The Complainant is Score Retail Nederland B.V. of Duiven, the Netherlands, represented by Kneppelhout & Korthals N.V., the Netherlands.
The Respondent is Anke Eisenhower soho of Landsberg, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with SIDN through R. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2017. On June 22, 2017, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain name. On June 23, 2017, 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 June 27, 2017. In accordance with the Regulations, article 7.1, the due date for Response was July 17, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2017.
The Center appointed Alfred Meijboom as the panelist in this matter on July 20, 2017. 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 the owner of the following trademarks (the “Trademark):
- the Benelux word mark CHASIN’ (registration number 490207), registered on October 8, 1990 for inter alia leather bags, apparel, casual clothing, belts, scarves, gloves and mittens;
- the European Union word and device mark CHASIN’ (registration number 7289283), registered on August 18, 2010 for inter alia leather and imitations of leather, and bags, cases and wallets made of these materials and not included in other classes, animal skins, hides, trunks and travelling bags, umbrellas, casual clothing, jeans, trousers, jackets, sweaters, t-shirts, blouses, shoes, boots, slippers, trainers (sport shoes), hats and caps, scarves, gloves, mittens.
The disputed domain name was registered by the Respondent on September 1, 2016, and resolves to a
website with the look and feel of the Complainant’s official web shop and pretending to offer for sale original products under the Trademark (the “Website”). 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is identical or confusingly similar to the Trademark which it contains in its entirely. The addition of the term “kleding”, which means “clothing” in Dutch, is purely descriptive as it refers to the products which are offered for sale under the disputed domain name.
The Complainant further alleges that the Respondent has no rights or legitimate interests in the disputed domain name as the Website appears to sell the Complainant’s original products and pretends to be an official webshop of products under the Trademark as it prominently displays the Trademark and uses the Complainant’s original images. The Complainant further claims that the Respondent actually delivered a used, second hand and unbranded product to an Internet user who had ordered a CHASIN’ jacket on the Website. According to the Complainant the Respondent uses the Website for fraudulent purposes. The Complainant has no contractual relationship with the Respondent and has not given it permission to use the Trademark in any manner. Therefore, the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant submits that it is clear that the Respondent registered the disputed domain name with the sole intention to run an illegal business and infringe the Trademark. According to the Complainant there can be no doubt that the Respondent, at the time of registration of the disputed domain name, knew that it included the Trademark and would be used for fraudulent purposes. The Complainant also asserts that the Respondent has been involved in fraudulent businesses in another case under the Regulations, with circumstances similar to those in this matter, in which case the panel found that that the respondent did not have rights or legitimate interests to use the domain name and that the domain name was registered in bad faith (Fossil Group Europe GmbH and Fossil Group, Inc. v. Anke Eisenhower soho,WIPO Case No. DNL2017-0010). B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
As the Respondent has not filed a response, the Panel shall rule on the basis of the Complaint. In accordance with article 10.3 of the Regulations, the Complaint shall in that event be granted, unless the panelist considers it to be without basis in law or in fact.
The Panel notes that, in accordance with article 16.4 of the Regulations, the Center has fulfilled its obligation to employ reasonably available means to achieve actual notice of the Complaint to the Respondent.
Based on article 2.1 of the Regulations, a request to transfer the disputed domain name must meet three cumulative conditions:
a. the disputed 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 disputed domain name; and
c. the disputed domain name has been registered or is being used in bad faith. 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 trademark(s) on the one hand and the disputed domain name(s) on the other hand (see, e.g., Roompot Recreatie Beheer B.V. v. Edoco LTD,WIPO Case No. DNL2008-0008).
The Panel finds that the disputed domain name is confusingly similar to the Trademark. The Respondent has taken the Trademark in its entirety and merely added the descriptive word “kleding” (“clothing” in Dutch). This term is insufficient to differentiate the disputed domain name and the Trademark, as it merely identifies the products offered for sale on the Website.
Consequently, the Panel finds that the Complainant has satisfied the requirement of article 2.1(a) of the Regulations. B. Rights or Legitimate Interests
Article 2.1(b) of the Regulations requires the Complainant to demonstrate that the Respondent has no rights to or legitimate interests in the disputed domain name. This condition is met if the Complainant makes out a prima facie case that the Respondent has no such rights or legitimate interests and if the Respondent fails to rebut this (see, e.g., Technische Unie B.V. and Otra Information Services v. Technology Services Ltd.,WIPO Case No. DNL2008-0002).
The Panel is satisfied that the Complainant has made such a prima facie case, showing that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services before the Respondent had received the notice of the dispute, and that the Respondent was not commonly known by the disputed domain name or a similar name. The Respondent has not disputed the above.
More particularly, the Panel observes that the Complainant has sufficiently demonstrated that the Respondent did not use the disputed domain name to make a bona fide offering of goods or services through the Website which pretends to be an official webshop of the Complainant’s apparel. In reality, it appears that the Respondent delivered used, unbranded products to Internet users who were misled to believe they had ordered genuine products under the Trademark. In Fossil Group Europe GmbH and Fossil Group, Inc. v. Anke Eisenhower soho, supra, which also involves the Respondent and similar use of the concerned domain name registered by the Respondent, the panel established that the Respondent used a nonexistent physical address in the contact details provided by the Respondent upon registration of the domain name in that case, which non-existing address the Respondent has also used in the present case. For all these reasons the Panel agrees with the panel in Fossil Group Europe GmbH and Fossil Group, Inc. v. Anke Eisenhower soho, supra that the use by Respondent is fraudulent and cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The Panel need not discuss the so-called Oki Data criteria and considerations (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903) as the Respondent cannot be considered a genuine reseller in the first place.1 A similar finding was reached by the panel in the comparable case Coccinelle S.p.A v. Kaoyuanws Trade,WIPO Case No. DNL2017-0008.
The Panel finds that the Complainant has satisfied the requirement of article 2.1(b) of the Regulations. C. Registered or Used in Bad Faith
All circumstances discussed in Section 6.B above, more particularly the Respondent’s knowing use of the Trademark for the intentional deception of Internet users who were made to believe that the Website offering genuine products under the Trademark and the delivery of used, unbranded products instead, resulted in the Panel’s finding that the Respondent registered and used the disputed domain name in bad faith. This finding is further enhanced by the use of false contact details when the Respondent registered the disputed domain name.
Consequently, the requirement of article 2.1(c) of the Regulations has also 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 the Complainant.
Alfred Meijboom
Panelist
Date: August 9, 2017
1 In view of the fact that that the Regulations are to an extent based on the UDRP, it is well established that cases decided under both the Regulations and the UDRP are relevant to this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V.,WIPO Case No. DNL2008-0050).
Full & Egal Universal Law Academy