{
    "case_number": "CAC-ADREU-004052",
    "time_of_filling": null,
    "domain_names": [],
    "case_administrator": null,
    "complainant": [],
    "complainant_representative": null,
    "respondent": [],
    "respondent_representative": null,
    "factual_background": "All capitalized terms not defined herein are used by reference to the various regulations and rules identified in this decision.\r\n\r\nThis complaint arises out of the interpretation and application of Commission Regulation (EC) No 874\/2004 of 28 April 2004 (“Regulation”), European Parliament and Council Regulation (EC) No 733\/2002 of April 22, 2002 (“EU Regulation”) and the .eu Domain Name ADR Rules and the Terms and Conditions (the “Rules” and “Conditions”).\r\n\r  \n  1.\tThe parties\r\n\r\n\r\nTARKETT SAS, (the “Complainant\") and its corporate headquarters are based in Nanterre (France). Dominique Mallo is the Complainant’s Authorized Representative. \r\n\r\nThe Complainant requests the transfer of the domain name Tarkett-commercial.eu, “the Domain Name” from the current Registrant to TARKETT SAS.\r\n\r\nThe current Registrant of the Domain Name registered on 7 April 2006 is REZEPT LTD, Janusch KURT, (the “Respondent”).\r\n\r\n2.\tThe ADR proceeding\r\n\r\nOn 29 December 2006, the Complainant submitted a Complaint to the ADR Center filed in the English language requesting the transfer to it of the Domain Name “tarkett-commercial.eu”.\r\n\r\nOn 10 January 2007, the ADR Center confirmed the receipt of the Complaint and requested verification information from EUrid about the Respondent.\r\n\r\nOn 12 January 2007, EUrid answered in a non-standard communication providing the information as requested and confirming that the Domain Name will remain locked during the pending ADR Proceeding.\r\n\r\nOn 12 January 2007, the ADR Center notified to the Complainant in a non standard communication that the Registrar was partly incorrectly identified in the Complaint.\r\n\r\nOn 16 January 2007, the Complainant provided in a non standard communication the appropriate identification of the Registrar.\r\n\r\nOn 23 January 2007, the ADR Center checked the Complaint and notified to the Respondent that an ADR Proceeding had been commenced against it pursuant to Regulations (EC) No. 733\/2002 and No. 874\/2004.\r\n\r\nOn 13 February 2007, the ADR Center indicated to the Respondent in a non standard communication that the term for submitting a Response would expire on 23.2.2007.\r\n\r\nOn 21 February 2007, the ADR Center indicated in a non standard communication that the date stated in the previous non standard communication was incorrect and that the Response had to be submitted by 23.3.2007.\r\n\r\nOn 22 February 2007, the ADR Center indicated in a non standard communication that the letter announcing Commencement of the ADR Proceeding to the Respondent and containing the Complaint and login information was returned undelivered due to unknown address. The ADR Center added that the envelope was opened and provided a photograph showing this.\r\n\r\nOn 26 March 2007, the ADR Center notified the Respondent’s default.\r\n\r\nOn 6 April 2007, the ADR Center notified the appointment of the ADR Panel and the projected decision date.\r\n\r\nOn 11 April 2007, the case 4052 was transmitted by the ADR Center to the ADR Panel.",
    "other_legal_proceedings": "The Panel is not aware of other pending or decided legal proceedings which relate to the disputed domain name",
    "discussion_and_findings": "1\/ It should be noted that the Respondent did not file any Response to the Complaint. This entitles the Panel to proceed to a decision based on the Complaint alone and to consider this failure to respond as grounds to accept the claims of the Complainant.  This is stated under paragraph B. 10 (a) of the Rules. Consequently, the Panel accepts the claims of the Complainant, provided however, that these claims are valid, coherent and, in respect to the transfer, that the Complainant fulfils the eligibility criteria for registering a .eu domain name as established by Article 4 (2) (b) of the EU Regulation. \r\n\r\n2\/ According to Article 22(11) of the Regulation, an ADR proceeding may be initiated by any party where the registration is speculative or abusive within the meaning of Article 21 or where a decision taken by the Registry conflicts with the Regulation or with the EU Regulation.\r\n\r\nIn the present case, the Complaint is against the registrant of the Domain Name, not the Registry. Therefore, the issue at hand  is whether the registration is speculative or abusive within the meaning of Article 21. \r\n\r\nArticle 21 (1) states that:\r\n“A registered domain name shall be subject to revocation, using an appropriate extra-judicial or judicial procedure, 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 Article 10(1), and where it:\r\na)\tHas been registered by its holder without rights or legitimate interest in the name; or\r\nb)\tHas been registered or is being used in bad faith.”\r\n\r\nAccording to this article, a domain name shall be subject to revocation and\/or transfer, (1) where that name is identical or confusingly similar to a name in respect of which a right is recognized or established by national and\/or Community law, such as the rights mentioned in Article 10(1) of the Regulation, (2) and where it has been registered without rights or a legitimate interest in the name or (3) has been registered or is being used in bad faith.\r\n\r\n3\/ First, the Panel must determine whether the Domain Name is identical or confusingly similar to Complainant’s name in respect of which a right is recognized or established by the national law of a Member State and\/or Community law.  \r\n\r\nThe Complainant has evidenced being the owner of numerous registered trademarks consisting of the word “TARKETT”. \r\n\r\nThe Complainant owns the International Registration for the trademark TARKETT registered on May 29, 1999 claiming for 19 countries and several National Trademarks of Member States (France, Benelux, Germany and Portugal) respectively registered on June 29, 1988, December 10, 1971, January 8, 1996, December 12, 1995 and August 20, 1997.\r\n\r\nComplainant is thus the holder of a right recognised by national and\/or Community law, such as the rights mentioned in Article 10(1).  There is no indication that Respondent is the holder of such a right.  \r\n\r\nThe Domain Name is not identical with Complainant’s protected rights but is it confusingly similar to these?\r\n\r\n The trademarks and the Domain Name in question differ in the additional element “commercial”, the hyphen and the extension “.eu”.  \r\n\r\nIt should be noted that, the element “commercial” is a descriptive word that is also used for the innovative and global business division within the Complainant group. \r\n\r\nThe addition of such a descriptive element to the very distinctive word “tarkettis not capable of excluding confusing similarity between the Domain Name and the trademarks.  First, the protected word “tarkett” is a very distinctive name which distinctiveness is not diluted by the addition of the word “commercial”.  Second, the Complainant shows that it uses the expression “TARKETT COMMERCIAL” in brochures and advertisings available to consumers or professionals and is thus known also under this business name.\r\n\r\nIn respect to the extension .eu added to the protected rights, it is widely accepted that the top level domain .eu is not considered under Article 10 of the Regulation as internet users see it as having only the function of an address and, hence being merely descriptive (cf. e. g. ADR.eu cases No. 00387 – gnc.eu and No. 02035 – warema.eu). \r\n\r\nFurthermore, the separation or non-separation of the portions “Tarkett” and “Commercial” by hyphens or spaces in the Complainant’s trade name on the one hand and the Domain Name on the other hand does not influence the similarity since the internet users are used to the fact that companies doing business on the internet separate the elements of their company names in the respective domain names and others do not (cf. e.g. ARD.eu cases No. 00453 – web.eu and No. 02732 – hotel-adlon.eu). It is also common knowledge within internet users that many companies register as domain names variations of their names with and without hyphens in order to increase the visibility of their internet presence.\r\n\r\nFinally, even if analysed in their totality rather than separately, the descriptive additions to the name “tarkett” used in the Domain Name do not dilute the very distinctive character of the protected right.\r\nAs a result the Panel considers that the Domain Name is identical or confusingly similar to Complainant’s name as protected by intellectual property rights.  \r\n\r\n\r\n4\/ Does the Respondent have a legitimate interest in the Domain Name? \r\n\r\nArticle 21 (2) of the Regulation states that:\r\n“A legitimate interest within the meaning of point (a) of paragraph 1 may be demonstrated where:\r\n(a)\tPrior to any notice of an alternative dispute resolution (ADR) procedure, the holder of a domain name has used the domain name or a name corresponding to the domain name in connection with the offering of goods or services or has made demonstrable preparation to do so;\r\n(b)\tThe holder of a domain name, being an undertaking, organisation or natural person, has been commonly known by the domain name, even in the absence of a right recognised or established by national and\/or Community law;\r\n(c)\tThe holder of a domain name is 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\n\r\nArticle 21 (2) of the Regulation implies a demonstration by Respondent rather than by Complainant.  In the present case Respondent’s failure to respond to the Complaint means a failure to demonstrate the existence of a legitimate interest in the Domain Name.\r\n\r\nHowever, before concluding on this the Panel cannot disregard the existence of a website that is linked to the Domain Name.  The Domain Name is linked to a web directory.   Nothing precludes the Panel from considering that a domain name that is used as a web directory may be evidence of a legitimate interest.  The Panel will consider this in relation to Complainant’s arguments as the website is part of Complainant’s argument.\r\n\r\nArticle (B)(1)(b)(10)(i) of the Rules states that Complainant must describe “why the domain name has been registered by its holder without rights or legitimate interests in respect of the domain name that is the subject of the Complaint”.  \r\n\r\nThe Complaint complies with this requirement and outlines the reasons for the lack of a legitimate interest as follows.\r\n\r\na)\tComplainant states that Respondent has not been licensed by it to use its protected intellectual property right and that Respondent is not commonly known by the name tarkett-commercial.\r\n\r\nb)\tIt results from the Complaint that, prior to any notice of the dispute, the Respondent used the disputed Domain Name to redirect to a web directory dedicated to flooring solutions. \r\n\r\nNothing precludes the Panel from considering that a domain name that is used as a web directory is evidence of a legitimate interest.\r\n\r\nHowever, a legitimate interest is generally defined as either (i) a use or planned use of a domain name in connection with a bona fide offering of goods and services (ii) being commonly known by the domain name or (iii) using the name through a legitimate non-commercial or fair use, without tarnishing, misleading or diverting consumers.\r\n\r\nThe existence of the website cannot be considered alone as evidence of a legitimate interest.  Its content is paramount to such determination.  The website’s content must enable the Panel to conclude that the holder of the Domain Name has a legitimate interest in the Domain Name.  \r\n\r\nThe website to which the Domain Name is linked is a web directory.  This web directory specifically identifies floorings solutions and competitors of Complainant providing links to these competitors’ websites.  It is thus clear to the Panel that the holder of the Domain Name is no using the Domain Name in connection to a bona fide offering of goods and services since the trademark of the Complainant is used for purposes of diverting Complainant’s customers.  Respondent does not appear to be offering any specific goods or services related to the Domain Name as such.  It is also clear to the Panel that Respondent is not commonly known by the Domain Name because it itself acknowledges through its website that it is Complainant that is known through that name as Complainant’s name is also provided in secondary links.  Finally, there is no doubt to the Panel that the only known use of the Domain Name by Respondent which is the website cannot be considered legitimate non-commercial or fair use, without tarnishing, misleading or diverting consumers.  It is in fact exactly the opposite.\r\n\r\nAs a result the Panel finds that the Respondent has not met this requirement and therefore there is no obligation under Article 21(1) to consider the issue of bad faith. However, given the issue has been raised by the Complainant, the Panel will now take this opportunity to consider the issue of bad faith.\r\n\r\n5\/ The Domain Name was registered or is being used in bad faith\r\n\r\nUnlike the legitimate interest issue, the criterion of bad faith goes to the circumstances surrounding the registration or use of the Domain Name by the Respondent, and focuses on the Respondent’s intentions, either as they are stated explicitly or as can be inferred from the Respondent’s actions and the facts of the matter.\r\n\r\nArticle 21(3) of the Regulation defines “bad faith” for the purposes of the Regulation, which includes situations where:\r\n\r\n“(a) circumstances indicate that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name to the holder of a name in respect of which a right is recognised or established by national and\/or Community law or to a public body; or\r\n\r\n(b) the domain name has been registered in order to prevent the holder of such a name in respect of which a right is recognised or established by national and\/or Community law, or a public body, from reflecting this name in a corresponding domain name, provided that:\r\n\r\n(i) a pattern of such conduct by the registrant can be demonstrated; or\r\n\r\n(ii) the domain name has not been used in a relevant way for at least two years from the date of registration; or\r\n\r\n(iii) in circumstances where, at the time the ADR procedure was initiated, the holder of a domain name in respect of which a right is recognised or established by national and\/or Community law or the holder of a domain name of a public body has declared his\/its intention to use the domain name in a relevant way but fails to do so within six months of the day on which the ADR procedure was initiated;\r\n\r\n(c) the domain name was registered primarily for the purpose of disrupting the professional activities of a competitor; or\r\n\r\n(d) the domain name was intentionally used to attract Internet users, for commercial gain, to the holder of a domain name website or other on-line location, by creating a likelihood of confusion with a name on which a right is recognised or established by national and\/or Community law or a name of a public body, such likelihood arising as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location of the holder of a domain name; or(e) the domain name registered is a personal name for which no demonstrable link exists between the domain name holder and the domain name registered.”\r\n\r\nIn support of its allegation of bad faith the Complainant submits that by registering and using the Domain Name Respondent intentionally and for financial gain has attracted internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent's website.\r\n\r\nIt is clear from the website that Respondent knew of Complainant as a search on Respndent’s website for the word “tarkett”lists Complainant as a provider of flooring.  \r\n\r\nThe Panel believes that the Domain Name is being used to attract internet users to a website that is essentially a directory of websites related mainly with flooring services. Respondent is receiving pay-per-click fees when consumers follow the links proposed on on the website.   As a result, the Panel considers that the Respondent uses the Domain Name to attract internet users, for commercial gain to its website, by creating a likelihood of confusion with Complainant’s trademark.  Respondent intentionally violates Complainant’s intellectual property rights for financial gain.\r\n\r\nThe Panel concludes that the present case reflects the situation targeted by Article 21(3) (d) of the Regulation.\r\n\r\nIn addition to this Respondent used a false address to register the Domain Name.  The Panel finds that the Respondent’s erroneous address is also indicia of bad faith.\r\n\r\nAccording to Article 3(a) of the Regulation the request for a domain name registration shall include the name and address of the requesting party.\r\n\r\nThe Article 20 c) states that the Registry may revoke a domain name at its own initiative and without submitting the dispute to any extrajudicial settlement of conflicts if holder’s breach of the terms of registration under Article 3.\r\n\r\nThe ADR Center sent the letter announcing the Commencement of the ADR Proceeding to the Respondent and containing the Complaint and login information on 23 January 2007. This letter was returned undelivered due to the fact that the addressee was unknown at the stated address on 22 February 2007. \r\n\r\nThe Panel concludes that the condition of registration imposed by the Regulation to provide the name and the address of the party who requests the domain name is not fulfilled. This conclusion evidences further the bad faith of the Respondent when it registered the Domain Name.\r\n\r\n\r\nOn the basis of the above, the Panel finds that the disputed Domain Name is used by the Respondent in bad faith.\r\n\r\nFinally, the Complainant has demonstrated fulfilling the eligibility criteria of Article 4 (2) (b) of Regulation and orders the transfer of the Domain Name to Complainant.",
    "decision": "For all the foregoing reasons, in accordance with Paragraphs B12 (b) and (c) of the Rules, the Panel orders that\r\n\r\n\r\n\r\nthe domain name TARKETT-COMMERCIAL be transferred to the Complainant",
    "panelists": [
        null
    ],
    "date_of_panel_decision": "2007-05-04 00:00:00",
    "informal_english_translation": "A domain name shall be subject to revocation and\/or transfer, (1) where that name is identical or confusingly similar to a name in respect of which a right is recognized or established by national and\/or Community law, such as the rights mentioned in Article 10(1) of the Regulation, (2) and where it has been registered without rights or a legitimate interest in the name or (3) has been registered or is being used in bad faith.\r\n\r\nTARKETT is a protected trademark that belongs to Complainant.  It refers to flooring solutions.  The Domain Name is not identical to the trademark but it is confusingly similar to it.\r\n\r\nUsing the Domain Name by linking it to a website that disparages Complainant's  trademark cannot result in a legitimate interest in the Domain Name.  To the contrary it attests to Respondent's bad faith and blatant violation of Complainant's intellectual property rights.",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}