The Complainant is Sky Global Inc., Canada, represented by Brinkhof Advocaten, Netherlands.
The Respondent is H Bou, Netherlands. 2. The Domain Name, Registry and Registrar
The Registry of the disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2021. On March 11, 2021, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On March 12, 2021, the Registry 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 .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”). In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 16, 2021. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was April 27, 2021. The Respondent did not submit a compliant Response. The Center notified formal deficiencies with the Response on May 7, 2021. The Respondent did not submit another response, accordingly, the Center notified the Respondent’s default on May 17, 2021. The Center appointed Alfred Meijboom as the sole panelist in this matter on May 19, 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 ADR Rules, Paragraph B(5). 4. Factual Background The Complainant was founded in 2008 and offers a secure communication platform and related devices under the name “SKY ECC”, which are distributed globally. The Complainant filed a European Union Trade Mark registration for SKY ECC on December 15, 2020, with application number 018354922 for computer application software for facilitating encrypted, secure private communications between user and the operation of a secure software as a service (SaaS) and a secure platform as a service (PaaS) featuring encrypted private communications between users. The disputed domain name was registered by the Respondent on December 12, 2018 and resolved to a website which offered the Complainant’s products “SKY ECC” for sale. 5. Parties’ Contentions A. Complainant The Complainant alleges that it obtained a trade name right for the name “SKY ECC” under Dutch national law. According to the Complainant, “SKY ECC” is the name of the Complainant’s flagship product, and the Complainant conducts all business related to this product under the name “SKY ECC”, including marketing and sales activities on the Complainant’s website at “www.skyecc.com”. The Complainant claims that the disputed domain name is identical or at least confusingly similar to the Complainant’s trade name “SKY ECC” as the only difference is the missing spacing between the element “SKY” and the element “ECC”, which is not detrimental to the conclusion that the disputed domain name incorporates the entirety of the Complainant’s trade name. Further, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because the Respondent is not commonly known under the disputed domain name, nor are there any registered trademarks in the name of the Respondent consisting of the disputed domain name. The Respondent is also not related to the Complainant’s business and is not authorized by the Complainant to use its trade name or sell its products. The Complainant further put forward that at the time of registration of the disputed domain name, the Respondent had a business relationship with one of the Complainant’s authorized distributors of “SKY ECC” products, which relationship was terminated following certain unprofessional conduct by the Respondent. The Respondent has never been an authorized distributor of the Complainant’s products. The disputed domain name resolved to a website which, according to the Complainant, gives the impression that the website is an official “SKY ECC” point of sale or a website operated by the Complainant or affiliated with the Complainant, which is misleading Internet users. In this respect, the Complainant argues that the disputed domain name being nearly identical to the trade name the Complainant relies on carries a high risk of implied affiliation with the Complainant, while there is no legitimate non-commercial or fair use of disputed domain name. In addition, the Complainant asserts that the disputed domain name does not represent a bona fide offering of goods and services as the related website falsely poses as an official online shop for “SKY ECC” products that is operated by the Complainant. According to the Complainant, orders submitted and paid through the website were not fulfilled, and tarnished the Complainant’s reputation. Consequently, the Complainant considers the use of the disputed domain name to be in bad faith. B. Respondent The Respondent did not reply formally to the Complainant’s contentions. The Respondent did, however, send some emails to the Center on March 17, 2021 instead, stating “There is no skyglobal.com or skyecc.com. Please have a look at their websites. We have removed the data from the domain also” and “We are not using [the disputed domain name]. Domains are offline. We already were in a deal to sell. But everybody at HQ is arrested”. The Respondent also sent an email on May 7, 2021, “First of all. I contacted you, I have told you the SKYECC company that disputed this matter no longer exist and is seized by FBI! There is no case against me by them as there is nobody to back it up. Nonetheless I’m waiting until this domain will expire and I will not renew it. Do not waste any of my and your time. The CEO and other important figures are awaiting their jail sentences. And it will be a long time”. 6. Discussion and Findings In order to succeed in its Complaint, the Complainant is required under paragraph B(11)(d)(1) of the ADR Rules to demonstrate the following: (i) The disputed domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or European Union law and; either (ii) the disputed domain name has been registered by the Respondent without rights or legitimate interests in the disputed domain name; or (iii) the disputed domain name has been registered or is being used in bad faith. A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or European Union law The first step of the requirements of paragraph B(11)(d)(1)(i) of the ADR rules is that the Complainant shows that it has a name in respect of which a right is recognized or established by the national law of a Member State and/or European Union law. The Panel understands that the Complainant put forward that it has been known under the name “SKY ECC” for at least four years in the Netherlands, so that it can rely on a trade name as meant in Article 1 of the Dutch Trade Name Act. This was not disputed by the Respondent. Although the Panel is of the opinion that the Complainant’s submission of prints from its website primarily shows that the term “SKY ECC” was used as a mark to distinguish the Complainant’s platform and products, it cannot exclude that the Complainant has been using the term “SKY ECC” as a trade name as well. Consequently and expressly in absence of a Response refuting such claim, the Panel shall consider the Complainant owning a trade name “SKY ECC” under the Dutch Trade Name Act. The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade name SKY ECC as the disputed domain name comprises of the trade name in its entirety, except for the space between the two elements of the trade came cannot be represented in a domain name for technical reasons so that this does not take away the high level of similarity between the trade name and the disputed domain name. Consequently, the Panel finds that the Complainant has satisfied the requirement of the first element of paragraph B(11)(d)(1) of the ADR rules. B. Rights or Legitimate Interests While this element needs no discussion in view of the Panel’s findings under paragraph 6.C below, as paragraph B(11)(d)(1) of the ADR Rules considers it sufficient that either the second or third element is met, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to come forward with convincing elements to establish rights or legitimate interests, and the Complainant is deemed to have satisfied the second element of the ADR Rules.> C. Registered or Used in Bad Faith The Complainant admits that the Respondent, at the time of registration of the disputed domain name, had a business relationship with one of the Complainant’s authorized distributors of “SKY ECC” products, from which the Panel infers that the Respondent had possibly registered the disputed domain name with a legitimate interest in the name. However, the Respondent has not disputed that such relationship had been terminated following certain unprofessional conduct by the Respondent, and that the Complainant and the Respondent are not and have never been parties to a distribution agreement or other direct business arrangement. The Respondent did also not refute the Complainant’s allegation that the disputed domain name, after said termination of the business relationship with one of the Complainant’s authorized distributors, resolved to a website which showed the Complainants SKY ECC logo. In case of the Respondent using the disputed domain name to (re)sell the Complainant’s products it is standard case law that the principles from Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 mutually apply to the procedure under the ADR Rules (e.g. Schleich GmbH v. P. Schellens, Cosch BV,WIPO Case No. DEU2017-0005 and Helinox Inc. and Helinox Europe B.V. v. Helinox Development,WIPO Case No. DEU2018-0001). These principles provide that a reseller or distributor can make a bona fide offering of goods and services and have a legitimate interest in a domain name, provided that: (a) such use involves the actual offering of goods and services in issue; (b) the website sells only the trademarked goods; (c) the website site accurately and prominently discloses the registrant’s relationship with the trademark holder; and (d) the Respondent must not try to “corner the market” in domain names that reflect the trademark. In absence of a Response, the Panel applied the Oki Data principles on the basis of the Complainant’s submission of screen prints of the Respondent’s website under the disputed domain name. These screen prints show that the Respondent did not meet the requirements under (c) as the Respondent’s relationship with the Complainant has not been disclosed, and the website, which inter alia, operates and web shop and attempts to recruit resellers for the Complainant’s products, rather gives the false impression that it is the Complainant’s official website. The Panel is therefore satisfied that the Respondent intentionally used the disputed domain name to attract Internet users for commercial gain to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trade name as meant in paragraph B(11)(f)(4) of the ADR rules, and that the Respondent accordingly used disputed domain name in bad faith. Consequently, the Panel finds that the Complainant met the requirement of the third element of paragraph B(11)(d)(1) of the ADR rules. 7. Decision For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name Alfred Meijboom 1 As the Complainant is not established in the European Union, it does not satisfy the general eligibility criteria set out in Article 4(2(b) of Regulation (EC) No. 733/2002 as amended by Article 20 of Regulation (EU) No. 2019/517. However the Complainant has not sought to satisfy the eligibility criteria and simply seeks revocation of the disputed domain name, which allows revocation of the disputed domain name. 2 The decision shall be implemented by the Registry within thirty (30) days after the notification of the decision to the Parties, unless the Respondent initiates court proceedings in a Mutual Jurisdiction, as defined in Paragraph A(1) of the ADR Rules.
Sole Panelist
Date: May 27, 2021
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