WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Chocolaterie Guylian, Naamloze Vennootschap (N.V.) v. Zeugma

Case No. D2010-2256

1. The Parties

The Complainant is Chocolaterie Guylian, Naamloze Vennootschap (N.V.), Sint-Niklaas, Belgium, represented by Gevers Marks, Belgium.

The Respondent is Zeugma, Istanbul, Turkey, represented by Emre Cakir, Turkey.

2. The Domain Name and Registrar

The disputed domain name <guylian.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2010. On December 23, 2010, the Center transmitted by email to Network Solutions, LLC. a request for registrar verification in connection with the disputed domain name. On December 23, 2010, Network Solutions, LLC 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 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2011. The Response was filed with the Center on January 13, 2011.

The Center appointed James A. Barker as the sole panelist in this matter on January 25, 2011. 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.

4. Factual Background

The Complainant is a manufacturer, specializing in the production and sale of chocolate confectionery and famous for its Belgian chocolate seashells. The Complainant has establishments in Belgium (headquarters), United Kingdom of Great Britain and Northern Ireland (the “United Kingdom”), France, Germany, Austria, Portugal and United States of America (the “United States”) and exports to all markets of the European Union, to Asia, Australia and the United States. The Complainant was incorporated in 1960 under the name “Chocolaterie Guylian”. The name Guylian finds its origin in the combination of the first names of the founder of Complainant, Guy Foubert, and his wife, Liliane Foubert.

The Complainant’s GUYLIAN mark is registered in over 50 countries or territories, amongst which are the Benelux, the European Union, the United States, Canada and the People’s Republic of China. The Complainant provides evidence that a number of its marks were registered or filed prior to the registration of the disputed domain name in 1997, including its GUYLIAN mark registered in the Benelux, the United Kingdom, Sweden and Ireland. The Complainant also operates a website at “www.guylian.be”.

The disputed domain name was first registered by the Respondent on August 2, 1997, as indicated by the “creation date” confirmed by the Registrar.¹

The Complainant provides evidence that, on November 15, 2010, the disputed domain name reverted to a website that the Complainant describes as “a default page for Network Solutions ®, where companies can edit their business profile”. The Complainant also attaches copies of the website to which the disputed domain name earlier reverted, from the Internet archive “waybackmachine”. From this, the Complainant provides evidence that the Respondent’s current website has been active since February 15, 2008. Before that date, for some period, the disputed domain name displayed a page with some animated figures and the text “YAT KIRALAMA / RENT A YATCH”.

5. Parties’ Contentions

A. Complainant

The Complainant says that its trade mark and trade name is highly distinctive and reputed. The Complainant invested a lot of time and money to acquire the current goodwill in its mark. The Complainant contacted the Respondent with a request to transfer the domain name. The Respondent responded to the Complainant’s letter by proposing to sell the disputed domain name. Relevantly, the Complainant provides a copy of an email its says is from the Respondent, which states simply: “We are currently using this domain name by mail server but we would be willing to sell. Our price is 125.000 Euro.”

The Complainant says that the disputed domain name is identical to its GUYLIAN mark, and also confusingly similar to figurative marks also registered to the Complainant. The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant also says, in effect, that the Respondent could not establish any of the types of rights or legitimate interests illustrated by paragraph 4(c)(i) – (iii) of the Policy. The Respondent has no relevant trademark rights, is not commonly known by the disputed domain name, and has no connection or affiliation with the Complainant.

Finally, the Complainant says that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant says that the Respondent has passively held the disputed domain name for 13 years, and the default page the Respondent used since 2008 cannot constitute a genuine use. Bad faith can be reasonably inferred based on the fame of the Complainant’s marks, such that the Respondent was aware or should have been aware of Complainant’s widely known marks. By choosing to register and use a domain name which is confusingly similar to the Complainant’s widely known mark, the Respondent intended to ride on the goodwill of the Complainant’s marks in an attempt to exploit, for commercial gain, Internet traffic destined for the Complainant.

B. Respondent

The Respondent says that it operates in tourism, computer and automation sectors. The Respondent says that when it registered the disputed domain name in 1997, it was planning to create a brand and it picked Guylian as the brand name. However, due to financial difficulties it was not able to pursue this aim. The Respondent does not have a specific web content on the site but it does use the domain name as an email server.

The Respondent strongly denies that it registered the disputed domain name in bad faith. The Respondent says that in 1997, the domain names <guylian.com>, <guylian.net> and <guylian.org> were available for registration and that it only registered the disputed domain name. The Respondent says that, if it had acted in bad faith, it would have registered all the available domain names for Guylian. From the date of first registration, until October 7, 2010, the Complainant never contacted the Respondent or claimed any rights in the domain name. So, the Respondent thinks that the Complainant does not have any rights to the disputed domain name.

The Respondent denies that its offer to sell the disputed domain name was done in bad faith, since it was the Complainant that approached the Respondent. The Respondent also points out that the Complainant’s United States mark was registered in 2004 – 7 years after the Respondent registered the disputed domain name. The Respondent says it has made investments in the domain name and so claims that it has rights to keep it.

6. Discussion and Findings

To succeed under paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

These issues are discussed below, immediately after a discussion on the effect of the period that has elapsed between the registration of the disputed domain name and the filing of the Complaint.

A. Laches

There has been an unusually long period – more than 13 years – between the registration of the disputed domain name and the filing of the Complaint. The disputed domain name is registered in the “.com” domain. This is arguably one of the most obvious spaces for the Complainant to police or seek a corresponding registration of its mark. Why the Complainant took so long to notice or initiate proceedings under the Policy is not explained. The Respondent suggests that this delay, and the Respondent’s claimed investment in the disputed domain name, mean the Complainant does not have rights to it.

The Policy however contains no limitation period for making a claim. This is to be contrasted with clear time limits which apply under the Rules once a complaint is filed. Previous panel decisions also confirm that a delay in bringing a complaint (referred to as the equitable doctrine of “laches”) does not provide a defence per se under the Policy. As noted by the panel in Tax Analysts v. eCorp, WIPO Case No. D2007-0040: “The remedies under the Policy are injunctive rather than compensatory in nature, and the focus is on avoiding confusion in the future as to the source of communications, goods, or services. See, e.g.,The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447.” Similar statements were made by the panel in The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC, WIPO Case No. D2009-0057, referring also to The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616 and Tom Cruise v. Network Operations Center/ Alberta Hot Rods, WIPO Case No. D2006-0560.

A number of panels have expressed somewhat different views, but where the issue of delay was not determinative. In Chivas USA Enterprises, LLC, et al. v. Cesar Carbajal, WIPO Case No. D2006-0551 the Panel noted that “the undisputed record here demonstrates substantial reliance on Complainants’ inaction. While not itself determinative, this lengthy and unexplained delay is further reason to deny the Complaint.”

In The New York Times Company v. Name Administration Inc. (BVI), NAF Claim No. 349045, the panel stated that “the circumstances of this case are the type that support a decision for the Respondent based on laches.” (Those circumstances centrally included the Complainant’s failure to indicate that it had enforceable rights in existence prior to the Respondent’s procurement of the domain name in dispute). That panel also stated that “Where such a Complainant fails to police its claimed mark and does nothing for a substantial time while a Respondent develops an identical domain name for its own legitimate purposes, laches should bar that Complainant from turning a Respondent’s detrimental reliance to its own unjust benefit.”

In this Panel’s view, these cases do not provide strong support for the Respondent’s arguments here - to the effect that the Complainant’s delay supports a finding that the Respondent has legitimate interests in the disputed domain name. In Chivas USA Enterprises, LLC, et al. v. Cesar Carbajal, Supra, as found by the then panel, the respondent had invested a considerable time and resources in the development of a fan site. The panel found that the then complainant had not demonstrated the respondent’s lack of rights or legitimate interests, or bad faith. In these circumstances the complainant’s delay in bringing proceedings under the Policy supported these conclusions. The circumstances of this case are different. There is little evidence in this case to support the Respondent’s claims that it has invested considerable resources in the development of an associated website. Further, as noted below, the Panel finds that the Complainant has established that the Respondent lacks rights or legitimate interests, and has registered and used the disputed domain name in bad faith. While the panel in The New York Times Company v. Name Administration Inc. (BVI), Supra expressed support for laches as a defence, it is notable that the complainant had no registered mark at the time the domain name was registered and instead claimed prior common law rights. The complainant’s failure to prosecute its claimed common law rights was, apparently, a factor in the panel denying that the complainant’s rights were senior to those of the respondent. It is also notable that the panel’s conclusion referenced circumstances of the respondent developing a domain name for “its own legitimate purposes” and of the complainant seeking to use the respondent’s detrimental reliance for its own “unjust benefit”. In this case, and as explained further below, the Panel finds that the Respondent has not established legitimate interests in the disputed domain name and, as noted above, there is little evidence of the Respondent’s detrimental reliance on the Complainant’s delay.

In the Panel’s view, what these cases show is that delay may be a factual circumstance which supports a finding for a respondent under one or more of the three grounds in paragraph 4(a) of the Policy. As similarly noted by the panel in AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas v. Guillermo Lozada, Jr., WIPO Case No. D2005-0485, “It has generally been held that laches or estoppel do not provide a separate defense in proceedings under the Policy, although they may sometimes be relevant in considering whether the requirements of the Policy have been satisfied.” For example, the longer a complainant delays, the more difficult in may be to demonstrate that it relevantly had common law trademark rights. The longer the delay, the more difficult it may become for a complainant to show that a domain name was registered in bad faith. In appropriate circumstances, a complainant which unduly delays may also be open to negative inferences being drawn against it. See Francine Drescher v. Stephen Gregory, WIPO Case No. D2008-1825. However, in this Panel’s view, there is no strong support in prior cases or in the Policy itself for a conclusion that the unexplained delay in the filing of the Complaint, in this case, is a bar on the Complaint or provides any support for the Respondent’s rights or legitimate interests in the disputed domain name.

B. Identical or Confusingly Similar

The Complainant provides substantial reference to its registered rights, a number of which arose prior to the registration of the disputed domain name in 1997. The disputed domain name wholly incorporates the Complainant’s mark. It is well-established that the “.com” extension may be disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a mark. Disregarding that extension, it is self-evident that the domain name is identical to the Complainant’s GUYLIAN mark. Being identical, there is therefore no need for the Panel to also make a judgment on whether it is confusingly similar.

The Respondent argues that the Complainant has at least one mark (registered in the United States) which post-dates the registration of the disputed domain name. This is true. But it is irrelevant to the Panel’s conclusion on this ground. Under the Policy, it is sufficient for the Complainant’ to demonstrate that it “has rights” in a mark. This is what the Complainant has done by referencing its registered rights.

For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1, the burden is on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case (see also, e.g. World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306.)

The Complainant has established a prima face case against the Respondent in relation to this second element under the Policy. The burden is therefore on the Respondent to rebut that argument. However, the Response is no more than a small number of unsupported statements. The Respondent claims that it was “planning to create a brand and it picked Guylian” and that it uses the domain name for the purpose of email. The Respondent provides no supporting evidence nor an explanation as to why it believes this use, even if demonstrated, would support a finding of its legitimate interests. The Panel cannot see any self-evident connection between the Respondent and the term “Guylian” which, as argued by the Complainant, is an arbitrary and fanciful term. As far as the Panel can tell based on the case file, that term is closely associated with the Complainant and has no other association. It is difficult to conceive of what legitimate interest the Respondent might have in the disputed domain name and the Respondent has provided no evidence of any. In these circumstances, the Panel finds that the Respondent has not rebutted the case against it.

For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

The final matter which the Complainant must establish is that the disputed domain name was registered, and has been used in bad faith. The Complainant argues that the Respondent has demonstrated bad faith because, based on the fame of Complainant’s marks, the Respondent was aware or should have been aware of them. The Panel finds these arguments persuasive, even though the Complainant did not provide substantial evidence to support them. The Complainant’s principal evidence comprised records of its trademark registrations and copies from its own website as to its business operations.

Despite this, and as noted above, the Complainant’s GUYLIAN mark appears arbitrary and fanciful and therefore distinctive in a trademark sense. The Complainant has a number of marks registered in various jurisdictions, prior to the registration of the disputed domain name, and has a presence on the Internet at its domain name <guylian.be> (although the Complainant provided no supporting evidence of the date from which it registered that domain name). The Complainant also explains that it offers its products in over 100 countries, including in Turkey where the Respondent has its address (although the Complainant provided no evidence of the date from which it expansion into the relevant markets commenced).

The Respondent has provided no material explanation for registering the disputed domain name, beyond the vague statement that it was “planning to create a brand”. For some period, as evidenced in the Complaint, the disputed domain name reverted to a site advertising “Rent a Yatch” [sic], but which contained no reference to the term “Guylian”. There is no evidence in the case file of some objective connection between the Respondent and the term “Guylian”, or evidence that the term has any connection other than with the Complainant and its products.

Although in response to an approach by the Complainant, the Respondent has offered to sell the disputed domain name for a large amount that is beyond any demonstrated out-of-pocket costs. Under paragraph 4(b)(i) of the Policy, one example of bad faith is circumstances indicating that the Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of its documented out-of-pocket costs. There is little evidence that selling the disputed domain name was the Respondent’s primary motivation. The long period for which the Respondent held the domain name may suggest that sale was not its primary focus. However the offer for sale for such an excessive sum, in the absence of evidence supporting a legitimate interest, provides further support for the Panel’s conclusion that the Respondent relevantly acted in bad faith. The fact that the Complainant approached the Respondent first does not, in the Panel’s view, affect this conclusion. (See e.g.Scania CV AB v. Hong, Hee Dong, WIPO Case No. D2004-0340.)

For these reasons, the Panel considers there is a reasonable inference that the Respondent must have been aware of the Complainant’s mark and registered and used the disputed domain name with an intent to unfairly exploit that mark. As such, the Panel finds that the Complainant has established its case under paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <guylian.com>, be transferred to the Complainant.

James A. Barker
Sole Panelist
Dated: February 8, 2011

¹ In its confirmation of the registrant’s details, the Registrar did not explicitly confirm that the Respondent was the registrant of the disputed domain name in 1997. The Panel has therefore inferred this from the creation date of the disputed domain name. Further, the Respondent’s long-standing registration was not disputed by the parties and, regardless, the evidence is suggestive that the Respondent has held the disputed domain name for a considerable period