Complainant is SPAR International B.V. of Amsterdam, Netherlands, represented by Zacco Netherlands B.V., Netherlands.
Respondent is Vago BV of Sittard, Netherlands. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Key-Systems GmbH dba . 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2011. On August 12, 2011, the Center transmitted by email to Key-Systems GmbH dba a request for registrar verification in connection with the Domain Name. On August 16, 2011, Key-Systems GmbH dba transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On August 22, 2011, the Center transmitted an email to the parties in both Dutch and English regarding the language of proceedings. On August 25, 2011, Complainant submitted an amendment to the Complaint requesting that English be the language of proceedings.
The Center verified that the Complaint together with the amendment to 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 18, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 19, 2011.
The Center appointed Dinant T.L. Oosterbaan as the sole panelist in this matter on September 30, 2011. 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
According to the evidence submitted by Complainant Spar International B.V. of Amsterdam, The Netherlands, there is a multitude of SPAR trademark registrations, including international registrations and registrations in Portugal. The SPAR tradename and trademarks have been in use since the 1930’s for supermarkets and private label SPAR products.
Respondent Vago BV of Sittard, The Netherlands, registered the Domain Name on December 15, 2010. 5. Parties’ Contentions A. Complainant
Complainant submits that the Domain Name is confusingly similar to its well-known SPAR trademarks. According to Complainant Respondent has no rights or legitimate interests in respect of the Domain Name in view of its SPAR trademarks. Complainant submits that Respondent has registered and is using the Domain Name in bad faith to advertise its own food products. Finally, according to Complainant Respondent offered to sell the Domain Name to Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
During the administrative proceeding it became evident that the language of the registration agreement is Dutch. The Center decided to accept the Complaint in English, to accept the Response in either English or Dutch and to appoint a Panel familiar with both languages.
In accordance with paragraph 11 of the Rules the Panel determines that English is the appropriate language of the proceeding in view of the fact that the ultimate interested party Spar International B.V. would be unfairly harmed if the language of the proceeding would be Dutch. In addition, it appears that only the language of the registration agreement used by the Registrar’s reseller is Dutch. Finally, the website of Respondent appears to be partly in English while Respondent has not objected to English being the language of the proceeding having been given a fair chance to do so.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that Complainant proves each of the following three elements to obtain an order that the Domain Name should be transferred:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Panel is satisfied that the Domain Name is subject to the control of Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied in this proceeding. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights.
Complainant has established that it is the owner of numerous international and other trademark registrations for SPAR. Complainant’s registrations predate the creation date of the Domain Name.
The Domain Name incorporates the entirety of Complainant’s well-known SPAR trademark as its distinctive element. Many UDRP decisions have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety.
The Panel finds that Complainant has proven that the Domain Name, comprised of Complainant’s trademarks in its entirety is confusingly similar to Complainant’s SPAR trademarks. B. Rights or Legitimate Interests
In the opinion of the Panel Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. This is particularly true as Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the famous SPAR trademarks of Complainant. Based on the evidence provided by Complainant Respondent promotes or intends to promote its own food products. Respondent makes use of the likelihood of confusion with the SPAR trademarks of Complainant, which cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. In addition, Respondent was not commonly known by the Domain Name nor has it acquired trademark rights. Under these circumstances the Panel finds that Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
The Panel finds that the Domain Name has been registered and is being used in bad faith. The SPAR trademarks are well known and long existing trademarks and Respondent knew or should have known that the Domain Name included Complainant’s SPAR mark. Also, Respondent did not deny the statement of Complainant that Respondent wanted to sell the Domain Name to Complainant.
The Panel finds that the above elements mean that Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the SPAR trademarks of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product on its website or location. 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 Domain Name be transferred to Complainant.
Dinant T.L. Oosterbaan
Sole Panelist
Dated: October 7, 2011
Full & Egal Universal Law Academy