{
    "case_number": "CAC-ADREU-008021",
    "time_of_filling": null,
    "domain_names": [
        "shopify.eu"
    ],
    "case_administrator": "  Iveta Špiclová   (Czech Arbitration Court) (Case admin)",
    "complainant": [
        "Shopify Inc. ( )"
    ],
    "complainant_representative": null,
    "respondent": [
        "Monika Hilyard"
    ],
    "respondent_representative": null,
    "factual_background": "The Complainant is a leading global commerce company, providing trusted tools to start, grow, market, and manage a retail business of any size. Since 2006, it offers a platform and services that are engineered for reliability, while delivering a better shopping experience for consumers everywhere. The Complainant builds web- and mobile-based software and lets merchants easily set up online storefronts that are rich with retail functionality. Merchants use the Complainant’s software to run their business across all of their sales channels, including web and mobile storefronts, physical retail locations, social media storefronts, and marketplaces. The Shopify platform provides merchants with a single view of their business and customers across all of their sales channels and enables them to manage products and inventory, process orders and payments, fulfil and ship orders, build customer relationships, source products, leverage analytics and reporting, and access financing, all from one integrated back office. The Complainant is listed on the New York Stock Exchange (ticker symbol: SHOP) and Toronto Stock Exchange (ticker symbol: SH) since May 2015.\r\n\r\nThe Complainant operates its business under the trademark “SHOPIFY”.\r\n\r\nRespondent obtained registration of the disputed domain name <shopify.eu> on 10 December 2015.",
    "other_legal_proceedings": "The Panel is not aware of any other legal proceedings.",
    "discussion_and_findings": "Principal Reasons for the Decision\r\n\r\n1. The three essential issues under the paragraph B11 (d) (1) of the ADR Rules are whether:\r\n\r\n(i) The domain name is identical or confusingly similar to a name in respect of which a right is recognised or established by the national law of a Member State and\/or European Union law and; either;\r\n(ii) The domain name has been registered by the Respondent without rights or legitimate interest in the name; or\r\n(iii) The domain name has been registered or is being used in bad faith.\r\n\r\nThe provision of Paragraph B 11 (d) (1) (i), (ii) ADR Rules and Art 21 (1) (a) ADR Regulation, provides that a registered domain name shall be subject to revocation, where that name is identical or confusingly similar to a name in respect of which a right is recognised or established by national and\/or Community law, such as the rights mentioned in Art 10 (1) ADR Regulation, and where it has been registered by its holder without rights or legitimate interest in the name.\r\n\r\n2. The ADR Panel reviewed carefully all evidence provided by the Complainant. The Respondent did not provide the Panel with any of them and submitted any statement. The Panel checked all respective websites and public information concerning the disputed domain name, namely the WHOIS databases.\r\n\r\n3. Any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the ADR Rules.\r\n\r\n4. The ADR Panel therefore came to the following conclusions:\r\n\r\n(i) The Panel finds that the Complainant is a leading global commerce company, providing trusted tools to start, grow, market, and manage a retail business of any size. The Complainant owns European Union trademark rights to the designation “SHOPIFY”. The EU trademark no. 008727083 “shopify”, related for gods and services in classes 9, 35, 38 and 42 and EU trademark no. 014499156 “SHOPIFY” for e-commerce related goods and services in classes 9, 35, 36 and 42 constitute a prior right in the meaning of Art 10 (1) ADR Regulation. It is indisputable that the trademarks and domain name “SHOPIFY” are well-known. These trademarks are identical to the second level domain “shopify” of the domain in dispute. \r\n\r\nThe disputed domain name is therefore deemed identical to the trade mark in accordance with Paragraph B 11 (d) (1) (i) ADR Rules and Art 21 (1) (a) ADR Regulation.\r\n\r\n(ii) The Panel finds that the Respondent has not been making any use of the disputed domain name. It was proven that there are no any rights of the Respondent to the disputed domain name. The Respondent is not generally known by the disputed domain name, and has not acquired any trademark or service mark rights in the name or trade mark.\r\n\r\n“Shopify” does neither constitute the Respondent’s surname nor the Respondent’s e-mail address does include the name “shopify”. The companies using “SHOPIFY” as a trademark or company name are the Complainant and its affiliates and subsidiaries only as the Panel´s search shows on the online database TM view covering the entire EU for the sign “SHOPIFY”. Even the only exception i.e. a Spanish word-figurative trademark containing the word “SHOPIFY”, which is registered for “training” in Nice class 41, cannot override the Panels conclusion. However, a possible combined trademark would not allow use or register the term “shopify” in isolation as a second level domain. The first 100 results of an online search for “shopify” only refer to the Complainant. It is safe to assume that any other company using “shopify” as its company or trade name would have appeared in these results. For these reasons, Respondent cannot rely on Paragraph B 11 (e) (2) ADR Rules and Art 21 (2)(b) ADR Regulation. Finally, there are no indications for any other legitimate interest of Respondent. Therefore the conditions of Paragraph B 11 (d) (1) (i), (ii) ADR Rules and Art 21 (1) (a) ADR Regulation are fulfilled.\r\n\r\n(iii) The disputed domain name was registered with an intention to attract customers of another well-known domain name\/registered trademark holder. Therefore there cannot be seen any legitimate interest of the Respondent.\r\n\r\nIt is clear that the Complainant's trademarks and website(s) were used by the Complainant long time before the disputed domain name was registered and used. It is therefore to conclude that the disputed domain name was registered with an intention to attract customers of another well-known domain name\/registered trademark holder.\r\n\r\n1. Domain for sale\r\n\r\nThe Panel finds that the disputed domain name has been and still is for sale for an unreasonable amount of money. Since Complainant is the sole owner of rights to the designation “SHOPIFY” and since no other person can have a legitimate interest in using <shopify.eu>, it is obvious that the unreasonable offer can only be intended for Complainant. It is obvious that the purchase price of USD 11,598.84 is far above registration and renewal costs. This is indicative of bad faith (see Barocco Roma srl, Rocco Barocco v. Virginie Trottier, CAC 07703).  The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith according to Paragraph B 11 (f) (1) ADR Rules and Art 21 (3) (a) ADR Regulation.\r\n\r\n2. Pattern of third party domain name registrations\r\n\r\nThe Panel finds that the Respondent registered several domains of well-known brands around the world. None of these domains is in use. The Panel therefore finds that the disputed domain name has been registered and is being used in order to prevent the rightful owners of the disputed domain name from using them for their legitimate commercial purposes according to Paragraph B 11 (f) (2) (i) ADR Rules and Art 21 (3) (b) (i) ADR Regulation.\r\n\r\n3. No use for more than two years\r\n\r\nThe Panels approved the statement of the Complainant that Respondent has never used <shopify.eu> since its registration in December 2015. Bad faith is established where the domain name has been registered in order to prevent the holder of such a name from reflecting this name in a corresponding domain name, provided that the domain name has not been used in a relevant way for at least two years from the date of registration. The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith according to Paragraph B 11 (f) (2) (ii) ADR Rules and Art 21 (3) (b) (ii) ADR Regulation. \r\n\r\nFor the reasons stated above, it is the decision of this Panel that the Complainant has satisfied all three elements of paragraph B11 (d) (1) of the Rules.",
    "decision": "For all the foregoing reasons, in accordance with Paragraphs B12 (b) and (c) of the Rules, the Panel orders that the disputed domain name <SHOPIFY.EU> be revoked.",
    "panelists": [
        null
    ],
    "date_of_panel_decision": "2020-11-24 00:00:00",
    "informal_english_translation": "I.      Disputed domain name: SHOPIFY.EU\r\n\r\nII.     Country of the Complainant: Canada, country of the Respondent: Germany\r\n\r\nIII.    Date of registration of the domain name: 10 December 2015\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         1.   Word trademark registered in the EU, reg. No. 008727083, for the term “shopify”, filed on 20 August 2015, registered on 26 March 2017 in respect e-commerce related goods and services in classes 9, 35, 38 and 42\r\n        2.   Word trademark registered in the EU, reg. No. 014499156[number], for the term “SHOPIFY”, filed on 20 August 2015, registered on 26 March 2017 in respect e-commerce related goods and services in classes 9, 35, 36 and 42.\r\n \r\n        3.   Company name: Shopify Inc.\r\n\r\nV.    Response submitted: No\r\n\r\nVI.   Domain name is identical to the protected rights 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: Respondent has not been making any use of the disputed domain name, it is not generally known by the disputed domain name, and has not acquired any trademark or service mark rights in the name or trade mark. \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: \r\na) Domain for sale for purchase price of USD 11,598.84 that is far above registration and renewal costs.\r\nb) Pattern of third party domain name registrations while Respondent registered several domains of well-known brands around the world. None of these domains is in use. \r\nc) No use for more than two years while Respondent has never used the disputed domain name since its registration\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",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}