The Complainant is Koninklijke KPN N.V. of The Hague, the Netherlands, internally represented.
The Respondent is Gaststaette Rasthaus of Winterfeld, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with SIDN through EuroDNS S.A. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2016. On September 29, 2016, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain name. On September 30, 2016, 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 3, 2016. In accordance with the Regulations, article 7.1, the due date for Response was October 23, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2016.
The Center appointed Tjeerd F.W. Overdijk as the panelist in this matter on November 4, 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
The Complainant is a leading telecommunication and ICT service provider in the Netherlands, and is the owner of the following trademarks:
- Benelux trademark KPN with registration number 0794003 of March 2, 1993 (Annex 4);
- European Union trademark KPN with registration number 005310099 of May 26, 2008 (Annex 5);
- Benelux figurative trademark KPN with registration number 1107268 of March 22, 2006 (Annex 6); and
- European Union figurative trademark KPN with registration number 0911242 of September 11, 2006 (Annex 7).
The abovementioned trademarks were registered for goods and services in classes 9 (telecom), 35 (advertising), 37 (installing of telecom), 38 (telecom, Internet access), 41 (education) and 42 (technical advice).
The Complainant furthermore owns the trade names “KPN B.V.” and “KPN winkel”.
The disputed domain name was registered by the Respondent on October 12, 2010. The disputed domain name resolves to a parking page website with pay-per-clicks links.
In a previous proceeding between the Parties, the panel ordered the transfer of the domain names and from the Respondent to the Complainant (Koninklijke KPN N.V. v. Gaststaette Rasthaus,WIPO Case No. DNL2016-0006).
The Complainant notified the Respondent on August 8 and 31, 2016 that the disputed domain name was infringing the Complainant’s trademark rights and requested the Respondent to transfer the disputed domain name to the Complainant. The Respondent did not respond to either of these notices. 5. Parties’ Contentions A. Complainant
The Complainant is the leading telecommunications and ICT service provider in the Netherlands, providing telecommunication services under the trade name KPN B.V. KPN is also a well-known trademark and trade name in the Netherlands.
The Complainant mainly bases its Complaint on the identical and/or confusing use in a domain name of the Complainant’s trademarks.
The Respondent was not authorized by the Complainant to register and/or use the disputed domain name. There is furthermore no evidence of the Respondent’s use of, or demonstrable preparation of use the disputed domain name in connection with a bona fide offering of goods or services.
Furthermore the Complainant is concerned that the disputed domain name will be used in bad faith to generate advertisements through bounce messages. The Complainant believes that the disputed domain name was registered with this intent based on its experiences with other KPN-related domain names which the Respondent has registered and in relation to which the Complainant has taken similar actions. The Complainant furthermore notes that the Respondent should have been aware that the Complainant’s trademarks were very well-known. According to the Complainant a brief Internet search would have shown that to be the case. The fact that the Respondent still chose to register the disputed domain name without good reason establishes bad faith registration. B. Respondent
The Respondent did not reply to the 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.
Based on article 2.1 of the Regulations, a claim to transfer a domain name must meet three cumulative conditions:
- The domain name is identical or confusingly similar to a trademark or trade name protected under Dutch law, or other name by means of article 2.1 sub a (II) of the Regulations;
- The respondent has no rights to or legitimate interests in the domain name;
- 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
It is established case law that the Top-Level Domain “.nl” may be disregarded in assessing the similarity between the relevant trademark or trade name on the one hand, and the disputed domain name on the other, because “.nl” is a necessary component for registration and use of a domain name (see for example Pieter de Haan v. Orville Smith Ltd.,WIPO Case No. DNL2008-0017, AB Elextrolux v. Marcel Vlaar,WIPO Case No. DNL2008-0005, Roompot Recreatie Beheer B.V. v. Edoco LTD,WIPO Case No. DNL2008-0008 and Oakley Inc. v. Oakley Publishing/Internet Publishing,WIPO Case No. DNL2008-0010).
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark KPN. The disputed domain name consists of two elements, i.e. “kpn” and “winkels”. The first part of the domain name is identical to the KPN trademark of the Complainant. The Respondent has taken the trademark in its entirety and merely added the descriptive word “winkels”, which in English translates to “stores”. Considering that the Complainant is the leading telecom provider and one of the largest ICT providers in the Netherlands, the relevant public for KPN services may easily establish a link between KPN’s products and services and the word “winkels” (stores).
Consequently, the Panel finds that the Complainant has satisfied the requirement of article 2.1.(a) of the Regulations. B. Rights or Legitimate Interests
It is established case law (see for example Pieter de Haan, supra, and Technische Unie B.V. and Otra Information Services v. Technology Services Ltd.,WIPO Case No. DNL2008-0002) that the condition as set out in article 2.1 sub b of the Regulations is met if a complainant makes a prima facie case that the respondent has no such rights or interests, and the respondent fails to rebut this.
As follows from the Complaint, the Respondent does not have any relevant trademark or trade name rights and is not known under the name KPN winkels or KPN. The Respondent is not affiliated to the Complainant and has not obtained consent to use the Complainant’s trademarks or trade names.
Since the Respondent did not file a Response and there is no indication otherwise of any right to or legitimate interest in the disputed domain name, the Panel considers that such a right or interest is not present.
The Panel therefore rules that the second criterion is also met. C. Registered or Used in Bad Faith
The arguments regarding bad faith have not been contested by the Respondent and should be duly taken into account. The Panel notes that, as confirmed in the Complaint, the Complainant is one of the market leaders in the Netherlands in telecommunication and ICT services. As such, it is likely that the Complainant is well-known in the market. The Panel is also satisfied that the KPN trademarks have a reputation and finds that the Respondent must have been aware of, and most likely motivated by, the KPN trademarks when it registered the disputed domain name. The Panel further finds that the use of the disputed domain name for a pay-per-click parking page as undertaken by the Respondent forms bad faith under the Regulations.
Furthermore the Panel notes the Complainant’s uncontested submission, invoking the earlier case between the same parties in relation to other domain names (Koninklijke KPN N.V. v. Gaststaette Rasthaus, supra), that the Respondent has been known to use domain names to generate advertisements through bounce messages. Therefore, and in absence of a response by the Respondent, the Panel also considers the disputed domain name to have been registered in bad faith.
In the view of the above, the third criterion is also met. 7. Decision
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the disputed domain name be transferred to the Complainant.
Tjeerd F.W. Overdijk
Panelist
Date: December 2, 2016
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