Complainant is Mascot International A/S of Silkeborg, Denmark, represented by Bech-Bruun Law Firm, Denmark.
Respondent is Johannes Christiaan van Leeuwen of Barendrecht, the Netherlands, represented by Mr. Frank van der Loos. 2. The Domain Name and Registrar
The disputed domain name , hereafter the “Domain Name”, is registered with SIDN through AAAAA Domein Registratie. The Domain Name has first been registered on October 31, 2001. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2014. On November 28, 2014, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain name. On December 2, 2015, 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 December 11, 2014. In accordance with the Regulations, article 7.1, the due date for Response was December 31, 2014. The Response was filed with the Center on December 30, 2014.
On January 5, 2015 SIDN commenced the mediation process. On February 13, 2015 SIDN extended the mediation process until March 2, 2015. On March 9, 2015 SIDN informed parties that the dispute had not been solved in the mediation process.
On March 10, 2015 Complainant replied to the Response. Respondent replied thereto on March 12, 2015. In the circumstances of the case, the Panel admits both submissions.
The Center appointed Richard C.K. van Oerle as the panelist in this matter on March 19, 2015. 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 is a Danish company. According to the Complaint it is one of the leading developers and manufacturers of high quality work wear, which is exported to most of the world.
Complainant has registered the trademark MASCOT in several jurisdictions, including the Benelux and as Community trademark (hereafter “CTM”). In the Benelux Complainant filed the application on January 18, 1989, for goods in class 25; the mark was registered, registration no. 0457763. It concerns a figurative mark in which the word MASCOT is written in a special script:
Complainant filed a wordmark as CTM, for goods in classes 9 and 25, application date October 29, 2001, registration date March 3, 2004, registration no. 002429587. The trademarks will be referred to hereunder as “the Trademark”.
The Domain Name was first registered on October 31, 2001. Respondent, an individual, acquired the Domain Name on October 7, 2014, by change of registrant.
The Domain Name resolved to a default page at the time of filing of the Complaint. 5. Parties’ Contentions A. Complainant
Complainant contends that the Domain Name must be considered to be identical with Complainant’s well-known Trademark, as the Domain Name only consists of Complainant’s Trademark and the generic Top-Level Domain “.nl”.
Complainant submits that Respondent has no rights or legitimate interest in respect of the disputed domain name. Respondent owns no trademark that reflects the Domain Name and nothing in the records suggest that Respondent is commonly known by the Domain Name.
Complainant’s Benelux registration of its Trademark predates Respondent’s registration of the Domain Name. The mere registration of a domain name does not establish rights or legitimate interest in that name. No fair or noncommercial use or bona fide offering of goods exists here. Nor is it used for bona fide trade practices. The Domain Name is currently inactive and therefore not associated with any activities undertaken by Respondent, which evidences that Respondent does not have any real interest in the Domain Name. Complainant has not licensed or otherwise permitted Respondent to use its Trademark, or to apply for any domain name consisting of or incorporating the Trademark. There is no business relationship between Complainant and Respondent.
Complainant submits that the Domain Name has been registered in bad faith. Respondent’s lack of any active use of the Domain Name to resolve to an active website without any active attempt to sell or to contact Complainant does as such not prevent a finding of bad faith. Complainant’s Trademark is well-known. The Domain Name was registered on October 31, 2001. Complainant applied for its Benelux trademark 1989, several years therefore prior to the registration of the Domain Name. Complainant applied for the CTM on October 29, 2001, which is also before the Domain Name was registered.
It is therefore unlikely that Respondent was not aware of the Trademark when it registered the Domain Name. Respondent does not have a right to use the Domain Name that is identical to Complainant’s Trademark. Further Respondents bad faith is supported by the fact that Respondent has not responded to the cease and desist letter sent by Complainant. Based on the above, the registration and the use of the disputed name are undoubtedly made in bad faith.
Complainant has submitted, in answer to the Response, that Respondent states that he purchased the Domain Name on November 28, 2014. Complainant submits a transcript from the WhoIs-database dated November 24, 2014, in which Respondent is listed as the owner of the Domain Name. Thus the alleged purchase date should not be taken into account. The Domain Name has not been used by Respondent before filing of the Complaint on November 28, 2014. The current use of the Domain Name is very limited since the webpage allegedly is under reconstruction. The webpage was first put to use after the Complaint was filed and after December 17, 2014. Complainant submits a transcript from the WaybackMachine dated March 10, 2015, showing use of the Domain Name providing information about a computer program. This indicates that Respondent falsely tries to obtain a legitimate ground of use. This enhances the assumption, that Respondent has no legitimate interest in the Domain Name and that it has been registered in bad faith. B. Respondent
Respondent replied to Complainant’s contentions.
Respondent stated – in brief – that according to trademark law the use of the word ‘mascot’ as Domain Name is allowed.
Respondent acquired the Domain Name on November 28, 2014 and he is planning to build a site for sport mascots. Respondent further states: “One of respondents [sic] hobbies is collecting sport mascots and images thereof. The Dutch equivalent to the name ‘mascot’ is ‘mascotte’, but that name was already registered by a company that sells cigarette paper. The name ‘demascotte’ was already in use with a club of ‘Rolls Royce’ riders and owners. Therefore the English name is a good alternative.”
MASCOT is a weak brand and therefore less protected than a unique name. Complainant only filed the Trademark for clothing and at least 6 other registered MASCOT-trademarks exist.
The Respondent submits that the Trademark has been filed by Complainant well before the registration of the Domain Name, which shows that Complainant did not care about the Domain Name.
The development of the website is put on hold during this procedure.
Respondent, in reply to the supplemental submission of Complainant, answered that trademarks can coexist if the designated good/services are not similar. It is a first come, first serve principle and there are older Benelux registrations for identical marks. 6. Discussion and Findings
The Panel will apply the Regulations; neither national nor European trademark law is applicable. Respondent’s references made to national or European trademark law are therefore irrelevant to this matter.
Based on article 2.1 of the Regulations, a request to transfer a domain name must meet three cumulative conditions:
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 by means of article 2.1(a) under II of the Regulations; and
b. the respondent 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 conditions, the Panel rules as follows: A. Identical or Confusingly Similar
Complainant has based its Complaint on a Benelux trademark as well as a CTM and has submitted copies of the registrations demonstrating that Complainant is the holder of the Trademark. Both the Benelux trademark and the CTM qualify as trademarks protected under Dutch law.
With regard to the identity or confusing similarity between the Domain Name and the Trademark, the Panel rules as follows. The Domain Name incorporates the entireword mark MASCOT. MASCOT is also the dominant element in the word/device Benelux mark MASCOT. It is settled case law under the Regulations 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.1
The Panel finds that the Domain Name is confusingly similar to 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
It follows from both the Complaint and the Response that Respondent was not and is not commonly known by the Domain Name. The record further does not include any indication that Respondent has any relevant trademark or trade name rights regarding the term “mascot”. Although Respondent claims to have the intention to start using the Domain Name in the future for purposes of a website for sport mascots, Respondent has not provided any credible evidence of demonstrable preparations to such use of the Domain Name. The Domain Name has never actually been used by Respondent before the cease and desist letter. Only recently a (basic) website, referring to mascots, has been created. Furthermore it is somewhat remarkable that such a descriptive English word is used for a .nl-domain name.
Absent any contrary evidence from Respondent, its passive holding of the Domain Name does not constitute a legitimate noncommercial use of the Domain Name.2 The Response does not show that Respondent has any rights to or legitimate interests in the Domain Name, whereas the Complaint plausibly establishes the contrary.
Based on the foregoing, the Panel finds that Respondent has no rights to or legitimate interests in the Domain Name. C. Registered or Used in Bad Faith
The registrations and use of Complainant’s Trademark predate the registration of the Domain Name by many years. Complainant’s trademark rights date back to 1989 and it has not been contested that the Trademark is well-known. This leads the Panelist to conclude that Respondent c.q. his legal predecessor most likely was aware of the Trademark when registering the Domain Name.
The apparent lack of any active use prior to the filing of the Complaint (i.e., for the Domain Name to resolve to an active website) of the Domain Name without any active attempt to sell or to contact the trademark holder (so-called ‘passive holding’ by Respondent) does not as such prevent a finding of bad faith. On the contrary, the specific cumulative circumstances in this case in which the Domain Name is identical to the (undisputedly well-known) Trademark of Complainant and in which Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by him of the Domain Name, are indicative of bad faith on the part of Respondent in his registration and/or use of the Domain Name.
In addition, the lack of any response by Respondent to the cease and desist letter sent to him by Complainant, as well as the materially incorrect reference to the day he acquired the Domain Name, are further circumstances suggesting bad faith on the part of Respondent.
On the above grounds, the Panel finds that the requirements of registration or use in bad faith of the Domain Name are met.
Therefore, the Panelist finds that 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 Complainant.
Richard C.K. van Oerle
Panelist
Date: April 1, 2015
1 Altro Limited v. Handelsonderneming H.M.S. B.V.,WIPO Case No. DNL2012-0047.
2 Teachers Insurance and Annuity Association of America v. Wreaks Communications Group,WIPO Case No. D2006-0483.
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