WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pieter de Haan v. Orville Smith Ltd.
Case No. DNL2008-0017
1. The Parties
The Complainant is Mr. Pieter de Haan, the Netherlands, represented by Shield Mark B.V., the Netherlands.
The Respondent is Orville Smith Ltd., France.
2. The Domain Name
The disputed domain name (hereinafter the “Domain Name”) is registered with SIDN.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2008. On May 30, 2008, the Center transmitted by email to SIDN a request for registration verification in connection with the domain name at issue. On June 2, 2008, SIDN 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 Dispute Resolution Regulations for .nl Domain Names (the “Regulations”). In accordance with article 16 of the Regulations, the Center provisionally decided that the procedure could continue in the English language.
In accordance with the Regulations, articles 5.1 and 15.5, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 3, 2008. In accordance with the Regulations, article 7.1, the due date for Response was June 23, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 24, 2008.
The Center appointed Alfred Meijboom as the panelist in this matter on June 25, 2008. The Panelist finds that the he was properly appointed. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 8.2.
4. Factual Background
The Complainant, Pieter de Haan, is a natural person. He holds a Benelux trademark registration with no. 799946 for the device mark AMSTERDAM INTERNATIONAL FASHION WEEK.
Furthermore, the Complainant is the only administrator of the Dutch company Amsterdam International Fashion Week B.V., which company holds the domain name . The website under this domain name offers information on the yearly fashion event Amsterdam International Fashion Week, in short also referred to as Amsterdam Fashion Week.
The Domain Name was registered on August 17, 2005. At first, the Domain Name was registered in the name of the Amsterdam located company Internet Reit. After the Complainant had sent Internet Reit a cease and desist letter on January 11, 2008, the Domain Name was transferred to the Respondent on May 21, 2008. The Domain Name currently resolves to a website that generates a page of links to other, mostly fashion related, websites.
5. Parties’ Contentions
A. Complainant
The Complainant has claimed to hold rights in the following trademark / trade names:
- the Benelux trademark registration with no. 799946 for the device mark AMSTERDAM INTERNATIONAL FASHION WEEK;
- trade name rights protected under Dutch law for AMSTERDAM INTERNATIONAL FASHION WEEK;
- trade name rights protected under Dutch law for AMSTERDAM FASHION WEEK.
Although not expressly mentioned in the Complaint, the Panelist assumes that the Complainant implied to contend that the Domain Name is identical or confusingly similar to the rights claimed.
Furthermore, the Complainant has asserted that the Respondent has no rights or legitimate interests in the Domain Name, since the website only contains sponsored links to other, mostly Dutch, websites, while the Respondent is located in France. Therefore, the Respondent obviously takes unfair advantage of the repute of the Complainant’s trademark and trade name. Moreover, it seems impossible to retrieve information on the Respondent via Google.
Lastly, the Complainant has put forward that the Domain Name has been registered and is being used in bad faith. The Domain Name is used for a website that only contains sponsored links to other websites, most of them Dutch. Furthermore, at first the Domain Name was registered in the name of the Amsterdam located company Internet Reit. After the Complainant had sent Internet Reit a cease and desist letter on January 11, 2008, the Domain Name was transferred to the Respondent on May 21, 2008.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Language of proceedings
The Complainant filed the Complaint in the English language without providing the reason why it was not filed in the Dutch language, which would have been expected pursuant to the basic presumption of the Regulations, article 16 (AB Electrolux v. Marcel Vlaar;WIPO Case No. DNL2008-0005). As the Respondent is a Ltd., it should be expected to understand English, so that Respondent’s right of defense was not prejudiced by the choice of English as the language of the procedure. The Panel therefore affirms the provisional decision of the Center that the language of the procedure is English.
Article 7.4 of the Regulations provides that, in the event that a respondent fails to submit a response, the complaint shall be granted, unless the Panel considers it to be without basis in law or in fact.
According to article 2.1 of the Regulations, the requested remedy shall be granted if the Complainant asserts and establishes each of the following:
“a. that the Domain Name is identical or confusingly similar to
I. a trademark, or trade name, protected under Dutch law in which the Complainant has rights;
II. a personal name registered in a Dutch municipal register of persons (“gemeentelijke basisadministratie”), or a name of a Dutch public legal entity or a name of an association or foundation located in the Netherlands under which the Complainant undertakes public activities on a permanent basis; and
b. that the Respondent has no rights to or legitimate interests in the Domain Name; and
c. that the Domain Name has been registered or is being used in bad faith.”
A. Identical or Confusingly Similar
The Complainant holds the Benelux trademark registration with no. 799946 for the device mark AMSTERDAM INTERNATIONAL FASHION WEEK. Therefore, the Panelist finds that the Complainant has rights in the AMSTERDAM INTERNATIONAL FASHION WEEK device mark protected under Dutch law.
However, the claimed rights in the trade names AMSTERDAM INTERNATIONAL FASHION WEEK and AMSTERDAM FASHION WEEK protected under Dutch law do not vest in the administrator of the company trading under these names, but vest in the company itself, which is not a complainant in these proceedings. Therefore, the Panelist finds that the Complainant does not hold rights as claimed in said trade names.
For the purpose of assessing whether the Domain Name is identical or confusingly similar to the AMSTERDAM INTERNATIONAL FASHION WEEK device mark in which the Complainant has rights, the “.nl” suffix is disregarded, it being a necessary component for registration and use of a domain name. Furthermore, the words AMSTERDAM INTERNATIONAL FASHION WEEK in the trademark are dominant and the only difference between this dominant part and the Domain Name is that the word “international” has been left out. Since the trademark AMSTERDAM INTERNATIONAL FASHION WEEK is used for to the so called yearly fashion event in Amsterdam, which is also shortened to “Amsterdam Fashion Week”, the Panelist is of the opinion that the omission of the word “international” does not reduce the likelihood of confusion. Therefore, the Panelist finds the Domain Name to be confusingly similar to the Complainant’s AMSTERDAM INTERNATIONAL FASHION WEEK trademark.
B. Rights or Legitimate Interests
According to article 2.1(b) of the Regulations the Complainant must demonstrate that the Respondent has no rights or legitimate interests in the Domain Name. This condition is met if the Complainant makes a prima facie case that the Respondent has no rights or legitimate interests, and the Respondent fails to rebut that showing by providing evidence of for example any of the three circumstances mentioned in article 3.1 of the Regulations.
The Complainant has put forward that the Respondent by using the Domain Name for commercial gain, takes unfair advantage of the repute of his trademark and the Respondent did not dispute the Complainant’s claim to that effect. Nor could the Panelist establish any indications that the Respondent is commonly known by the Domain Name or, before having any notice of the dispute, made demonstrable preparations to use the Domain Name in connections with a bona fide offering of goods or services. For these reasons, the Panelist finds that the Respondent has no rights to or legitimate interests in the Domain Name
C. Registered or Used in Bad Faith
Article 2.1(c) of the Regulations provides that the Domain Name has been registered or is being used in bad faith.
Article 3.2(d) of the Regulations mentions that the following circumstances could provide evidence that the Domain Name is being used in bad faith. The Domain Name is being used for commercial gain, by attracting internet users to the Respondent’s website through the likelihood of confusion which may arise with the trademark as to, for example, the source, sponsorship, affiliation or endorsement of the website or of products and services on the website.
Given the fact that the Respondent has not submitted a Response and thus has not refuted the Complainant’s contentions, the Panelist, on the basis of the evidence submitted by the Complainant, although limited, is narrowly satisfied that the Complainant’s trademark AMSTERDAM INTERNATIONAL FASHION WEEK is known in the fashion branch in the Netherlands. Furthermore, the Domain Name has a “.nl” suffix, the website is in Dutch and is therefore directed at a Dutch audience. The website contains various links to fashion related websites, which use should be considered to be commercial. As concluded under A. the Panelist is of the opinion that the Domain Name is confusingly similar to the Complainant’s trademark. Taking into account all circumstances of this case, the Panelist finds that the requirements of article 3.2.(d) of the Regulations have been met. Consequently, the Panelist is of the opinion that the Domain Name is being used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with articles 1 and 13 of the Regulations, the Panel orders that the domain name, be transferred to the Complainant.
Alfred Meijboom
Sole Panelist
Dated: July 3, 2008
Full & Egal Universal Law Academy