WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bruyerre S.A. v. Online Systems

Case No. D2016-1686

1. The Parties

The Complainant is Bruyerre S.A. of Gosselies, Belgium, internally-represented.

The Respondent is Online Systems of Paris, France, internally-represented.

2. The Domain Name and Registrar

The disputed domain name <bruyerre.com> ("the Disputed Domain Name") is registered with Tucows Inc. (the "Registrar").

3. Procedural History

The Complaint in French was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 19, 2016. On August 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 19, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On August 23, 2016, the Center sent an email communication to the Parties in English and French regarding the language of the proceeding. On August 23, 2016, the Complainant confirmed its request that French be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 30, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2016. The Center received informal communications in English from the Respondent on September 20, 2016 and September 21, 2016. A late Response in English was filed with the Center on September 26, 2016. The Complainant filed an unsolicited supplemental filing in French on September 29, 2016, and the Respondent filed an unsolicited supplemental filing in French on October 15, 2016.

The Center appointed Jacques de Werra as the sole panelist in this matter on October 3, 2016. 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 Belgian company manufacturing and selling chocolate and other food products under the name "Bruyerre".

The Complainant is the owner of a European Union trade mark for BRUYERRE ("the Trademark") Number 3756509 covering various goods and services in classes 30, 35 and 42, including chocolate products in class 30. The Trademark was filed on April 19, 2004 and was registered on August 16, 2005.

The Complainant operates several websites associated with domain names reflecting the Trademark, including "www.bruyerremagasin.be", "www.bruyerre.eu", "www.bruyerre.info", "www.bruyerremateriel.info", "www.bruyerre.fr", "www.bruyerre.be", "www.bruyerre-chocolat.be", "www.bruyerre-chocolates.com" and "bruyerre-chocolaterie.be".

The Disputed Domain Name was initially registered on May 4, 2002 by the company Ubistream Group sa ("Ubistream") of Luxembourg.

The Disputed Domain Name appears to have been transferred from Ubistream to the Respondent between August 2015 and August 2016.

It results from the documents submitted by the Parties (specifically from a court proceeding between the Complainant and Ubistream, as presented below) that Ubistream was managed by Mr. Michel Krim and that Mr. Krim has entered into an "e-commerce platform agreement" with Ubistream on the basis of which the contracting parties shall cooperate together in order to develop an e-commerce platform and for which Ubistream will represent Mr. Krim and will develop its platforms and e-commerce services, will support him in his market developments in the United States of America ("United States") and other parts of the world.

It also results from the documents submitted by the Parties that the Complainant and Ubistream have been in commercial relationships about the exclusive distribution of the Complainant's products in Lebanon by Ubistream and about Ubistream's activities to promote and sell the Complainant's products online via the Disputed Domain Name (whereby the precise content of their agreement remains uncertain and disputed between the contracting parties).

A dispute subsequently arose between the Complainant and Ubistream about the ownership and control of the Disputed Domain Name.

The Complainant sent a cease-and-desist letter to Ubistream on April 29, 2005, by which it requested the transfer of the Disputed Domain Name. This did not lead to the transfer of the Disputed Domain Name.

The Complainant consequently initiated litigation in Belgium against Ubistream before the Commercial Court of Charleroi (Tribunal de Commerce de Charleroi) on November 19, 2005, in order to obtain the transfer of the Disputed Domain Name.

The Commercial Court of Charleroi rendered a judgment on November 11, 2006, by which it held that it did not have jurisdiction to decide the dispute.

The Disputed Domain Name is presently not actively used.

5. Parties' Contentions

A. Complainant

The Complainant considers that it must recover the ownership of the Disputed Domain Name in order to avoid any confusion given its long-established use of the name "Bruyerre". In addition, because of the recent bankruptcy of Ubistream (for which the Panel notes that no evidence has been brought), the Disputed Domain Name must necessarily go back to the Complainant.

To the knowledge of the Complainant, the Respondent does not offer any goods or services under the name "Bruyerre" and the name of the Respondent has no connection with the name "Bruyerre". Given that there is no active website associated with the Disputed Domain Name, it is logical to consider that the Disputed Domain Name is of no legitimate interest for the Respondent. If the Disputed Domain Name were to be used for another goal than communication and information on the services offered by the Complainant, this would create confusion with the Complainant's products.

The Complainant notes that the Disputed Domain Name was transferred from Ubistream to the Respondent so that the Complainant was deprived of the opportunity to obtain the Disputed Domain Name. The Complainant consequently considers that the Respondent has acted in bad faith.

B. Respondent

The Respondent claims that Mr. Krim owned the Disputed Domain Name since 2002 and that activities in connection with the Disputed Domain Name started before the registration of the Trademark, and that Ubistream has managed the e-commerce website associated with the Disputed Domain Name in the name and on behalf of Mr. Krim, and that the dispute has already been settled by a Belgian court that was started by the Complainant and that has been already settled by such court. On this basis, the Respondent objects against the Complainant's right to initiate UDRP proceedings after the court rejected its claim, discharged Mr. Krim for any wrongdoing and decided against a transfer of the Disputed Domain Name to the benefit of the Complainant, keeping it in the hands of its owner (i.e., Mr. Krim).

The Respondent also claims that the Complainant bases its complainant on a European Union trade mark which is not permissible, because the European Union does not concern the operations of the Disputed Domain Name and because the operations associated with the Disputed Domain Name always focused their activities on the United States and on other parts of the world (as it was shown and demonstrated in the course of the court proceeding in Belgium).

The Respondent further claims that Mr. Krim/Ubistream invested an important sum of money (corresponding to approximately EUR 300,000), to build an e-commerce platform and to promote products through the Disputed Domain Name and that a completely new platform is due to be published very soon to improve offers and services.

The Respondent claims that the website associated with the Disputed Domain Name has been active between 2002 and 2016 and that very recently Mr. Krim has decided to entrust the company Deil Online Systems, DEILSYS SA ("Deilsys") of Luxembourg with the mission to reshape the website. The Respondent also claims that Deilsys would be the owner of the Disputed Domain Name.

6. Discussion and Findings

6.1. Language of the Proceeding

The registrar confirmed that the language of the registration agreement for the Disputed Domain Name is English.

Pursuant to the Rules, paragraph 11(a), unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

The Complainant filed its Complaint in French and justified in its complainant that French shall be the language of the proceeding by stating that, based on their geographic localization, both the Complainant and the Respondent are French-speaking entities and that all pieces of evidence filed by the Complainant justifying the rights of the Complainant on the Disputed Domain Name are in French.

On August 23, 2016, the Center issued a notice regarding the applicable language of proceeding. The Complainant confirmed its request that French shall be the language of the proceeding, to which the Respondent has not replied. The Respondent has filed statements and exhibits in English or in French in the proceeding.

As a matter of principle, in the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the panel has discretion to decide otherwise, having regard to the circumstances of the case. The panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties, taking into consideration matters such as command of the language, time, and costs. It is important that the language finally chosen by the panel for the proceeding is not prejudicial to the parties in their ability to articulate the arguments for the case. See International Data Group, Inc. v. Lingjun, WIPO Case No. D2004-0398.

The Complainant has mentioned the reasons why French should be the language of the proceeding, to which the Respondent has not replied. The Panel is not convinced that the formal localization of the seat of the Respondent in Paris (whereby the Respondent has claimed in its last submission that Deilsys would be the owner of the Disputed Domain Name which is not reflected in the information that the Registrar transmitted by email to the Center and listing the Respondent as the registrant of the Disputed Domain Name) and that the choice of the Complainant to submit exhibits to its Complaint in French are sufficient in order to decide that French shall be the language of the proceeding. Nevertheless, the Panel notes that the Respondent, in responding to the Complaint, appears to have sufficient knowledge of French to have been able to understand the substance of the Complaint.

The Panel further notes in this respect that the Respondent has filed parts of its submissions in English and others in French during the proceeding, and that the Complainant has not objected in any manner that it was not in a position to understand those submissions and documents submitted in English of the Respondent.

On this basis, the Panel considers that there is no reason to derogate from the rule that the language of the proceeding shall be the language of the registration agreement. On this basis, the Panel decides that English shall be the language of the proceeding.

6.2. Admissibility in the proceeding of the Response and of the unsolicited submissions of the Parties

The Response was filed after the expiration of the deadline for the response which expired on September 19, 2016, i.e., on September 26, 2016.

Following the filing of the Response, the Complainant filed an additional unsolicited submission on September 29, 2016, and the Respondent filed an additional unsolicited submission on October 15, 2016.

Paragraph 10(d) of the Rules provides that the Panel shall determine the admissibility, relevance, materiality and weight of the evidence. It is consequently in the discretion of the Panel to determine whether to consider and/or admit a supplemental filing in rendering its decision. In this case and from a chronological perspective, the Respondent and the Complainant have both filed submissions which either did not comply with the deadline or were not requested by the Panel in the proceeding: the Respondent's submission was submitted after the expiration of the deadline for the Response and the Parties' subsequent submissions were unsolicited submissions.

After due consideration of the submissions of the Parties and in view of the fact that each of the Parties have had an opportunity to file two submissions in the course of the proceeding (which thus materialized in two rounds of submissions), the Panel considers that the late or unsolicited submissions of the Parties are admissible in the proceedings with due consideration to the need for procedural efficiency, as well as with the obligation to treat each Party with equality and to ensure that each Party has a fair opportunity to present its case.

6.3. Merits

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the respondent 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 with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has rights in the Trademark.

A comparison between the Disputed Domain Name and the Trademark owned by the Complainant shows that the Disputed Domain Name is identical to the Trademark.

In this respect and further to the point that the Respondent has raised according to which the Trademark would only cover the European Union while the Disputed Domain Name would be used in other parts of the world, the Panel notes that the geographic scope of protection of a trademark is not relevant under this element of the Policy. See paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Question, Second Edition ("WIPO Overview 2.0"). The Panel notes in any event that the statement of the Respondent according to which the Disputed Domain Name would not be used in the European Union but would focus on other parts of the world is not supported by any evidence given that the Disputed Domain Name is presently not actively used and that the Respondent has not provided any direct evidence of an active use of the Disputed Domain Name in the past. The Panel also notes that the argument made by the Respondent that the Disputed Domain Name would have been initially registered and used before the registration of the Trademark is not relevant when considering identity or confusing similarity under the first element of the Policy, which does not presuppose that the trademark shall be registered before the registration of the relevant domain name, see WIPO Overview 2.0, paragraph 1.4.

As a result, based on the rights of the Complainant in the Trademark and on the identity between the Trademark and the Disputed Domain Name, the Panel finds that the condition of paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the Disputed Domain Name by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous UDRP panels have consistently ruled that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests, and once such prima facie case is made the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name. See WIPO Overview 2.0, paragraph 2.1.

The Complainant indicates in this respect that to the knowledge of the Complainant, the Respondent does not offer any goods or services under the name "Bruyerre" and the name of the Respondent has no connection with the name "Bruyerre". Given that there is no active website associated with the Disputed Domain Name, the Panel does not find that the Respondent is making any use of the Disputed Domain Name within the meaning of paragraph 4(c) of the Policy. Rather, given that the Disputed Domain Name is identical to the Complainant's Trademark, it gives the misimpression that the Respondent is the Complainant or is otherwise affiliated with the Complainant.

The Panel notes that, in its submission, the Respondent has not made any statement about its own rights or legitimate interests in the Disputed Domain Name and that the Respondent has not offered any evidence relating to its own activities in connection with the Disputed Domain Name: there is no evidence in the available record about the Respondent's use of the Disputed Domain Name which is presently inactive. Rather, the Panel notes in this respect that in its latest submission the Respondent claims that Deilsys would be the owner of the Disputed Domain Name which, however, does not correspond to the identity of the Respondent as it was identified and confirmed by the Registrar. This factual allegation has in any event no substantive impact on the reasoning of the Panel.

The Respondent seems to unsubstantiatedly base its argument on activities conducted in connection with the Disputed Domain Name by the previous owner of the Disputed Domain Name and not by itself.

In its submission, the Respondent has indeed brought certain evidence and made statements about the historical background relating to the use of the Disputed Domain Name by Ubistream – which was the previous owner of the Disputed Domain Name (as reflected in the available record) – and by Mr. Krim who was a manager of Ubistream and who – according to the Respondent – was the previous owner of the Disputed Domain Name, although this has not been clearly established in the proceeding. It is not clear to the Panel what relationship, if any, the Respondent has with Ubistream or Mr. Krim. Even if the Respondent seems to imply the existence of some connection, the Respondent has not explained the nature of their connection or why a third-party's prior ownership and use of the Disputed Domain Name may be relevant in asserting its own rights or legitimate interests. The Panel also notes that the assertion that Ubistream would be in bankruptcy – as claimed without evidence by the Complainant in its supplemental submission – is of no relevance for the purpose of this proceeding.

The Respondent seems to imply in this respect that the use of the Disputed Domain Name could be legitimized on the basis of its statements that major investments were made by Mr. Krim/Ubistream in the Disputed Domain Name and that a new platform will be published very soon as well as by the assertion that the dispute between the Complainant and Ubistream would have allegedly been finally solved by litigation in Belgium.

Even by assuming that these arguments could be relevant in this proceeding, the Panel considers that these arguments are in any event unsupported and not persuasive.

First, the Panel notes that the record is void of any evidence showing the reality of the allegedly major investments made by Mr. Krim/Ubistream in the business associated with the Disputed Domain Name and also void of any convincing evidence to show the reality of the contemplated launch of the new platform. On this basis, the Panel considers that the Respondent has not shown that it would have made demonstrable preparations to use the Disputed Domain Name in connection with any bona fide offering of goods or services. See Vector Aerospace Corporation v. Daniel Mullen, WIPO Case No. D2002-0878 (holding that the holder of the domain name had no legitimate interests in it in the absence of credible evidence of the use of, or of demonstrable preparations to use, the domain name in connection with any bona fide offering of goods or services).

The Panel notes that in its last submission the Respondent has indicated that Deilsys would be in charge of developing the platform associated with the Disputed Domain Name. For this purpose, the Respondent has filed various documents evidencing a commercial offer made by Deilsys to its client Mr. Krim (it being noted that such commercial offer is not a contract) as well as documents relating to the incorporation of Deilsys in Luxembourg. The Panel is not convinced by these statements and documents because it appears that Mr. Krim is the manager of Deilsys.¹

Second, the Panel notes that, contrary to Respondent's allegations and as established by the Complainant's additional submission, the dispute between the Complainant and Ubistream has not been finally solved by litigation in Belgium. The court decision of the Commercial Court of Charleroi of November 11, 2006 was not a decision on the merits of the case but rather a decision on jurisdiction by which the Court declined its jurisdiction. The Panel notes in this respect that the Respondent filed a truncated copy of the court decision together with its (late) Response, and that the full copy was subsequently filed by the Complainant in its supplemental submission. The Panel further notes that it is in the Panel's discretion to determine what weight to ascribe to previous court proceedings, in light of all circumstances. WIPO Overview 2.0, paragraph 4.14. In this case, there appears to be no obstacle which would prevent the Panel from determining this UDRP proceeding brought by the Complainant against the Respondent in order to claim the transfer of the Disputed Domain Name because the previous court proceedings in Belgium did not lead to any decision on the merits and also because the Respondent was not a party to the previous court proceedings.

The Respondent consequently cannot derive any benefit from the previous court proceedings in Belgium between the Complainant and Ubistream for the purposes of the present proceeding.

The Respondent more fundamentally seems to base its arguments on the previous existence of contractual relationships between the Complainant and Ubistream, whereby Ubistream was a distributor/service provider of the Complainant in connection with the Disputed Domain Name.

Even by assuming that Ubistream might potentially have derived rights on the Disputed Domain Name given that it was a distributor of the Complainant's products and that it was providing services for the Complainant in connection with the Disputed Domain Name and even by assuming that the Respondent could derive benefit from Ubistream's position in these proceedings, this would in any case not be sufficient to accept that the Respondent would have rights or legitimate interests on the Disputed Domain Name under the Policy.

Based on the established principles which apply to the position of distributors under the Policy (WIPO Overview 2.0, paragraph 2.3: "Can a reseller/distributor of trademarked goods or services have rights or legitimate interests in a domain name which contains such trademark?"), one condition is that the Respondent is actually offering the goods or services in issue. In this case, the Panel considers that this condition is not met, given that the Respondent's rights or legitimate interests are typically assessed at the time of the Complaint filing and given that the Disputed Domain Name is inactive.

The Panel also notes that the Respondent has not submitted any relevant arguments or evidence (i.e., reasons which do not relate to the past conduct of the previous owner of the Disputed Domain Name, i.e., before the Respondent acquired it) explaining why the Respondent itself would be entitled to use the Trademark of the Complainant and to reflect the Trademark in the Disputed Domain Name. The Panel therefore considers that the Respondent acquired the Disputed Domain Name, which replicates the Trademark owned by the Complainant, only because it refers to the Complainant's products and business activities.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the condition of paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of the complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name;

(ii) circumstances indicating that the respondent registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the disputed domain name in an attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

In this case, the Panel holds that the Respondent registered the Disputed Domain Name in bad faith because the Trademark distinctively identifies the Complainant and the Complainant's products so that the choice of the Disputed Domain Name cannot be explained otherwise than as a reference to the Trademark owned by the Complainant, whereby the circumstances invoked by the Respondent do not affect this finding (see above B) also because the Respondent does not claim in any manner that it did not have the Trademark and the Complainant in mind when it acquired the Disputed Domain Name.

While the Disputed Domain Name may have been initially registered by the prior registrant before the Complainant's Trademark was registered, this is of no avail to the Respondent. As indicated above, the Respondent has failed to establish any connection with the prior registrant in its submissions, and the Panel finds no such support in the record.

The fact that the Disputed Domain Name is not actively used does not bar a finding of bad faith use. As stated in WIPO Overview 2.0, paragraph 3.2, the lack of active use does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith.

In this case, the Panel considers that the circumstances establish that the Respondent is acting in bad faith because no good faith use of the Disputed Domain Name can reasonably be conceived in the future given that the Disputed Domain Name is identical to the Trademark and no circumstances have been alleged by the Respondent by which such good faith use of the Disputed Domain Name could be envisioned. See, by analogy, Société Française du Radiotéléphone – SFR v. Tobadoros Musicania, WIPO Case No. D2011-0815.

On this basis, the Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith pursuant to paragraph 4(b) of the Policy, so that the conditions of paragraph 4(a)(iii) of the Policy are met.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <bruyerre.com> be transferred to the Complainant.

Jacques de Werra
Sole Panelist
Date: October 28, 2016

¹ See "https://opencorporates.com/companies/lu/B205355" (it being reminded that Panels may undertake independent research into matters of public record when reaching a decision, see WIPO Overview 2.0, paragraph 4.5).