Complainant is Rhodia Operations of Aubervilliers, France, represented by Nameshield, France.
Respondent is MG van Loo of Rotterdam, the Netherlands. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with SIDN through Realtime Register. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2011. On January 31, 2011, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On February 1, 2011, SIDN transmitted by email to the Center its verification response confirming that 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 the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 1, 2011. In accordance with the Regulations, article 7.1, the due date for Response was February 21, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 22, 2011.
The Center appointed Wolter Wefers Bettink as the Panel in this matter on March 2, 2011. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2. 4. Factual Background
Complainant forms part of the Rhodia group, which is a chemical company.
Complainant has submitted evidence of trademark rights of Rhodia SA and other companies of the group to which Complainant belongs.
The Domain Name has been registered by Respondent on August 11, 2010. The Domain Name directs to a parking page. 5. Parties’ Contentions A. Complainant
Complainant contends that the Domain Name is identical to the RHODIA trademarks.
Complainant claims that Respondent has no rights or legitimate interests in the Domain Name. Respondent has no relationship with Complainant’s business and Respondent is not authorized or licensed to use the RHODIA trademarks. Furthermore, Respondent is not known by the Domain Name. The use of the Domain Name for a parking page, does not constitute a bona fide offering of goods or services.
Complainant asserts that the Domain Name is registered and is being used in bad faith, because Respondent was aware of Complainant’s trademarks and the Domain Name is used for the purpose of misleading and diverting Internet traffic. B. Respondent
Respondent did not reply to Complainant’s contentions.
However, in an e-mail to Complainant dated January 27, 2011, Respondent wrote:
“Last year August I have reserved the two domain names and with the idea to start selling Rhodia writing pads and notebooks in the Dutch and Belgian market and/or to use these sites as a re-direct to (also owned by me) where I would sell these products and other design related brands. This is still work in progress though and I regard the whole idea mainly as a hobby at this stage as I want to learn more about webdesign and selling products online in general.
Just to make sure, the Rhodia products I was referring to have nothing to do with the (chemicals) company you’re representing.
In case the company you represent has interest in these who domain name [s], I am open to discuss a potential transfer, but obviously depending on the conditions as I strongly believe these two websites are an important asset for the business plan I currently have in mind.” 6. Discussion and Findings A. Identical or Confusingly Similar
Article 2.1, Regulations, requires that the domain name be identical or confusingly similar to a trademark or service mark protected under Dutch law “in which the complainant has rights”.
Complainant relies on RHODIA trademarks, which are registered in the name of Rhodia S.A and other companies of the group of which Complainant is a member.
It has been accepted in several decisions under the Uniform Domain Name Dispute Resolution Policy (the “UDRP”), to which the Regulations are similar, as well as the Regulations themselves, that a subsidiary or parent of the registered holder of a mark may be considered to have rights in that mark. See for example Miele, Inc. v. Absolute Air Cleaners and Purifiers, WIPO Case No. D2000-0756, where the complainant’s grand-parent corporation had a long established United States trademark registration for the mark for vacuum cleaners. “The Panel finds that the [c]omplainant, through its affiliation with its grandparent corporation which owns the trademark registration, has rights in and duties concerning the mark MIELE”. See also Komatsu Europe International N.V. v. Ivo van Soest, h.o.d.n. Smartlogic,WIPO Case No. DNL2009-0006.
The UDRP does not require that the complainant have exclusive rights in the trademark or service mark - see SMART DESIGN LLC v. CAROLYN HUGHES, WIPO Case No. D2000-0993 in which the panel stated:
“It is also abundantly clear from the evidence filed by the [r]espondent that there are literally dozens of other entities trading under and by reference to precisely the same name” and concluded: “In this [p]anel’s view the test under paragraph 4(a)(i) of the [UDRP], which makes no mention of “exclusive rights” is or ought to be a relatively easy test for a [c]omplainant to satisfy, its purpose simply being to ensure that [c]omplainant has a bona fide basis for making the [c]omplaint in the first place” (see Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington,WIPO Case No. D2003-0796).
Taking further into consideration that the relevant part of article 2.1 sub a of the Regulations (“in which the complainant has rights”) is identical to the wording of paragraph 4(a)(i) of the UDRP, the Panel is satisfied that Complainant has rights in the RHODIA trademarks, which are registered by companies of the Rhodia group.
The Panel concludes that the Domain Name is confusingly similar to the trademarks in which Complainant has rights. B. Rights or Legitimate Interests
Complainant claims that Respondent has no rights to or legitimate interest in the Domain Name. Respondent has no relationship with Complainant’s business and Respondent is not authorized or licensed to use the RHODIA trademarks. Furthermore, Respondent is not known by the Domain Name. Since no Response was filed, Respondent has not refuted these allegations.
Respondent has claimed in an email dated January 27, 2011, to Complainant, quoted under 5 above, which Complainant has submitted as evidence, that he registered the Domain Name with the intention to sell “Rhodia writing pads and notebooks” or to use the Domain Name “as a redirect” to a website on which he intended to offer such products. Leaving aside that this venture has apparently not yet materialized, the Panel notes a contradiction – to say the least – in that email where that Respondent initially claims this plan to be a hobby and later on in this context refers to a business plan, which seems to point to a commercial venture. Moreover, Respondent did not submit any evidence that he is actually selling Rhodia writing pads and notebooks.
In view of the above, the Panel concludes that Respondent has no right or legitimate interest in the Domain Name. C. Registered or Used in Bad Faith
The registrations of the RHODIA trademarks on which Complainant relies, predate the Domain Name registration by Respondent by up to sixty years, while the trademarks have been registered in various countries, inter alia the Benelux and France. Moreover, the panel in a UDRP case has concluded that the RHODIA trademark is a well-known mark. Based on these facts, the Panel deems it likely that Respondent was aware of Complainant’s trademarks when registering the Domain Name.
In these circumstances, it would not have been inappropriate to expect Respondent to verify whether Complainant had any rights to a name, confusingly similar to the Domain Name. Whether or not Respondent has actually done so, such rights could have easily been found in the appropriate registers, leading the Panel to conclude that under the circumstances of this case, Respondent at minimum turned a blind eye to Complainant’s rights.
Under these circumstances, the Panel concludes that the Domain Name has been registered in bad faith. 7. Decision
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name be transferred to Complainant.
Wolter Wefers Bettink
Sole Panelist
Dated: March 16, 2011
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