The Complainant is Grupo Mikalor, S.L. of Sabadell, Spain, represented by Sugrañes, S.L., Spain.
The Respondent is IQ-Parts of Nieuw-Vennep, the Netherlands. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with SIDN through Flexwebhosting BV. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2013. On October 18, 2013, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On October 21, 2013, 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 the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of The Complaint, and the proceedings commenced on October 24, 2013. In accordance with the Regulations, article 7.1, the due date for Response was November 13, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 14, 2013.
The Center appointed Richard C.K. van Oerle as the panelist in this matter on November 21, 2013. 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 the Compliance with the Regulations, article 9.2.
After reviewing the case file, the Panel issued the Administrative Panel Procedural Order No. 1 (the “Procedural Order”) on November 22, 2013, inviting the Complainant to submit certain further information and inviting the Respondent to submit a reply. On November 26, 2013, the Complainant responded to the Procedural Order. No submission from the Respondent was received in reply to the Complainant’s submission of November 26, 2013.
On December 11, 2013, the Center informed the parties that the revised due date for the Decision in this case would be December 16, 2013, ultimately leading to the present date of the Decision. 4. Factual Background
The Complaint is based on, inter alia, Community trademark number 002036358, registered January 30, 2002, for the device mark MIKALOR, for goods and services in classes 6, 17, and 20 (hereafter the “Trademark”).
The Domain Name was registered on July 11, 2003. 5. Parties’ Contentions A. The Complainant
The Complainant uses the Trademark to identify the Complainant’s main products: metal fasteners, clips, nuts and hose clamps.
The Respondent is a distributor of the Complainant. However the Respondent does not have any exclusivity for the distribution in the Netherlands and there are other distributors of the Complainant within the Netherlands. The Complainant has never authorized the Respondent to register the Domain Name. The Domain Name was registered by the Respondent in 2003, so after the registration of the Trademark. The Respondent is clearly taking advantage of the reputation of the Trademark. Therefore the Respondent has no rights or legitimate interests in the Domain Name.
The Domain Name was registered and is being used in bad faith. The Complainant has tried to purchase the Domain Name via its registrar. The Respondent confirmed that the Domain Name was for sale but only if the amount of the offer was of five digits. This demonstrates that the intention of the Respondent is clearly to sell the Domain Name for valuable consideration in excess to documented out-of-pocket costs directly related to the Domain Name.
The Domain Name has been registered in order to prevent the Complainant from using it. The Respondent is a non-exclusive distributor in the Netherlands of the Complainant and it is clear that the aim of the registration of the Domain Name is to take advantage in the Dutch market over the Complainant as well as other distributors, who also sell their goods in this territory. The goods sold through the website under the Domain Name are exactly the same as the goods sold through the websites of the Complainant.
The Domain Name has been or is being used for commercial gain, by attracting Internet users to a website of the Respondent causing confusion as to, the source, sponsorship, affiliation or endorsement of the website.
In its submission in reply to the Procedural Order the Complainant further states that lack of rights and legitimate interests in the Domain Name of the Respondent is also proven by the absence of a response to the Complaint.
The Respondent as a company is not commonly known by the Domain Name as Respondent’s company is presented as IQ-Parts.
The Respondent, via its website, does not only sell goods originating from the Complainant. The Respondent also promotes and sells goods that are in direct competition with the Complainant’s products. The Complainant submits that printouts of the website “www.” show that the Respondent is promoting the Complainant’s clamps under the trademark MIKALOR as well as clamps from direct competitors of the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The fact that the Respondent did not file a response, does not mean that the requested remedy should automatically be awarded. The Panel will have to determine whether the 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; Société Air France v. Helo Holdings LTD,WIPO Case No. DNL2010-0082; and Nutri-Akt B.V. v. Edoco LTD,WIPO Case No. DNL2011-0003).
Based on article 2.1 of the Regulations, a claim to transfer a domain name must meet three cumulative requirements:
a. the domain name is identical or confusingly similar to a trademark, or trade name, protected under Dutch law in which the complainant has rights, or other name mentioned in article 2.1(a) sub II of the Regulations; and
b. the registrant has no rights to or legitimate interests in the domain name; and
c. the domain name has been registered or is being used in bad faith.
Considering these requirements, the Panel rules as follows. A. Identical or Confusingly Similar
The Complainant has established that it owns the Trademark.
It is established case law that the top-level domain “.nl” may be disregarded in assessing the similarity between the relevant trademark on the one hand, and the domain name on the other hand (see: Taylor Made Golf Company, Inc. v. Lotom Group S.A.,WIPO Case No. DNL2010-0067; Roompot Recreatie Beheer B.V. v. Edoco LTD,WIPO Case No. DNL2008-0008).
The Domain Name incorporates the entirety of the textual components of the Trademark.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s Trademark within the meaning of article 2.1(a) of the Regulations. Therefore the first requirement is met. B. Rights or Legitimate Interests
Many UDRP panels have taken the view that normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.3). Frequently these are referred to as the Oki Data principles (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). The Oki Data decision has been rendered under the Uniform Domain Name Dispute Resolution Policy (UDRP) and has been confirmed to be of relevance for the Regulations, inter alia, in Seiko EPSON Corporation v. ANEM Computers / ANEM,WIPO Case No. DNL2010-0024; Maison Louis Latour v. Jos Beeres Wijnkoperij, WIPO Case No. DNL2011-0074; and recently Bayerische Motoren Werke Aktiengesellschaft v. Quispel Motoren, WIPO Case No. DNL2013-0026.
In this case, the core question is whether the Respondent is using the website under the Domain Name to sell only the trademarked goods. The Panel has reviewed the screenshots provided by the Complainant. These screenshots are however not screenshots of the website under the Domain Name, but of
“”.
The Panel has also reviewed the current version of the website under the Domain Name. On the homepage only goods produced by the Complainant are offered. Furthermore, on the homepage the Respondent states that it is “official importer of Mikalor hose clamps” (in Dutch: “IQ-Parts is officieel importeur van Mikalor slangklemmen”).
On top of the homepage there are three links (in Dutch): web shop, news and contact. The link to the web shop redirects the visitor to a page on the website of the Respondent under the domain name
.
This page shows various products of the Complainant and on the left hand side a column allowing a visitor to select products similar to those of the Complainant but made by competitors of the Complainant.
The Panel is of the view that by doing this, it cannot be said that the Respondent is using the website under the Domain Name to only sell the trademarked goods. The website makes it relatively easy for users to switch to another product than the Complainant’s.
The Respondent is thus using the Domain Name incorporating the Trademark to also divert Internet users to competing offers. The Panel therefore finds that the Respondent cannot be said to have rights to or legitimate interests in the Domain Name.
The Complainant has thus established the second element of article 2.1 of the Regulations. C. Registered or Used in Bad Faith
The Panel refers to its considerations under 6.B above.
The Panel finds that the Domain Name is being used by the Respondent for commercial gain by intentionally attracting Internet users to its website where the Respondent is also offering goods of the Complainant’s competitors, through trading off the goodwill of the Trademark and the likelihood of confusion which may arise with the Trademark as to the source, sponsorship and endorsement of the website. This constitutes evidence of bad faith registration and use in accordance with article 3.2(d) of the Regulations.
Therefore, the Panel finds that the Complainant has also established the third element of article 2.1 of the Regulations. 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 the Complainant.
Richard C.K. van Oerle
Panelist
Date: December 13, 2013.
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