Complainant is Leidse Onderwijsinstellingen B.V. of Leiderdorp, the Netherlands, represented by Merkenbureau Abcor BV, the Netherlands.
Respondent is Edoco LTD. of Stockport, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with SIDN through SiS Sieberer EDV. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2011. On February 24, 2011, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On that same day, SIDN submitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details of Respondent. 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 24, 2011. In accordance with the Regulations, article 7.1, the due date for the Response was March 16, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 17, 2011.
On March 30, 2011, the Center appointed Richard C.K. van Oerle as the Panel in this matter. 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
The Panel will proceed on the facts as stated by Complainant, and not contested by Respondent. Furthermore, the Panel will assess the information provided by the Center and by SIDN.
Parties
Complainant is an educational institution, founded in 1941 offering studies (since 1943) at different levels.
Respondent is, according to the SIDN register, established in Stockport, United Kingdom of Great Britain and Northern Ireland. From the case documents, the activities of Respondent remain unknown.
Domain Name
The first date of registration of the Domain Name is June 28, 2007. The date of the current registration (by Respondent) is December 31, 2009, through a new registration.
Trademarks
Complainant is the proprietor of the following Benelux trademarks:
- Word mark LOI, applied for on January 5, 1987, and registered under number 150371 (which registration was published on May 1, 1987) for the following services:
Cl 41: Education, courses by correspondence.
- Word and device mark LOI KIDZZ, applied for on August 21, 2006, registered on November 7, 2006, under number 807410, registered for the following goods and services:
Cl 9: Audio and video tapes, discs and other audio and video media;
Cl 16: Periodicals, magazines, books, courses and other printed matter, instructional and teaching material (except apparatus);
Cl 41: Education, provision of training and courses, whether by correspondence, publishing and distributing of educational material; organizing educational meetings.
- Word mark LOI KIDZZ, applied for on October 20, 2008, registered on January 12, 2009, under number 852381, registered for the following goods and services:
Cl 9: Audio and video tapes, discs and other audio and video media.
Cl 16: Periodicals, magazines, books, courses and other printed matter, instructional and teaching material (except apparatus).
Cl 41: Education, provision of training and courses, whether by correspondence, publishing and distributing of educational material; organizing educational meetings.
Use of the Domain Name
The Domain Name currently redirects to the website “/”. This website contains links on its home page. By clicking on these links Internet users are directed to secondary pages on the website featuring pay-per-click (“PPC”) advertising. This advertising links to third party websites. 5. Parties’ Contentions A. Complainant
First, Complainant contents that it is entitled to the above-mentioned trademarks. The mark LOI was used since 1941 and has become a famous mark in the Netherlands. LOIKIDZZ is also widely used since 2005 and well-known in The Netherlands. Complainant has registered and uses the domain name .
Complainant further contents that the Domain Name is confusingly similar to its LOI trademark as well as nearly identical to its LOIKIDZZ trademarks. The Domain Name is confusingly similar to Complainant’s domain name, which Complainant uses to participate in economic life.
As the Domain Name is nearly identical to the LOIKIDZZ trademark, the Domain Name is a typical case of typo-squatting.
Second, Complainant alleges that Respondent has no rights to or legitimate interests in the Domain Name. Respondent is not authorized by Complainant to use the LOI designation, nor the LOIKIDZZ designation. No such trade mark rights in the name of Respondent exist in the Benelux. Respondent is not publicly known by the name Loi or Loikidz, but by Edoco.
Third, Complainant alleges that the Domain Name was registered by Respondent in bad faith and that Respondent uses the Domain Name in bad faith. The Domain name was registered well beyond the dates on which Complainant obtained trademark rights both in LOI (which was at that date already a famous mark in the Netherlands) as well as LOIKIDZZ.
The use of the contested trademark is also in bad faith. The Domain Name is forwarded to a pay-per-click website that contains links to (amongst others) websites offering goods and services that are closely related to or directly competitive to the goods and services offered under Complainant’s trademark. The Domain Name is not constituted of descriptive elements, but only based on the trademark value and therefore the use of the Domain Name is in bad faith. Use of a portal including links to websites to Complainant’s competitors is not a bona fide offering, but rather one which seeks to profit from confusion with Complainant. Moreover Respondent is a serial cyber-squatter with no respect to the trademark rights of others. In many other cases Respondent was found to have registered and used other domain names in bad faith.
Complainant requests the Panel to decide that Complainant shall become the registrant of the Domain Name instead of Respondent. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Article 10.3 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 fact.
The Panel notes that Respondent has not filed a response. However, the Panel finds that this does not mean that the requested remedy should automatically be awarded. To give effect to article 10.3 of the Regulations, the Panel will have to determine whether Complainant’s case prima facie meets the requirements of article 2.1 of the Regulations (Taylor Made Golf Company, Inc. v. Lotom Group S.A.,WIPO Case No. DNL2010-0067 and Société Air France v. Helo Holdings LTD,WIPO Case No. DNL2010-0082).
Based on article 2.1 of the Regulations, a claim to transfer a domain name must meet three cumulative conditions:
1. The disputed domain name is identical or confusingly similar to a
(i) trademark or trade name protected under Dutch law, or
(ii) other name mentioned in article 2.1 sub a (II) of the Regulations;
2. The respondent has no rights to or legitimate interest in the disputed domain name;
3. The disputed domain name has been registered or is being used in bad faith.
Considering these conditions, the Panel rules as follows: A. Identical or Confusingly Similar
Numerous panels have found that a domain name that wholly incorporates a complainant’s registered mark may be sufficient to establish confusing similarity for the purpose of the Regulations. (See, e.g. Stichting VVV Groep Nederland v. C. Henriquez,WIPO Case No. DNL2008-0040).
The Domain Name incorporates Complainant’s mark LOI entirely.
Furthermore, the addition of the descriptive word “kidz” is insufficient to avoid confusion.
The Domain Name is nearly identical to Complainant’s mark LOIKIDZZ. It differs only by a single letter which in this case does not make any relevant difference.
Therefore, the Panel finds that the Domain Name is confusingly similar to Complainant’s trademarks within the meaning of article 2.1 sub a of the Regulations. Therefore the first criterion is met. B. Rights or Legitimate Interests
Pursuant to article 2.1 sub b of the Regulations, the complainant must demonstrate that the respondent has no rights to or legitimate interests in the Domain Name. This condition is met if the complainant makes at least a prima facie case that the respondent has no such rights or interests, and the respondent fails to rebut this. The complainant is then deemed to have satisfied the second criterion. (See for example Technische Unie B.V. and Otra Information Services v. Technology Services Ltd.,WIPO Case No. DNL2008-0002, Decho Corporation v. Backupsonline,WIPO Case No. DNL2009-0058 and Nutri-Akt B.V. v. Edoco LTD.,WIPO Case No. DNL2011-0003).
While the overall burden of proof is on Complainant, the element of possible rights or legitimate interests of Respondent in the Domain Name is in fact specifically within the knowledge of Respondent. This may put Complainant in the often impossible position of proving a negative. This should, as indicated correctly in Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121, be approached as follows: “the [c]omplainant makes the allegation and puts forward what he can in support of these allegations (e.g. he has rights to the name, the [r]espondent has no rights to the name of which he is aware, he has not given any permission to the [r]espondent)”. (Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110). Unless the allegation is manifestly misconceived, Respondent has to demonstrate his rights or legitimate interests in respect of the Domain Name under article 3.1 of the Regulations.
As Complainant alleges, and as the Panel’s review of the website to which the Domain Name resolves establishes, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services, nor has Respondent made a legitimate non-commercial or fair use of the Domain Name, without intent to commercial gain. Instead, it appears that Respondent, for commercial gain, has sought to confuse Internet users so that those users searching for Complainant's website will mistakenly reach a PPC website.
PPC websites are not per se legitimate or illegitimate; rather, the Panel must consider the nature of the domain name and the advertising on the website. If the links on a PPC website are exclusively based on the dictionary meaning of a domain name, that generally would be a fair use because there would be no trademark rights implicated by the PPC links. In contrast, if some of the links take advantage of the trademark value of the disputed domain name, then this would be an illegitimate use that trades on the goodwill of the trademark (Boris Johnson v. Belize Domain WhoIs Service Lt,WIPO Case No. D2010-1954).
Several of the listed links are directly competitive with Complainant’s activities; e.g. “Engels leren”. Because at least that link takes advantage of Complainant’s trademark rights, the Panel concludes that Respondent’s use is not a non-commercial fair use.
Complainant has not licensed or otherwise permitted Respondent to use the trademark or to apply for use of any domain name incorporating the trademark.
As Respondent has failed to file a Response or any other communication, it has not provided any evidence on its behalf. In the absence of such contradiction, the Panel did not establish any indications that any of the circumstances as described in article 3.1 of the Regulations apply, nor that Respondent has any rights to or legitimate interests in the Domain Name in any other way.
Considering all of the above, the Panel is of the opinion that there is nothing in the record that evidences Respondent’s rights to or legitimate interest in the Domain Name. The Panel does not find that Complainant’s claims come across unlawful or unfounded. The Complaint meets the second element of the Regulations. C. Registered or Used in Bad Faith
Although the first date of registration of the Domain Name is June 28, 2007, the relevant date for this decision is December 31, 2009, as this is the date on which Respondent filed the current registration (through a new registration). Therefore, the registration of the Domain Name took place after the registration of the trademarks that Complainant relies on.
The registration of the Domain Name also took place well beyond the dates on which Complainant first commenced using the trademarks in relation to the offering of education by correspondence to children/kids.
Based on these facts and taking into consideration that it was not contested that the trademark at issue is longstanding and well-known, the Panel deems it likely that Respondent was aware of Complainant’s trademarks when registering the Domain Name.
Under these circumstances, the Panel concludes that the Domain Name has been registered in bad faith.
Complainant relies also on use of the Domain Name in bad faith. The Domain Name currently redirects to the website “/”. As stated above, this PPC may - in the circumstances of this case - be considered to be used for commercial gain within the meaning of article 3.2 sub d of the Regulations. Respondent uses the Domain Name to attract Internet users through the likelihood of confusion which may arise with Complainants’ trademarks (Société Air France v. Helo Holdings LTD,WIPO Case No. DNL2010-0082, Delta Lloyd N.V. v. Lotom Group S.A.,WIPO Case No. DNL2010-0043 and Nutri-Akt b.v. v. Edoco LTD. supra).
The Panel also finds that Respondent engages in a pattern of such conduct, since it was involved as a Respondent in at least six previous .nl domain name disputes of a similar nature involving trademarks and/or trade names (Roompot Recreatie Beheer B.V.,WIPO Case No. DNL2008-0008; GGD Nederland v. Edoco LTD.,WIPO Case No. DNL2008-0015; De Stichting The Clash of the Coverbands v. Edoco Ltd.,WIPO Case No. DNL2009-0050; Fit!Vak v Edoco LTD.,WIPO Case No. DNL2010-0064, Boels Verhuur B.V. v. Edoco LTD.,WIPO Case No. DNL2010-0020, Nutri-Akt b.v. v. Edoco LTD., supra), in all of which cases it also chose not to file a response, in the absence of which conclusions similar to those in the present case have been drawn.
Given the above, the Panel holds that the Domain Name is being used in bad faith. The third criterion is therefore also met. 7. Decision
For all the foregoing reasons, and in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name be transferred to Complainant.
Richard van Oerle
Sole Panelist
Dated: April 5, 2011
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