Complainant is Schleich GmbH of Schwäbisch Gmünd, Germany, represented by The Gigalaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.
Respondent is Z of Haarlem, the Netherlands, internally-represented.. 2. The Domain Name and Registrar
The disputed domain name (hereafter the “Domain Name”) is registered with SIDN through One-Stop-Webshop. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2016. On the same date, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On November 15, 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 November 18, 2016. In accordance with the Regulations, article 7.1, the due date for Response was December 8, 2016. Respondent sent an email communication in Dutch to the Center on November 27, 2016. The Response was filed with the Center on December 7, 2016.
On December 12, 2017 SIDN commenced the mediation process. On January 10, 2017 SIDN extended the mediation process until February 8, 2017. Before that date, on January 31, 2017 SIDN confirmed that the dispute had not been solved in the mediation process.
The Center appointed Gregor Vos as the sole panelist in this matter on February 3, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Regulations, article 9.2. 4. Factual Background
Complainant is a German company founded in 1935. According to Complainant, it is one of Germany’s biggest toy manufacturers and a leading international provider of traditional figurines and realistic “play world” concepts.
Complainant has registered multiple SCHLEICH trademarks in several jurisdictions. The following trademarks are valid in the Netherlands (hereinafter jointly the “Trademarks”):
- EU Trademark Registration No. 004137584 for SCHLEICH S, registered on May 30, 2006;
- EU Trademark Registration No. 010100675 for SCHLEICH and device, registered on November 10, 2011;
- International Trademark Registration No. 459467 for SCHLEICH and device, registered on February 12, 1981, designating inter alia the Benelux;
- International Trademark Registration No. 1021176 for SCHLEICH, registered on September 29, 2009, designating inter alia the European Union;
The Domain Name was first registered on July 2, 2002, and was registered by Respondent on August 17, 2015. The Domain Name was not in use at the date of filing of the Complaint. 5. Parties’ Contentions A. Complainant
Complainant asserts that the Domain Name is identical or at least confusingly similar to Complainant’s Trademarks. The Domain Name reproduces Complainant’s Trademarks entirely.
Complainant submits that Respondent does not hold any rights or legitimate interests with respect to the Domain Name. Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized Respondent to register or use the Trademarks. Respondent has made no demonstrable preparations to use the name “Schleich” in connection with a bona fide offering of goods or services. Rather, Respondent is not using the Domain Name in connection with an active website.
Furthermore, Respondent is not commonly known by the Domain Name. Respondent is known as “Z” and not as “Schleich”. Finally, Complainant states that Respondent is not making a legitimate noncommercial use of the Domain Name due to the fact that Respondent is not making any use of the Domain Name. Thus, Respondent has no rights or legitimate interests in the Domain Name.
Complainant states that the Domain Name has been registered in bad faith because the Domain Name is registered in order to prevent Complainant from using it. The passive holding of the Domain Name constitutes bad faith because the SCHLEICH trademark has a strong reputation and is widely known, according to Complainant.
In addition, the Domain Name has been registered or is being used in bad faith by Respondent because the Domain Name has been registered primarily for the purpose of disrupting Complainant’s activities. Furthermore, the trademark was registered in the European Union 24 years prior to registration of the Domain Name. According to Complainant, it is likely that Respondent knew of Complainant’s Trademarks, and has sought to obtain a commercial benefit by attracting Internet users based on that confusion. The only motive of Respondent in registering and using the site seem to be simply to disrupt Complainant’s relationship with its consumers or potential customers or attempt to attract Internet users for potential gain. The Domain Name has thus been registered and used in bad faith.
Consequently, Complainant is requesting transfer of the Domain Name to Complainant. B. Respondent
Respondent replied to Complainant’s contentions.
Respondent acquired the Domain Name about two years ago because it had the intention to start an online shop that exclusively offers for sale Schleich goods. Respondent further states that it acquired the Domain Name because of the toy-related Google search results generated by using the term “schleich”. Therefore it ranks high on Google, according to Respondent.
Respondent states – in brief – that it is not infringing Complainant’s trademark rights.
Respondent asserts to have purchased the Domain Name for EUR 5,000 with the intention to offer for sale Schleich goods. Further, Respondent states that it will not engage in activities which are similar to Complainant’s. Prior to Respondent’s acquisition, the Domain Name was for sale for over two years, but has not been acquired by Complainant. Finally, Respondent states that until the notification of the Complaint it was not familiar with Complainant. 6. Discussion and Findings
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 another 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.
These conditions shall be discussed below. A. Identical or Confusingly Similar
Complainant bases its Complaint on EU trademarks as well as international trademarks that designate the Benelux or the EU as a relevant territory and has submitted copies of the registrations demonstrating that Complainant is the holder of these Trademarks. Both the EU trademarks and the international trademarks offer protection under Dutch law.
The threshold test for confusing similarity under the Regulations involves a comparison between the Trademarks and the Domain Name to determine the likelihood of Internet user confusion. In order to satisfy this test, the relevant Trademarks need to be recognizable as such within the Domain Name. The country code Top-Level Domain (“ccTLD”) “.nl” is usually disregarded under this test, as it is a technical requirement of registration (e.g., Roompot Recreatie Beheer B.V. v. Edoco LTD,WIPO Case No. DNL2008-0008).
Consequently, the Panel finds that the Domain Name and the Trademarks are identical in the sense of article 2.1(a) of the Regulations. B. Rights or Legitimate Interests
Consistent with .nl jurisprudence, Complainant bears the burdenof showing prima facie that Respondent has no rights or legitimate interests in the Domain Name. If Complainant succeeds in making out this prima facie case, the burden of production shifts to Respondent, who will then have to come forward with appropriate allegations or evidence demonstrating a right or legitimate interest in the Domain Name.
Complainant has provided evidence that the Trademarks invoked in the current proceedings precede the registration date of the Domain Name. Respondent is not authorized or licensed to use any of the Trademarks. Furthermore, the evidence furnished by Complainant shows that the Domain Name is not in use.
The Panel finds that this sufficiently establishes Complainant’s prima facie case. The burden of production therefore shifts to Respondent.
Respondent did not provide any evidence to the contrary. Specifically, Respondent did not provide evidence pursuant to article 3.1 of the Regulations that it is commonly known by the name “Schleich”, nor that it is making a legitimate noncommercial use of the Domain Name.
Respondent asserts that it intends to use the Domain Name to offer for sale Schleich goods. In certain circumstances a reseller of branded products can be making a bona fide offering of goods (ex article 3.1(a) of the Regulations) and thus have a legitimate interest in the domain name (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903).1 However, the mere intention to start using the Domain Name in the future for the purpose of an online shop is as such insufficient: Respondent has not provided any concrete evidence of reasonable and demonstrable preparations to use the Domain Name for the stated purpose.
The Panel finds that all the evidence points to a lack of legitimate interests in the Domain Name by Respondent.
Consequently, the Panel holds that Respondent has no rights or legitimate interests in the Domain Name in the sense of article 2.1(b) of the Regulations. C. Registered and Used in Bad Faith
The Panel considers that the circumstance that Respondent’s failure to actively use the Domain Name without an actual attempt to sell it to the trademark holder (passive holding), does not as such preclude the finding of bad faith. On the other hand, passive holding as such need not imply a motivation that the Domain Name has been registered by Respondent in order to prevent Complainant from using it. The Panel must examine all the circumstances of the case in order to determine whether Respondent is acting in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
The Panel finds it illogical for Respondent to have been unaware of Complainant’s Trademarks, given Respondent’s expressly stated intention of conducting an online shop that exclusively offers for sale Schleich goods. Respondent appears to have purposefully registered the term “schleich” as a domain name, which is further confirmed by Respondent’s statement that this Domain Name will give its intended online shop high visibility in Internet search engines. The Panel concludes that Respondent aimed to take advantage of the Trademarks.
Considering the inconsistency and the lack of credibility of Respondent’s claims and noting furthermore the time which has passed since the registration of the Domain Name without any evidence of Respondent’s stated intentions, the Panel concludes that Complainant meets the requirement of article 2.1(c) of the Regulations. 7. Decision
For the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name, , be transferred to Complainant.
Gregor Vos
Sole Panelist
Date: March 2, 2017
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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