Complainant is Time Export A/S of Farsø, Denmark, represented by Gorrissen Federspiel, Denmark.
Respondent is Kraan- en Truck Service B.V. of Waddinxveen, the Netherlands. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with SIDN through AXC. 3. Procedural History
Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 3, 2016. On February 4, 2016, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain name. On February 4, 2016, 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 9, 2016. In accordance with the Regulations, article 7.1, the due date for Response was February 29, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 1, 2016.
On March 5, 2016, Respondent sent an email communication to the Center, stating: "Sorry, wij spreken Nederlands" ("Sorry, we speak Dutch"). The Centre responded in English as well as in Dutch noting that Complainant is neither residing nor registered in the Netherlands and that according to article 17.2 of the Regulations the language of proceedings in this case is English.
The Center appointed Richard C.K. van Oerle as the panelist in this matter on March 9, 2016. 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 produces aerial lifts which are sold under its trademark VERSALIFT.
Complainant is the proprietor of the word/figurative Community trademark registration, number 011974557, filed on July 11, 2013, registered for good and services in classes
7, 12, 35, 37 and 42 (further referred to as the "Trademark"):
Following the panel's decision in Time Export A/S, O'Flaherty Finance Corporation v. Kraan en Truck Service,WIPO Case No. DNL2013-0055, the domain name was transferred from Respondent to Complainant.
The Domain Name was registered on June 8, 2013 by Respondent. 5. Parties' Contentions A. Complainant
According to Complainant the Domain Name fully encompasses the Trademark, which is a worldwide known, famous brand in which an invaluable goodwill has been build.
Respondent is an importer of lifts of Complainant's competitors. The Complainant contends that Respondent has also been a minor distributor of its products in the Netherlands, but parties have not entered into a distribution agreement. In 2013, Complainant has established a subsidiary in the Netherlands which since then is the official distributor of TIME products.
Complainant has not given Respondent approval to register or use the Domain Name.
Complainant further states that the Domain Name is used as a portal to Respondent's website and therefore used in bad faith as its only purpose is to confuse customers searching the Internet for Complainant's products. No products under the Trademark are sold on the website which the Domain Name leads to.
Complainant refers to an earlier dispute with Respondent regarding the domain name , which was the subject of Time Export A/S, O'Flaherty Finance Corporation v. Kraan en Truck Service, supra. Complainant asserts that this shows that Respondent acts in a parasitic manner towards the goodwill and brand created by Complainant. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Noting that Complainant is neither residing nor registered in the Netherlands, the Panelist determines that English is the language of proceedings pursuant to article 17.2 of the Regulations.
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 in fact. However, the Panel also notes that this does not mean that the requested remedy should automatically be awarded. The Panel will have to determine whether Complainant's prima facie case 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, Altro Limited v. Handelsonderneming H.M.S. B.V.,WIPO Case No. DNL2012-0047). In this regard the Panel also refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") under paragraph 4.61:
The Panel notes that Respondent has not filed a response and shall therefore rule on the basis of the Complaint.
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
The country code Top-Level Domain ("ccTLD") ".nl" is typically disregarded under the confusing similarity test under the Regulations, since it is a technical registration requirement (see Roompot Recreatie Beheer B.V. v. Edoco LTD,WIPO Case No. DNL2008-0008 and Holland Van Gijzen Advocaten en Notarissen LLP v. Felix Schumacher,WIPO Case No. DNL2015-0065).
The Trademark is a combined word/figurative mark, featuring especially the word element "time". As a figurative part of a trademark cannot be translated into a domain name, such figurative element may be disregarded for the purpose of assessing identity or confusing similarity.
The Domain Name incorporates the entirety of the textual components of the Trademark with the addition of a purely descriptive term – in casu the geographical indication "nederland". The addition of a descriptive or generic term to a complainant's trademark is typically insufficient to prevent a finding of confusing similarity under the Regulations.
Therefore, the Panel finds that the Domain Name is confusingly similar to the Complainant's Trademark within the meaning of the Regulations and that the first requirement of article 2.1(a) of the Regulations is met. B. Rights or Legitimate Interests
There is no evidence in the available record that Respondent would be commonly known by the Domain Name. There is also no evidence that Respondent has any relevant trade name or trademark rights in the term "time".
Complainant has put forward that Respondent had no permission for the registration and use of the Domain Name and that the Domain Name redirects to Respondent's website where lifts of Complainant's competitors are offered for sale. The Panel notes that such use does not constitute a bona fide legitimate noncommercial or fair use of the Domain Name. Cf. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
As a result of its failure to submit a response, Respondent did not use the opportunity to show rights to or legitimate interests in the Domain Name. It may be assumed that Respondent was and is not commonly known by the Domain Name.
The Panel concludes that Complainant has made out a prima facie case that Respondent lacks rights to or legitimate interests in the Domain Name, which has not been rebutted by the Respondent, and that the second requirement of article 2(b) of the Regulations is met. C. Registered or Used in Bad Faith
Based on the uncontested assertion that there used to be commercial contact between Complainant and Respondent before Respondent registered the Domain Name, it is established that Respondent was aware of Complainant's activities and the Trademark used by Complainant at the time of registration by Respondent.
Furthermore the Domain Name is redirected to Respondent's website on which only products and services are offered that directly compete with the products Complainant offers under the Trademark. The Panel finds that Respondent has used the Domain Name for commercial gain, by attracting Internet users to its website through the likelihood of confusion which may arise with the trademark of Complainant. In accordance with article 3.2(d) of the Regulation, this is evidence that the Domain Name has been registered or is being used in bad faith
Based on the foregoing, noting again Respondent's failure to advance any evidence to the contrary, the Panel finds that the requirement of article 2.1(c) of the Regulations has been met. 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: March 18, 2016
1 While the Complaint is brought under the Regulations, and not the Uniform Domain Name Dispute Resolution Policy "UDRP"), given the similarities between the two, where applicable the Panel considers UDRP precedent relevant to the current proceedings, and will refer to it throughout.
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