The Complainant is DSM IP Assets B.V., Netherlands, represented by Legaltree, Netherlands.
The Respondent is Patrick L., BTS, United States of America.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2021. On November 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 5, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 26, 2021.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on December 7, 2021. 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 BackgroundThe Complainant, DSM IP Assets BV (“DSM IP”), is part of the large and well-known Dutch company Koninklijke DSM N.V. (Royal DSM), established in 1902 in Heerlen, the Netherlands. Royal DSM is a global company specializing in nutrition, health & sustainable living, including chemical raw materials and pharmaceutical products.
The Complainant is the owner of many DSM-trademarks including: Benelux registration No. 95046 DSM for goods in classes 1, 2, 3, 4, 5, 7, 8, 9, 11, 16, 17, 18, 19, 20, 21, 22, and 23 (registration date: June 1, 1974); European Union Trade Mark No. 1583053 DSM for goods and services in classes 1, 2, 3, 4, 5, 17, 19, 22, 23, 24, 29, 30, 31, 32, 33, and 42 (registration date: February 5, 2003); and International Trademark No. 991629 DSM inter alia designating the EU for goods and services in classes 1, 2, 3, 5, 9, 10, 12, 16, 17, 19, 20, 21, 22, 23, 24, 25, 27, 28, 29, 30, 31, 32, 33, 35, 39, 40, 41, 42, 45 and the US for goods and services in classes 1, 2, 5, 9, 10, 17, 22, 29, 30, 31, 32, 42, and 44 (registration date: September 22, 2008).
The disputed domain name resolves to a parking page displaying hyperlinks consisting of apparent DSM product offerings in different categories.
The disputed domain name was registered on May 19, 2021.
5. Parties’ Contentions A. ComplainantThe Complainant points out that where a trademark is incorporated in a domain name in full, in general this leads to the conclusion that the domain name is identical or at least confusingly similar to the invoked trademark. In any case, the disputed domain name is said to be confusingly similar to the DSM trademark of the Complainant.
Additionally, the Complainant says that the Respondent has included the entire trade name “Royal DSM” in the disputed domain name. The Complainant is part of a conglomerate known globally as “Royal DSM”. The latter is a distinctive identifier of its goods and services, the Complainant maintains. Therefore, it says that the use of this trade name in the disputed domain name increases confusing similarity since it suggests that the Respondent is the Royal DSM company, and that the disputed domain name refers to the official website of this company.
Further, the Complainant did not authorize the Respondent to use its brand DSM (or the trade name Royal DSM) in its domain name, trade name, in advertisements or otherwise. Given the global reputation inherent in the trademark DSM and the tradename Royal DSM, this is enough to establish that the Respondent does not have any right or legitimate interest in the disputed domain name. The Respondent is not commonly known by the domain name and – to the knowledge of the Complainant – he did not acquire any trademark or service mark rights, at least not prior to any of the trademark registrations of the Complainant. To suggest that there is a link with the Complainant or even that the Respondent is the Complainant, a suggestion inherent in the composition of the disputed domain name, is not fair use, nor is earning revenue through (sponsored link) advertising by use of the Complainant's trademarks.
The Complainant further points out that the fact alone that the disputed domain name is identical or at least confusingly similar to the widely known trademark DSM, where the Respondent has not been authorized to use that mark in a domain name, creates a presumption of bad faith. The Respondent is said to be clearly aware of the brand DSM and the Dutch company (Royal) DSM. The advertisement links on the website to which the disputed domain name resolves show products that are part of the core business of the Complainant/Royal DSM, such as nutritional products. The Respondent apparently would like consumers and/or professional companies to believe that he is somehow affiliated to the long-established Dutch Complainant. The Respondent would, according to the Complainant, not have sought to register the disputed domain name for any purpose other than to generate a false impression of a genuine connection with the Complainant.
The disputed domain name not only incorporates the registered trademark DSM but it also incorporates the identical trade name Royal DSM. Thus the Complainant is being prevented from reflecting its trademark DSM for its mother company Royal DSM in the disputed domain name.
Finally, the Complainant says that by registering and using the disputed domain name the Respondent intentionally attempts to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the Respondent’s website.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe disputed domain name is not identical to the DSM registered trademarks of the Complainant. However, the DSM trademark is immediately recognizable within the disputed domain name, and that is sufficient to satisfy the requirement of confusing similarity.
The Panel holds that the disputed domain name is confusingly similar to the registered trademark DSM of the Complainant.
B. Rights or Legitimate InterestsAs is described in the WIPO Overview 3.0, “while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Respondent has not answered any of the contentions of the Complainant. There is nothing before the Panel to indicate that there is any basis for a claim of rights or legitimate interests of which the Respondent would be the beneficiary. The Complainant has not authorized the use of its DSM trademarks by the Respondent in any way, and there is nothing to suggest the Respondent is known by the name DSM or Royal DSM or has any trademark or related rights in those marks. The use of a domain name that is confusingly similar to the trademark of a Complainant for the purpose of displaying a parking page with hyperlinks is not of a kind to vest rights or result in the recognition of any legitimate interest in a disputed domain name.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithThe disputed domain name incorporates the DSM trademark of the Complainant. The website established by the Respondent at the disputed domain name, contains hyperlinks in which the DSM trademark is repeatedly displayed, in relation to product categories that the Complainant trades in. When the disputed domain name was registered, the Complainant had a longstanding reputation around the world, vesting in the DSM trademarks. It is a major company in its field globally.
Therefore it is incontrovertible that the disputed domain name was registered in bad faith. Its use to lead unsuspecting consumers and professionals to a website displaying hyperlinks of the kind described above, is clearly also in bad faith. The coincidence between the trademarks of the Complainant and the composition of the disputed domain name suggests a genuine connection with the Complainant, or even that the site is that of the Complainant itself. Clearly these are false suggestions.
The Respondent was in no way entitled to register such a domain name or use it for a purpose which inherently relies on deceiving consumers into thinking the site is genuine, and thus earning financial rewards in the way of click-through licenses.
Therefore, the Panel holds that the disputed domain name was registered and is being used in bad faith.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name,
WiIliam A. Van Caenegem
Sole Panelist
Date: December 21, 2021