{ "case_number": "CAC-ADREU-006374", "time_of_filling": null, "domain_names": [ "sarenzalando.eu" ], "case_administrator": "Lada Válková (Case admin)", "complainant": [ "Florian Linnardi (Zalando GmbH)" ], "complainant_representative": null, "respondent": [ "Mickael LAGIER" ], "respondent_representative": null, "factual_background": "As it appears in Annex 1 to the Complaint, and as confirmed by the Complainant itself, the Complainant was founded in October 2008 in Germany. The Complainant has quickly grown to become Europe's leading online retailer for shoes and clothes and accessories. The Complainant sells the aforementioned products via several online-shops in: Germany, France, the United Kingdom of Great Britain, Switzerland, Austria, the Netherlands, Italy, Sweden, Belgium, Spain, Denmark and Finland. The Complainant regularly advertises for each of its online-shops in all media (Annex 2 to the Complaint includes examples of TV-advertising campaigns in the United Kingdom of Great Britain, Germany and France).\r\n \r\nAccording to the Complainant, several studies of the YouGov Research Institut, Zalando brand awareness reached:\r\n \r\n- 94% in Germany (per 01.05.2012); \r\n\r\n- 82% in Austria (per 01.04.2012); \r\n\r\n- 81% in Switzerland (per 01.04.2012); \r\n\r\n- 91% in the Netherlands (per 01.05.2012); \r\n\r\n- 89% in France (per 01.05.2012). \r\n\r\nThe Complainant recorded sales of more than 500 million Euros in 2011 and won the European E-commerce Award for Best Cross-Border Webshop at the 2012 European E-commerce Awards in Barcelona (Annex 3 to the Complaint).\r\n \r\nAccording to the WhoIs database, the domain name Sarenzalando.eu has been registered by Mr. Mickael Lagier, 10 Avenue Victor Hugo, Apartment 610 6e, 89200 Avallon, FRANCE, on August 17, 2012. The disputed domain name is connected to a French website http:\/\/www.sarenzalando.eu\/ (Annex 5), where shoes, clothes and accessories are being sold.\r\n \r\nFor the sake of completeness, the Complainant points out that several similar domain names (, and ) have been registered between October 2011 and March 2012:\r\n \r\n- and have been registered by Domain Directors SARL, 10, rue des Carmes, 17000 La Rochelle, France (Annex 6) on March, 1st 2012. Domain Directors SARL is a French limited company registered with the Commercial Court Registry of La Rochelle, under Nr. 491778171.\r\n \r\n- has been registered on October 2nd, 2011 by Sarenza Zalando, 15 rue Pierre Guignois, 94200 Ivry -sur-Seine, France. (Annex 7).\r\n \r\nTwo dispute resolutions with regard to the cancellation of and have been introduced by the Complainant before the AFNIC on August, 9th 2012.\r\n \r\nDomain Directors SARL registered on August 17, 2012 a new domain name: (Annex 8). On the very same day, and were also registered respectively via http:\/\/ godaddy.com by Mr. Mickael Lagier and via http:\/\/www.instra.com\/ by an entity called Group Ponda XX (Annex 9).\r\n \r\nThe AFNIC found on October, 1st 2012 that the domain names and are confusingly similar with the trademark Zalando and decided that the domain names and had to be cancelled (Annex 10 and 11).", "other_legal_proceedings": "The Panel is not aware of any other legal proceedings, either pending or decided, which relate to the disputed domain name.", "discussion_and_findings": "A. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights\r\n \r\nThe Panel finds that the domain name SARENZALANDO is confusingly similar to the Complainant's trademark ZALANDO. The domain name at issue is the result of the contraction of two trademarks belonging to the Complainant and to one of its competitors. \r\nThe disputed domain name is not identical to the Complainant's trademark. However, it is confusingly similar thereto, in that it fully includes the trademark ZALANDO, which enjoys reputation and is therefore recognizable by the internet users who are familiar with the Complainant's trademark.\r\n In seeing the disputed domain name, the internet user is likely to think that it originates from the Complainant, and by noticing that the trademark ZALANDO is used in conjunction with the trademark SARENZA, the Internet user might think that between the two companies there is a commercial relationship, or a partnership. Therefore, the disputed domain name is likely to give rise to a likelihood of confusion. In the circumstances of this proceeding, the fact that the third party's trademark SARENZA precedes the Complainant's trademark and the addition of \".eu\" does not serve to alleviate potential Internet user confusion between the disputed domain name and Complainant's mark.\r\n\r\nOther previous UDRP decisions have established that there is confusing similarity between a domain name reproducing the Complainant's trademark, coupled with a third party's sign (see in this respect, Case No. D2001-1142, referring to the domain name ; Case No: D2002-0793, for the domain name ; Case D2002-0028, for the domain name ; AFNIC cases of October, 1st 2012 for the domain names and (Annexes 10 and 11 to the Complaint).\r\n\r\n Based on the overall visual impression and expected Internet user association, the Panel determines that the disputed domain name is confusingly similar to Complainant's ZALANDO trademark.\r\n\r\nB. The Respondent has no rights or legitimate interests in respect of the domain name\r\n\r\nIn the Panel's view, the Respondent has no rights or legitimate interests in the disputed domain name.\r\nIn its Complaint, the Complainant states that the Respondent is not generally known by the disputed domain name, nor has acquired any trade mark or service mark rights in the Zalando mark. In the absence of any contrary statement by the Respondent, the Panel takes the view that the Complainant's assertions are well-grounded.\r\n \r\nThe domain name is a combination of two fanciful, distinctive and well-known trademarks, SARENZA and ZALANDO. \r\n\r\n As such, and unless the Respondent has been authorized to include the two renown trademarks in a domain name, is not a term which would be legitimately chosen unless seeking to take advantage from the reputation of the two trademarks.\r\n \r\nThe Complainant contends not to have ever authorized, licensed or otherwise consented to the Respondent's use of its trademark ZALANDO by registering a domain name containing this trademark. The Respondent failed to reply to this assertion and therefore in the absence of any argument to the contrary the Panel accepts the Complainant's assertion.\r\n \r\nThe Panel finds that the Respondent is not making a legitimate non-commercial or fair use of the domain name at issue. As a matter of fact, the Respondent does not use the domain name in connection with a bona oüde offering of goods or services. The Complainant has proved that the domain name resolves to a website offering for sale clothing allegedly originating from luxury brands like Armani, Ralph Lauren or Burberry. The Complainant further assumes that most of these goods are fake, due to their limited costs, and frequent misspellings contained in the website. Moreover, some of the goods are clearly described as being an imitation (Annex 23 “Spot fake Gucci LV“; “Fake Gucci LV“).\r\n\r\nThe registration and use of a domain name corresponding to two well-known trademarks, without authorization to sell goods identical and similar to those identified by the Complainant's trademark, some of which are also described as imitation goods, is certainly not a legitimate and non-commercial or fair use of the domain name, without intent to mislead consumers or harm the reputation of a name on which a right is recognised or established by national and\/or Community law.\r\n\r\nBased on all arguments above, the Panel determines that the Complainant has successfully proved that the Respondent lacks rights and legitimate interests in the domain name.\r\n\r\n\r\nC. The domain name was registered and is being used in bad faith\r\n\r\nAs the Panel has already established that the Respondent has no right or legitimate interest in the disputed domain name there is no need to make a finding as to bad faith for the purposes of Article 21(1) of the Policy. However, since the Complainant has extensively addressed this point, the Panel believes it is appropriate to express her view.\r\n \r\nThe Complainant's first contention is that given the fame and success of the Zalando and Sarenza trademarks, at the time of the registration of the disputed domain name, the Respondent knew or should have known the Complainant's trademark.\r\n\r\nIn the Panel's view, the Complainant has successfully proved the reputation of the ZALANDO trademark. Other previous Panels' decisions have also recognized that the trademark ZALANDO enjoys such a reputation. Accordingly, it is extremely unlikely that the Respondent registered the domain name at stake without being aware of the Complainant's trademark. This is even more so, considering that the domain name is the contraction of two well-known and fanciful trademarks belonging to two different competitors. Thus, that the Respondent registered the disputed domain name without knowledge of the Complainant's trademark and of its activity is highly improbable.\r\n\r\nMoreover, as the Complainant has pointed out, the Respondent has engaged in a pattern of registering domain names corresponding to the Complainant's and its competitor's trademark. More specifically, the following domain names were registered between October 2011 and August 2012: , , , , and . \r\n\r\nThe Complainant asserts that although at a first glance the aforementioned domain names have been registered by different registrants:\r\n \r\n- , and have been registered by Domain Directors SARL. Domain Directors SARL is a French limited company registered by the Commercial Court Registry of La Rochelle, under Nr. 491778171;\r\n \r\n- has been registered by Sarenza Zalando, 15 rue Pierre Guignois, 94200 Ivry-sur-Seine, France;\r\n \r\n- On the very same day of the registration of the domain name by Domain Directors SARL, the Respondent registered the domain name and an entity called Group Ponda registered ;\r\n \r\nin reality, several evidence show that Domain Directors SARL, Sarenza Zalando, Mickael Lagier and Group Ponda are the same and unique registrant:\r\n \r\nFirst, the Complainant has provided evidence that neither Sarenza Zalando nor Group Ponda have been lawfully incorporated and registered in France. According to the French database Infogreffe, which contains all French registered companies by every French Commercial Court Registry, there is no company incorporated under said names in France. \r\n\r\nSecond, the domain name Grouponda.fr has been registered by Domain Directors SARL on November, 10, 2011.\r\n \r\nThird, all websites relating to the domains , , , are similar and always contain closely similar disclaimers.\r\n\r\n Recently, the domain names and have been the subject of two ADR proceedings, and the Panels have concluded for their cancellation.\r\n\r\nIn the Panel's view, absent any contrary statement by the Respondent, the Complainant's assertions are well-grounded and the domain name should be considered as having being registered in bad faith.\r\n \r\n- Use in Bad Faith \r\n\r\nThe Complainant has proved evidence that the domain name leads to a webpage were apparel goods apparently originating from well-known fashion brands are offered for sale. The Complainant further contends that these goods are counterfeit, and some goods offered for sale on the www.sarenzalando.eu website are effectively defined as being an \"imitation\".\r\n\r\nIn the Panel's view, the use of a domain name consisting of the combination of two famous trademarks in online retailing of fashion products, clearly demonstrates that the Respondent is using the domain name to attract Internet users for commercial gain, to the Respondent's web site by creating a likelihood of confusion with the Complainant's mark and its competitor Sarenza. The use of the domain name can only lead to confusion, divert customers, and dilute the Complainant's goodwill in the trademark ZALANDO. The way the goods are displayed and offered for sale on the website corresponding to the disputed domain name, the fact that these goods are sold for very low prices compared to their current value, the fact that some of these goods are qualified as being and imitation, the typos, and other errors contained in the website, are such as to dilute the value and goodwill of the Complainant's trademark (see also ADR Case nr. 100419, alaiashoes.com and Case nr. 100331 eccoshoesoutlet.org, which established that the Respondent used the domain name for offering counterfeited fashion products is evidence of its bad faith).\r\n \r\nThe Panel therefore concludes that the domain name is registered and is being used in bad faith. \r\r", "decision": "For all the foregoing reasons, in accordance with Paragraphs B12 (b) and (c) of the Rules, the Panel orders that\r\n\r\nthe domain name SARENZALANDO.EU be revoked.", "panelists": [ null ], "date_of_panel_decision": "2013-02-20 00:00:00", "informal_english_translation": "I. Disputed domain name: [sarenzalando.eu]\r\n\r\nII. Country of the Complainant: [Germany], country of the Respondent: [France]\r\n\r\nIII. Date of registration of the domain name: 17 August 2012\r\n\r\nIV. Rights relied on by the Complainant (Art. 21 (1) Regulation (EC) No 874\/2004) on which the Panel based its decision:\r\n\r\n 1. word trademark, International Registration designating many worldwide countries, reg. No. 1073670, for the term ZALANDO, registered on 24 February 2011 in respect of goods and services in classes 18, 25, 35\r\n 2. combined trademark, International Registration designating Switzerland, China and Russia, reg. No. 1075131, for the term ZALANDO, registered on 1 December 2010 for goods and services in classes 03; 09; 14; 18; 21; 24; 25; 26; 28; 35;\r\n 3. combined CTM, reg. No. 9483694, for the term ZALANDO, filed on 29 October 2010, registered on 19 April 2011 in respect of goods and services in classes 3; 9; 14; 18; 21; 24; 25; 26; 28; 35;\r\n 4. word CTM, reg. No. 9376609, for the term ZALANDO, filed on 15 September 2010, registered on 2 February 2011, in respect of goods and services in classes 3; 9; 14; 18; 20; 21; 24; 25; 26; 28; 35 ;\r\n 5. word International reg. No. 1037150 for the term ZALANDO, designating several worldwide countries, registered on April 8, 2010, for goods and services in classes 18, 25, 35;\r\n 6. word CTM, reg. No. 8686008 for the term ZALANDO, filed on 13 November 2009, registered on 10 December, 2010, for goods and services in classes 18; 25; 35.\r\n \r\n \r\nV. Response submitted: No\r\n\r\nVI. Domain name is confusingly similar to the protected right\/s of the Complainant\r\n\r\nVII. Rights or legitimate interests of the Respondent (Art. 21 (2) Regulation (EC) No 874\/2004):\r\n 1. No\r\n 2. Why: the Respondent is not generally known by the disputed domain name, nor has acquired any trade mark or service mark rights in the Zalando mark; the Respondent is using without authorization a domain name consisting of the combination of two fanciful competitors' trademarks for retail services of similar \/ identical goods, some of which are qualified as \"imitations\". Thus, the Respondent is not making a legitimate and non-commercial or fair use of the domain name, without intent to mislead consumers or harm the reputation of a name on which a right is recognised or established by national and\/or Community law.\r\n\r\nVIII. Bad faith of the Respondent (Art. 21 (3) Regulation (EC) No 874\/2004):\r\n 1. Yes\r\n 2. Why: The Respondent knew or should have known the existence of prior trademark rights belonging to third parties at the time of the registration of the domain name. The Respondent engaged in a pattern of registering domain name including the Complainant's trademarks. Previous Panels have already decided for the abusive registration of these domain names.\r\nThe Respondent is using the domain name to attract Internet users for commercial gain, to the Respondent's web site by creating a likelihood of confusion with the Complainant's mark and\/or its competitor Sarenza.\r\n\r\nIX. Other substantial facts the Panel considers relevant: None\r\n\r\nX. Dispute Result: Revocation of the disputed domain name\r\n\r\nXI. Procedural factors the Panel considers relevant: None\r\n\r\nXII. [If transfer to Complainant] Is Complainant eligible? [Yes\/No]: N\/A", "decision_domains": [], "panelist": null, "panellists_text": null }