case No. D2008-0193; NB Trademarks, Inc. v. Domain Privacy LTD and Abadaba S.A., WIPO Case No. D2008-1984; and Mejeriforeningen Danish Dairy Board v. Cykon Technology Limited, WIPO Case No. D2010-0776.

The situation in this case is similar to that in Lloyds TSB Bank PLC v. Daniel Carmel-Brown, WIPO Case No. D2008-1889, where the panel said in words which this Panel adopts with gratitude:

“The Center has rightly put before the Panel for consideration (or otherwise) at its discretion under the Rules the Complainant’s unsolicited Supplemental Filings and email in response received from the Respondent. In The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447, this Panel summarized the position regarding supplemental filings in proceedings under the Policy in the following terms:

‘Under the Policy and the Rules, parties have no right to submit additional arguments or evidence. However, the Panel may, in its sole discretion, request further statements or documents from the parties under paragraph 10 of the Rules; and a party’s request may be regarded as an invitation to the Panel to exercise this discretion.

The principles which should be applied in exercising this discretion have been considered in numerous cases decided under the Policy and Rules. The principles adopted and confirmed in these decisions are that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.

These principles are based on the purpose of the Policy and Rules of providing an expeditious and relatively inexpensive procedure for determining a certain type of domain name dispute, in which each party is entitled to make just one submission. One of the matters which the Panel has to bear in mind is that the admission of a further submission from one party may lead the other party to submit a further document in reply, which may lead to a further submission by the first party, and so on, thereby compromising the procedural economy sought to be established by the Policy and the Rules’”.

Further, the Panel notes that the Regulations and relevant panel decisions demonstrate a decided preference for single submissions by the parties absent exceptional circumstances and have accepted unsolicited supplemental submissions in very limited circumstances.

In view of the foregoing, the Panel has determined that the Complainant’s supplemental submission is not warranted by exceptional circumstances. As such this submission has not been considered by the Panel in reaching its decision. This is also the reason that the Respondent’s application to file a response to this supplemental filing is declined, if and to the extent that this application is still valid.

A. Identical or Confusingly Similar

Pursuant to article 2.1(a) of the Regulations, the Complainants must establish that the Domain Name is identical or confusingly similar to the Trademarks.

The Complainants have established that the Complainant Société BIC is the owner of a large number of trademark registrations, in whole or partially consisting of the sign BIC, including the Trademarks. These marks predate the date of registration of the Domain Name and are protected, inter alia, in the Benelux.

For the sake of completeness, the Panel notes that the Complainants mention the similarity of the Domain Name with their company names. However, the Complainants did not invoke and/or submitted proof of actual use of a (identical or confusingly similar) (foreign) trade name protected under Dutch law in which the Complainants have rights. Therefore, these company names will not be taken into consideration by the Panel.

It is established case law that the TLD “.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; Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).

The Domain Name, <bic-pen.nl>, wholly incorporates the well-known BIC word marks as its distinctive element. Many decisions under the Regulations have found that a domain name is confusingly similar to a complainant’s trademark where the domain name incorporates the trademark in its entirety. The addition of the hyphen followed by the – in several languages – common, descriptive and non-distinctive word “pen” is not sufficient to avoid a finding of confusing similarity.

As far as the Panel can assess, the judgement from the Court of Appeal of ‘s-Hertogenbosch dated April 15, 2008, LJN:BD1639 (Yonex Kabushiki Kaisha v. Belgro Badminton World) regarding the domain name <yonexbadminton.nl>, which is referred to by the Respondent, is not based upon the same or similar facts and circumstances as the case at hand and does therefore not give guidance in this case.

The Panel finds that the Domain Name is confusingly similar to the Trademarks. Therefore, the first requirement of article 2.1(a) under I of the Regulations is met.

B. Rights or Legitimate Interests

Pursuant to article 2.1(b) of the Regulations, the Complainants must make a prima facie case that the Respondent has no rights to or legitimate interests in the Domain Name. Article 3.1 of the Regulations sets out examples of circumstances through which the Respondent may demonstrate that it has rights to or legitimate interests in the Domain Name for purposes of article 2.1(b) of the Regulations.

The Panel understands that the Complainants have never licensed or otherwise authorized the Respondent to use the Trademarks as part of a domain name. The Panel finds insufficient proof of the Respondent’s argument that (a representative in the Netherlands of) the Complainants consented expressly to or implicitly tolerated the registration and/or use of the Domain Name by the Respondent. In the absence of documented evidence of approval from the Respondent, the Panel can only decide this issue in the Complainant’s favor.

The Panel notes that under the UDRP, as set out in the WIPO Overview 2.0, paragraph 2.3, a reseller or distributor can be making a bona fide offering of goods and thus have a legitimate interest in the domain name at issue if certain requirements are met. The leading case on this point is Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. This decision has been confirmed to be of relevance for the Regulations inter alia in Seiko EPSON Corporation v. ANEM Computers / ANEM, WIPO Case No. DNL2010-0024 and Maison Louis Latour v. Jos Beeres Wijnkoperij, WIPO Case No. DNL2011-0074.

The Oki Data requirements are cumulative, which means that a respondent must meet all requirements in order to have a right to or legitimate interest in a domain name:

a. the respondent must actually be offering the goods or services at issue;

b. the respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;

c. the site must accurately disclose respondent’s relationship with complainant; it may not, for example, falsely suggest that it is complainant, or that the website is the official site, if, in fact, it is only one of many sales agents; and

d. the respondent must not try to corner the market in all domain names, thus depriving complainant of reflecting its own mark in a domain name.

Oki Data furthermore confirms that the above criteria are non-limitative and that other indications relevant to the legitimacy of the respondent’s conduct may be taken into account and acknowledges the potential evidence relevant to the bona fide of a respondent’s use.

Applied to the case at hand, the Panel notes that, in violation of the Oki Data criteria, the homepage of the website of the Respondent to which the Domain Name resolved (indirectly) offered products competing with the Complainants’ trademarked pens (the multi-brand and unbranded shop for pens: “www.pennen.nl”), at least until the Complaint was submitted, or possibly until a few days after the Center notified the Respondent of the Complaint. This follows from Annex 3 of the Complaint compared to Annex 1 (and 2) of the Response and an Internet archive search. Further, this homepage at that time (before October 20, 2015) also did not disclose the Respondent’s relationship with the Complainants. In fact, it appears that the text: “Alpha Holland is dealer van BIC pennen” (translated: “Alpha Holland is dealer of BIC pens”) was added by the Respondent after the Complaint was submitted, in an effort to comply with all (legal) requirements in order to create a right to or legitimate interest in the Domain Name. Accordingly, on balance, the Panel finds that this is not a case of bona fide use within article 2.1(b) of the Regulations.

Noting the facts of this case and as further ascertained using a publicly available Internet archive, the Panel rules that the Complainants have fulfilled their obligation to establish that the Respondent has no rights to or legitimate interests in the Domain Name and have met the second requirement of article 2.1(b) of the Regulations.

C. Registered or Used in Bad Faith

Leaving aside the question of whether this letter has been addressed to the correct entity, the Panel finds that sending a cease and desist letter and not receiving an answer to that letter from the Respondent, is insufficient ground as such for a finding that the Domain Name has been registered or is being used in bad faith.

However, the Complainants also argue that the Respondent and its subsidiaries are clients of the Complainant BIC Graphic Europe. Considering the apparent and undisputed well-known status of the Trademarks and the [“lack of particular commercial”] relationship between the parties, it is clear that the Respondent was aware of the Complainants and their marks, including the Trademarks, at the time of registration of the Domain Name.

The Respondent is using the Domain Name to attract Internet users and divert Internet traffic to the Respondent’s website, offering not only the Complainants’ but also competing products to those of the Complainants, for the likely purpose of achieving commercial gain, through the likelihood of confusion which may arise with the Trademarks. Such conduct constitutes bad faith use under article 2.1(c) of the Regulations. Moreover, the changes made on the homepage of the website of the Respondent to which the Domain Name resolves after the Complaint was submitted, as described in detail under Section 6.B, also suggests bad faith use under this article. The specific cumulative circumstances in this case are indicative of bad faith on the part of the Respondent in its registration and/or use of the Domain Name (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).

Although this is not the usual case of bad faith so commonly seen in disputes brought under the Regulations, in all the circumstances of this case and on the above grounds, the Panel considers that the Complainants have established that the Respondent registered or used the Domain Name in bad faith under to article 2.1(c) of the Regulations.

7. Decision

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

Remco M.R. van Leeuwen
Panelist
Date: March 8, 2016