WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Naturalia France v. Whois privacy services provided by DomainProtect LLC / IT-Company Ltd

Case No. D2018-0872

1. The Parties

The Complainant is Naturalia France of Clichy, France, represented by Watrin Brault Associés, France.

The Respondent is Whois privacy services provided by DomainProtect LLC of Saint Petersburg, Russian Federation / IT-Company Ltd of Saint Petersburg, Russian Federation, represented internally.

2. The Domain Name and Registrar

The disputed domain name <naturalia.com> is registered with NICCO Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2018. On April 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 23, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 25, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 27, 2018.

The language of the Registration Agreement for the disputed domain name is Russian. On April 30, 2018, the Center sent an email communication to the Parties in both English and Russian regarding the language of the proceeding. On April 30, 2018, the Complainant requested that English be the language of the proceeding as indicated in the Complaint. On the same day, the Respondent informed the Center that it did not object that English be the language of the proceedings, provided that all documents and materials submitted within the course of the procedure be in English or accompanied by an English translation.

The Center verified that the Complaint together with the amended 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 May 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 4, 2018. The Response was filed with the Center on June 4, 2018.

The Center appointed Assen Alexiev, Stéphane Lemarchand and The Hon Neil Brown Q.C. as panelists in this matter on July 5, 2018. The Panel finds that it was properly constituted. Each member of 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.

On July 9, 2018, the Complainant filed a supplementary submission. On July 11, 2018, the Panel decided to accept the Complainant’s supplementary submission and to grant the Respondent an opportunity to respond until July 18, 2018. On July 17, 2018, the Respondent requested a two day extension of the deadline, which was granted by the Panel. Thereafter, the Respondent filed its supplementary submission.

4. Factual Background

The Complainant, established in 1973, is one of the first companies specializing in the distribution of organic agricultural products, fair trade products, biodynamic agriculture and eco-produced organic cosmetics. Since the end of the 1990s, it has used the trademark NATURALIA. In 2008, the Complainant was acquired by the MONOPRIX group.

The Complainant is the registered owner of the French trademark NATURALIA, registered on October 13, 2000 with registration No. 3057906 for goods and services in International classes 3, 5, 29, 30, 31 and 32 (the “NATURALIA trademark”).

On August 2, 1999, the Complainant registered the domain name <naturalia.fr>, and uses it for its corporate website.

The disputed domain name was registered on May 2, 2000.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is identical to the Complainant’s NATURALIA trademark and is confusingly similar to the Complainant’s trade name and to its official domain name <naturalia.fr>. The disputed domain name reproduces in their entirety the Complainant’s NATURALIA trademark and the distinctive element “Naturalia” of the Complainant’s trade name and official domain name. The confusion is increased by the fact that when entering the string “www.naturalia.com” in an Internet search engine, the top rated results refer to the Complainant’s website at “www.naturalia.fr”.

According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name was registered nine months after the registration by the Complainant of the domain name <naturalia.fr> and many years after the Complainant started its commercial activities. The disputed domain name is inactive, and its non-use does not give rise to any rights and cannot be relied upon in relation to a later trademark.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant has been in operation for more than forty years and its NATURALIA trademark enjoys wide publicity. Since August 2, 1999, the Complainant has also reproduced the NATURALIA trademark in its domain name <naturalia.fr>. The registration of the disputed domain name was made only a few months after the registration of this domain name and the commencement of the operation of the associated website at “www.naturalia.fr”, which was accessible from the territory of the Russian Federation.

The Complainant points out that the disputed domain name is not being used and is listed as “available for sale” on the websites at “www.sedo.com” and “www.afternic.com” for the minimum price of EUR 800. According to the Complainant, the Respondent’s conduct is intended to force the Complainant or one of its competitors to buy the disputed domain name at a prohibitive price, and the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring its registration to the Complainant or to a competitor of it for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name.

In its supplementary submission, the Complainant disputes that “naturalia” is a common word perceived uniformly due to its Latin etymology. According to the Complainant, the Latin word for “nature” is “natura” and is reflected only in the languages of certain Western European countries. In most Eastern European countries, the word for “nature” is “priroda” and has a different etymological origin. Therefore, the word “naturalia” is not perceived uniformly as a designation for “natural” or “coming from the nature”.

The Complainant points out that the Respondent has provided no evidence that it was working on an ICO project before any notice of the Complaint. The Respondent activated the disputed domain name and made changes to the associated website (such as a reference to its “Sharebusiness Project”) only after the filing of the Complaint. The Respondent’s allegation that it is using the disputed domain name for creating email addresses is not supported by evidence except for the email address used by the Respondent in the present proceeding. According to the Complainant, this shows that the Respondent only pretends to be using the disputed domain name.

The Complainant further maintains that the IP address of the disputed domain name is identical or related to IP addresses of over 100 other domain names or the Respondent’s physical address is identical or similar to the physical addresses of the registrants of those domain names. Two of these domain names were the subject of previous UDRP procedures. The IP address of the disputed domain name is closely linked to the IP addresses of many other domain names that are confusingly similar to the domain names of American and French corporations or entities, including the French capital.

According to the Complainant, it is undisputed by the Respondent that the disputed domain name was offered for sale, and this is further evident from an email from SEDO dated after the filing of the Complaint.

The Complainant denies that that it has engaged in reverse domain name hijacking (“RDNH”) and has abused the UDRP procedure. It submits that it has not attempted to mislead the Center alleging that the Respondent did not exist, as it conducted multiple researches on professional databases that gave no result for the Respondent, and the Complainant is unable to use the database referred to by the Respondent, because the Complainant does not speak Russian and the respective website has no version in another language.

B. Respondent

The Respondent submits that it is a duly registered and existing company, which can be confirmed through a search in the public register of legal entities in the Russian Federation. The Respondent belongs to the companies group managed by “Fides” LLC, which itself was a member of “ВВВServer” LLC, a company that was liquidated in 2013. “ВВВServer” LLC was the holder of a “NATURALIA” trademark which has expired. In 2017, an inventory of its assets was made and it revealed the disputed domain name as a dormant asset, following which the Respondent decided to use it. The Respondent also submits that it has filed a trademark application with the Russian Patent Office for the registration of a “NATURALIA” trademark.

According to the Respondent, the disputed domain name contains a common word that is perceived uniformly due to its Latin etymology as a designation of “all natural” or “coming from nature”. The transcription of the term “naturalia” is organic to the cultures of Slavic nations, the Russian Federation included, where the ending “-ia” is a standard form to designate territories and countries. The Respondent states that at least 384 legal entities across the globe use “Naturalia” as their business name or as a part of it, and that 148 trademarks consist of or comprise as a protected element the word “Naturalia”, including a third party trademark registered in the Russian Federation for goods in International Class 29, which overlaps with the scope of protection of the Complainant's NATURALIA trademark.

The Respondent contends that it has rights and legitimate interests in the disputed domain name, because it represents a common term, from which the Respondent is entitled to derive profit by any lawful means, including ICOs and other means for project fund raising, such as domain name-secured loans, etc.

According to the Respondent, before any notice of the dispute it has used and made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Respondent’s business model is to digitalize the common meaning of the disputed domain name and to construct, on the basis of an open technological platform, an ecosystem of multi-purpose use of the disputed domain name by an infinite set of subjects sharing values of careful and rational attitude toward the nature.

The Respondent submits that it is currently working on an ICO project for monetizing the development of natural resources and development of the territories of the Russian Far East, which uses the brand power of the disputed domain name and its compatibility with the essence on the project to attract resources.

The Respondent further points out that it uses a so-called “Sharebusiness” technology patented in the Russian Federation and Germany on the basis of a non-exclusive license. This is a technology for the creation of a platform of distributed access to an Internet resource exploiting the common meaning of a domain name and its attractiveness to a wide range of interested persons who are given keys of management and administration of subdomains. The Respondent states that by using the “Sharebusiness” technology it has enlisted on mutually beneficial terms other companies that have incorporated “Naturalia” in their business names, at subdomains of the disputed domain name, and despite the short period of ownership of the disputed domain name, the Respondent has managed to create an active website, enlisting interested persons in the “Naturalia” project. The Respondent also states that it intensively uses the disputed domain name for creating email addresses for work-related purposes and for enlisting outside users.

The Respondent claims that it has rights in the disputed domain name on the basis of the principle “first come - first served” as the disputed domain name was registered by the Respondent's predecessor in title “BBBServer” LLC, on May 2, 2000 - more than 5 months earlier than the date of registration of the Complainant’s NATURALIA trademark. According to the Respondent, the registration of descriptive or generic domain names is not in itself objectionable.

The Respondent denies that it and its predecessors in title had been aware of the existence of the Complainant’s NATURALIA trademark until the receipt of the Complaint, since the Complainant is registered in France, its business activities are concentrated exclusively in France and oriented mainly to francophone customers, the Complainant’s website at www.naturalia.fr has no English-language version, that 130 of the 131 shops of the Complainant are French-based, and the only one situated abroad (Luxembourg) was opened only in September 2017. The Complainant has not provided any evidence for the use of its website “www.naturalia.fr” prior to May 2, 2000, and the first archived copy of this website showing any content is dated November 29, 2001.

According to the Respondent, the offers for sale of the disputed domain name on the websites “www.sedo.com” and “www.afternic.com” had been placed without its knowledge or consent and were automatically generated by the hosting providers. These offers were deleted by the Respondent as soon as it became aware of them.

The Respondent maintains that the Complainant has committed an attempt at RDNH and abuse of the UDRP procedure, because it did not send a cease-and-desist letter to the Respondent prior to the filing the Complaint, because the Complainant’s NATURALIA trademark is weak and diluted and has only a local scope of protection, because the Complainant has submitted in this proceeding a significant number of documents in French which has led to substantial costs for the Respondent for their translation and for the legal fees of the Respondent’s legal counsel, and because the Complainant has attempted to mislead the Center and the Panel that the Respondent is non-existent.

In its supplementary submission, the Respondent denies any connection to the other domain names referred to by the Complainant in its supplementary submission and asserts that the disputed domain name was in use by the Respondent’s predecessors in title for several years prior to the notification of the Complaint to the Respondent.

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(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 Respondent has registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

The Complainant has submitted evidence that it is the owner of the NATURALIA trademark registered in France. This satisfies the Panel that the Complainant has registered trademark rights in the NATURALIA trademark for the purposes of the Policy.

The Panel notes that a common practice has emerged among UDRP panels under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.

The relevant part of the disputed domain name is therefore “naturalia”, which is identical to the NATURALIA trademark of the Complainant. In view of this, the Panel finds that the disputed domain name is identical to the NATURALIA trademark in which the Complainant has rights, and the Complaint succeeds under the first element of the Policy.

B. Rights or Legitimate Interests

The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the disputed domain name was registered nine months after the registration by the Complainant of the domain name <naturalia.fr> and many years after the Complainant started its commercial activities. According to the Complainant, the disputed domain name is inactive, and its non-use does not give rise to any rights and cannot be relied upon in relation to a later trademark.

In its defense, the Respondent submits that the disputed domain name contains a common word, that many legal entities use “Naturalia” in their business names, and that many trademarks include the word “Naturalia”. The Respondent contends that it has rights and legitimate interests in the disputed domain name, because it represents a common term, from which the Respondent is entitled to derive profit by any lawful means, and that before any notice of the dispute it has used and made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, including a project for multi-purpose use of the disputed domain name by many entities, and an ICO project for the development of natural resources and territories.

Having reviewed the contentions of the Parties and the evidence in the case file, the Panel has reached the conclusions set out below.

The Panel is not persuaded on the balance of probabilities by the Respondent’s argument that “naturalia” is a common word. The case file does not contain evidence that this word is in use as a generic term. The fact that the words “nature” and “natural” are in such use does not make the word “naturalia” itself common and generic. As will be seen from the Contentions section of this decision, there is a conflict of evidence on this issue between the parties and the Panel must assess and act on the evidence put before it; applying that test, the Panel is not persuaded by the Respondent’s contention. Moreover, the existence of third party trade names and trademarks that include “naturalia” is not in itself sufficient to convince the Panel that the word is generic either, because one would expect that trade names and trademarks are being used to distinguish the respective entities, and there is no evidence in the case file that by including this word in their trade names and trademarks these entities have intended to refer to something that is common to all of them.

The Respondent has provided evidence that in the period 2013 – 2016 the disputed domain name was associated to a short webpage briefly referring to the “Sharebusiness” project described by the Respondent. Apart from this reference and the scarce description of the project given by the Respondent, the case file contains no evidence to allow the Panel to satisfy itself of the genuineness of this project and of the actual and willing participation of third parties in it, and to reach a conclusion that this activity gives rise to rights and legitimate interests of the Respondent in the disputed domain name, the more so since the disputed domain name was offered for sale in 2017.

Indeed, on the evidence, the scheme proposed by the Respondent as the reason why it owns the domain name is inherently illogical and therefore unpersuasive, as it is difficult to see any commercial sense behind the aggregation on a website of information about different businesses with the same name. One would expect each of them to try to develop its own distinctive image, rather than to add even more to the confusion already causing a considerable burden for Internet users.

At the same time, the Complainant has not presented evidence and has not established that its NATURALIA trademark and its website at “www.naturalia.fr” had achieved popularity or notoriety prior to the registration of the disputed domain name. The Complainant has also not presented any evidence that the Respondent has at any point of time targeted the Complainant, its NATURALIA trademark or the goods marketed by the Complainant. The disputed domain name was registered several months before the registration of the Complainant’s NATURALIA trademark. In view of this, and in the absence of evidence that the Respondent was aware of the Complainant when it registered the disputed domain name, or evidence from which the Panel can draw that inference, the Panel is not satisfied that the registration and use of the disputed domain name were made with the Complainant’s NATURALIA trademark in mind.

Taking all the above into account, the Panel finds that the Complainant has not established that the Respondent does not have rights and legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Policy requires the Complainant to establish that the Respondent has registered and is using the disputed domain name in bad faith.

As discussed in the section on rights and legitimate interests above, the disputed domain name was registered several months before the Complainant registered its NATURALIA trademark in France. The Complainant has failed to provide evidence that it has promoted its NATURALIA trademark and achieved significant recognition before the registration of the disputed domain name, and the Complainant operates mainly in France. The Respondent does not appear to have offered the disputed domain name for sale directly to the Complainant or to a competitor of the Complainant, and the case file contains no evidence that the Respondent has at any point of time targeted with its conduct the Complainant’s NATURALIA trademark.

In this situation, the Complainant’s contention that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling it to the Complainant or to a competitor of it for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name, is not supported by the evidence collected in this proceeding.

As a further argument, the Complainant has stated that the IP address of the disputed domain name is related to the IP addresses of other domain names that were the subject of previous UDRP procedures or that were confusingly similar to the domain names of American and French corporations or entities, including the French capital. However, the Complainant has submitted no evidence that these other domain names have been registered by the Respondent or are under its control. In this situation, the Panel is not prepared to make any conclusions about the Respondent on the basis of this argument of the Complainant.

On the basis of all the above, the Panel finds that the Complainant has failed to establish that the Respondent has registered and used the disputed domain name in bad faith.

D. Reverse Domain Name Hijacking

The Respondent has requested the Panel to make a finding of RDNH (Rules, Paragraph 15(e)) .

Panels have consistently found that the mere lack of success of a complaint is not itself sufficient for a finding of RDNH. The case file contains no facts that demonstrate that the Complainant knew it could not succeed as to any of the required three elements, so the Panel is certainly not convinced that the Complainant was in bad faith when filing the Complaint.

Therefore, the Panel rejects the Respondent’s request to make a finding of RDNH.

7. Decision

For the foregoing reasons, the Complaint is denied.

Assen Alexiev
Presiding Panelist

Stéphane Lemarchand
Panelist

The Hon Neil Brown Q.C.
Panelist
Date: August 6, 2018