Complainant is SuperShuttle International, Inc. of Scottsdale, Arizona, United States of America (“US”), represented by Selarl de Candé - Blanchard, France.
Respondent is The Fixer of Purmerend, the Netherlands, represented by Kool Bloch Gavami Advocaten, the Netherlands.
The disputed domain name <supershuttle.nl> (the “Domain Name”) is registered with SIDN through Realtime Register.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2012. On May 31, 2012, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On June 4, 2012, 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 Respondent of the Complaint, and the proceedings commenced on June 6, 2012. In accordance with the Regulations, article 7.1, the due date for Response was June 26, 2012. The Response was filed with the Center on June 25, 2012.
On June 29, 2012, SIDN commenced the mediation process. On July 27, 2012, SIDN extended the mediation process until August 28, 2012. On August 21, 2012, SIDN further extended the mediation process until September 27, 2012. On September 28, 2012, SIDN informed parties that the dispute had not been solved in the mediation process.
On October 9, 2012, Complainant submitted a Supplemental Filing.
The Center appointed Gregor Vos as the panelist in this matter on October 10, 2012. 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.
On October 17, 2012, Respondent admitted a response to the Supplemental Filing.
After reviewing the Complaint, the Supplemental Filing and response to the Supplemental Filing were admitted in accordance with article 11.2 of the Regulations.
On November 14, 2012, the Panel issued a Procedural Order inviting Respondent to submit additional documentation to prove the use of the sign “Supershuttle” as trade name and the date by which such use was initiated. Complainant was invited to submit a reply to any Respondent submission.
Respondent submitted its response to the Procedural Order on November 26, 2012. Complainant submitted its reply to the response of Respondent on December 3, 2012.
Complainant, Supershuttle International, Inc., is a US-based company active in the field of airport transportation, and is a wholly owned subsidiary of French company Veolia Transportation.
Complainant is the owner of the following trademark registrations:
1. Community trademark SUPERSHUTTLE (figurative mark), filed on December 15, 2006, number 005561113, for goods and services in class 39;
2. Community trademark SUPERSHUTTLE.COM (word mark), filed on June 23, 2009, number 008381667, for goods and services in class 39;
hereafter jointly referred to as “the Trademarks”.
Respondent owns a local business which offers taxi services to and from Schiphol Airport, limited to the surroundings of Amsterdam.
The date of registration of the Domain Name is August 20, 2007. Respondent has been the holder of the Domain Name since that date.
The Domain Name is identical or confusingly similar to Complainant’s Trademarks
According to Complainant, the Domain Name incorporates its trademark SUPERSHUTTLE entirely, adding only the country code Top Level Domain “.nl”. Complainant argues, with reference to settled case law under the Regulations, that numerous panels have found that a domain name wholly incorporating a complainant’s registered mark may be sufficient to establish confusing similarity for the purpose of the Regulations.
Complainant argues that because of the fact the Domain Name wholly incorporates its Trademarks, the Domain Name is confusingly similar within the meaning of article 2.1 of the Regulations.
Respondent has no rights or legitimate interests in the Domain Name
According to Complainant, Respondent has no relation with Complainant’s business and is not authorized to use Complainant’s trademarks.
Complainant argues that Respondent registered the Domain Name to take advantage of Complainant’s well-known trademarks by confusing and diverting Internet users to a competing website also active in the field of airport transportation services. By using the Domain Name in the above mentioned way, Respondent does not use the Domain Name in accordance with article 3.1(c) of the Regulations.
Additionally, Complainant argues that Respondent is not commonly known by the Domain Name, since Respondent’s actual trade name, “the Fixer”, has nothing to do with the name “supershuttle”.
Respondent has registered or is using the Domain Name in bad faith
Complainant argues that the Domain Name was initially registered bearing Complainant’s trademarks in mind, since Complainant and its trademarks and services are well known: Complainant has been providing transportation services since 1983 and services thirty-nine airports and over fifty cities. In addition to this, Complainant owns not only Community trademarks (CTM), but also long-standing well-known US and French trademarks. Complainant therefore argues that Respondent was undoubtedly aware of Complainant’s trademarks at the time of registration of the Domain Name.
Furthermore, Respondent offers the exact same services as Complainant and has copied various elements of the website of Complainant “www.supershuttle.com” on its own website, such as the characteristic blue and yellow colors. Complainant argues that Respondent is using the Domain Name to attract Internet users to its website by creating a likelihood of confusion.
The Domain Name is identical or confusingly similar to Complainant’s Trademarks
Respondent operates its business under the trade names “Supershuttle” and “Supershuttle Schiphol Services”.
Respondent claims that Complainant is not active on the Dutch market under the name “Supershuttle”, and has failed to provide evidence of any business activity in the Netherlands. Complainant is active in the Netherlands, but under a different name. Consequently, there can be no likelihood of confusion with Complainant’s trademarks.
Respondent further argues that Complainant has failed to provide any evidence which indicates “normal use of its trademarks” within the meaning of the CTM Regulation.1 With regard to Complainant’s registrations of 2006, Respondent argues that Complainant has not used the name “Supershuttle” within Europe (and especially in the Netherlands) for a period of more than five years. Respondent claims that even if Complainant were to prove normal use of its trademarks in France or Sweden, this cannot be considered as “normal use in the whole region of Europe”.
Respondent argues that the word “supershuttle” is (partly or fully) descriptive for the services offered by Complainant as well as Respondent. According to Respondent, the word “shuttle” is a common way of describing a transport service. The word “super” means “very good” or “excellent”. Therefore, Respondent argues, “supershuttle” is a short way of saying “excellent transport service”.
Respondent has no rights or legitimate interests in the Domain Name
Respondent claims a legitimate interest in the Domain Name. Respondent operates a local taxi company which focuses on transport to and from Schiphol. Taking into account the descriptive nature of the sign “supershuttle”, “Supershuttle” is an obvious (trade) name for any company offering transport services.
Respondent has trade name rights: Respondent operates and communicates under the name “Supershuttle” and “Supershuttle Schiphol Service”. Respondent is well known amongst its customers under the aforementioned name, and therefore has become very dependent on the name “Supershuttle”.
Respondent has registered or is using the Domain Name in bad faith
Respondent denies that the Domain Name was registered and is being used in bad faith.
As Respondent argued before, the word “supershuttle” is descriptive in the light of the offered services and therefore is a natural choice for any business focusing on airport transportation.
Respondent started its activities under the trade name “Supershuttle Schiphol Service”, but due to the length of this name, often operates under the name “Supershuttle”.
Respondent refutes Complainant’s allegation that the exact same services are offered. Respondent offers only direct transportation, while Complainant offers shared-ride transportation (or so-called “hop-on/hop-off” transportation).
Respondent further refutes Complainant’s allegation that various elements of the website of Complainant (“www.supershuttle.com”) were copied. No similar colors were used. Respondent argues that blue and yellow are associated with Schiphol Airport.
Based on article 2.1 of the Regulations, a request to transfer a domain name must meet three cumulative conditions:
a. The disputed domain name is identical or confusingly similar to a trademark or 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 disputed domain name; and
c. The disputed domain name has been registered or is being used in bad faith.
Considering these conditions, the Panel rules as follows:
Complainant has based its Complaint on various CTM trademark registrations and has submitted copies of these registrations, from which follows that Complainant is the holder of these trademarks. However, the current status of one of the registrations invoked by Complainant, CTM no. 005561121, is “Application withdrawn”. Therefore, the Complaint can only be based on the other CTM registrations invoked by Complainant (i.e., the Trademarks).
Article 2.1(a) of the Regulations demands that a complainant states with good reason that the domain name in question is identical or confusingly similar to a trademark protected under Dutch law in which it has rights. The validity of such a trademark must be assessed on the basis of the legal status of the trademark at the time of the filing of the complaint.2 The Panel has no reason to assume that the Trademarks would be cancelled on account of non usus or lack of distinctiveness.
The Panel points out that figurative trademarks may also qualify as trademarks protected under Dutch law within the meaning of article 2.1(a) of the Regulations. A complaint, for purposes of article 2.1(a) of the Regulations, can therefore be based on a figurative trademark: if a domain name wholly incorporates the dominant element(s) of a figurative trademark, it may very well be confusingly similar to the trademark.3 However, Complainant’s figurative trademark (CTM no. 00561113) consists of an image of a blue minibus with a yellow overprint containing the sign “SuperShuttle”. The Panel holds that this particular trademark cannot serve as a basis for a claim under article 2.1(a) the Regulations, since the word element plays such a minimal role in the trademark that the trademark cannot serve as a ground for protection of the word element as such.
Consequently, the assessment of identity or confusing similarity can only be based on Complainant’s word mark SUPERSHUTTLE.COM (hereafter referred to as “the Trademark”). The Panel must therefore assess if the Domain Name is identical or confusingly similar to the Trademark.
It is established case law that the top level domain “.nl” may be disregarded in assessing the similarity between the relevant trademark on the one hand, and the disputed domain name on the other.4 The dominant and distinctive element of the Trademark of Complainant is the word “Supershuttle”.
The Domain Name incorporates the dominant and distinctive element of the Trademark. It is settled case law under the Regulations that a domain name that wholly incorporates a complainant’s registered mark may be sufficient to establish confusing similarity for the purpose of the Regulations.5
The Panel finds that the Domain Name is confusingly similar to Complainant’s Trademark. Complainant has established article 2.1(a) of the Regulations.
Pursuant to article 2.1(b) of the Regulations, Complainant must demonstrate that Respondent has no rights or legitimate interests in the Domain Name. The Panel finds that Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. The burden of production therefore shifts to Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Domain Name.
Respondent claims to have a legitimate interest in the Domain Name because Respondent offers taxi services in the area surrounding Schiphol Airport. Respondent further claims it has been using the sign “Supershuttle” as a trade name. The Panel is satisfied that Respondent does in fact offer taxi services in the direct surroundings of Schiphol Airport.
The Panel invited Respondent to provide additional evidence of the use of the sign “Supershuttle” as a trade name, which included the date by which such use of the sign “Supershuttle” was initiated.
Annex 2 of Respondent’s response to the Procedural Order consists of a brochure, which is directed at the public. In this brochure, the sign “Supershuttle” is used as trade name. It can be established that the brochure dates from 2008. Therefore, the Panel concludes that Respondent has been operating its business and communicating under the trade name “Supershuttle” since at least 2008.
The Panel concludes that Respondent has a right or legitimate interest in the Domain Name, since Respondent is using the Domain Name in connection with a bona fide offering of services. Such bona fides takes account of the largely descriptive nature of the name involved, and the findings under 6.C below. Consequently, the second requirement of article 2.1 of the Regulations is not met.
The Panel considers that Complainant has also failed to provide sufficient evidence that Respondent would have registered or used the Domain Name in bad faith. According to Complainant, Respondent would be in bad faith because of assumed knowledge of Complainant’s use of the trademark SUPERSHUTTLE in the US and France.
Complainant has failed to provide evidence from which it could appear that Respondent would have had knowledge of use of the trademark SUPERSHUTTLE when registering the Domain Name, rendering the registration in bad faith. From the documents submitted in these proceedings no use of the trademark SUPERSHUTTLE in the Netherlands can be deduced. With regard to the alleged use outside the Netherlands, Complainant has failed to submit evidence that such use could amount to knowledge with Respondent in the Netherlands, rendering the registration and use of the Domain Name to be in bad faith.
In addition, contrary to what Complainant has alleged, the mere fact that Respondent uses blue and yellow colored elements on its website, does not constitute bad faith. The Panel considers that these colors are often used in general, among others by Schiphol Airport.
Hence the third requirement of article 2.1 of the Regulations is also not met.
For all the foregoing reasons, the Complaint is denied.
Gregor Vos
Panelist
Dated: December 17, 2012
1 Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark.
2 See in this regard Disney Enterprises Incorporated v. Stichting Domain City, WIPO Case No. DNL2011-0009.
3 In this regard see Altro Limited v. Handelsonderneming H.M.S. B.V., WIPO Case No. DNL2012-0047.
4 See in this regard Pieter de Haan v. Orville Smith Ltd., WIPO Case No. DNL2008-0017 and Doka Nederland B.V. v. Media Village B.V., WIPO Case No. DNL2010-0009.
5 Altro Limited v. Handelsonderneming H.M.S. B.V., WIPO Case No. DNL2012-0047.