The Complainant is Intertoys Holland B.V. of Amsterdam, the Netherlands, represented by Bright advocaten, the Netherlands.
The Respondent as registered is Gaststaette Rasthaus of Winterfeld, Germany. 2. The Domain Name and Registrar
The disputed domain name (the "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 14, 2017. On the same day, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain name. On September 15, 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 September 18, 2017. In accordance with the Regulations, article 7.1, the due date for Response was October 8, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 9, 2017.
The Center appointed Wolter Wefers Bettink as the panelist in this matter on October 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 was founded in 1976 and has been using the trade name "Intertoys" ever since. The Complainant is a subsidiary of Blokker Holding B.V. and operates the largest (265) chain of toy shops in the Netherlands plus another 29 shops in Germany and 11 in Belgium. All these shops operate under the trade name "Intertoys".
Furthermore, Blokker Holding B.V. operates 15 megastores under the trade name "Toys XL".
The Complainant is the owner of the Benelux wordmark INTERTOYS registered as of January 15, 2009 under no. 0857589 (the "Trade mark").
Furthermore, the a different subsidiary of the Complainant's parent company holds the Benelux device mark TOYS XL registered as of November 18, 2008 under no. 0855200.
The Domain name was registered on December 30, 2009 and is currently connected to a pay-per-click web page including links to toy-related products. 5. Parties' Contentions A. Complainant
According to the Complainant the Domain name is a combination of the Trade marks and relevant trade names INTERTOYS and TOYS XL and is therefore confusingly similar to the Trade marks and relevant trade names.
The Complainant submits that the Respondent has no rights or legitimate interests in the Domain name since it has no relationship with the Complainant, nor is known under the Trade marks, nor develops or has developed any activities under this name. In addition, the Complainant states that the Domain name is not being used to offer goods and/or services, and that Internet users are directed to a website which is a (parking) page displaying pay-per-click links for toy shops. The Respondent uses the Domain name without permission from the Complainant for commercial gain and in order to benefit from the Trade marks and the relevant trade names. Furthermore, the Complainant points out that the Domain name is offered for sale on the website to which it resolves.
The Complainant believes that the Respondent is using the Domain name in bad faith as the Respondent had or should have had knowledge of the Trade marks and relevant trade names and is intentionally misleading Internet users for commercial gain. The Complainant states that the Trade marks and relevant trade names have been registered and used well before the registration date of the Domain name. According to the Complainant, the Trade marks and relevant trade names are well known in the Netherlands and were also well known in 2009 when the Domain name was registered. Therefore, the Complainant concludes that the Respondent knew or should have known that the Domain name entirely includes the Trade marks and relevant trade names.
The Complainant is of the opinion that the bad faith of the Respondent is also shown by the fact that he has not used the Domain name for any other purpose than for a pay-per click site and thus for its own commercial gain. In addition, the Complainant points out, the Domain name is offered for sale on the website. Furthermore, the Complainant submits that it has notified the Respondent on June 9, 2017 by registered mail and email that the Domain name is infringing upon the Trade marks and relevant trade names. According to the Complainant, the Respondent's failure to respond to its
cease-and-desist letter, also indicates registration in bad faith.
Finally, the Complainant points out that the Respondent has engaged in a pattern of registering domain names incorporating well-known trade marks and has been involved in earlier .nl proceedings. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has shown that it has rights to the Trade mark. The Complainant has not submitted evidence showing that it holds rights (through a license agreement or otherwise) in the trade mark "TOYS XL", or has been authorized by the trade mark owner to file the Complaint. Therefore, for the purpose of the Complaint, this trade mark cannot be relied upon by the Complainant (see WIPO Overview 3.0, section 1.4.1).
In addition, the Complainant relies on rights in the trade names 'Intertoys' and 'ToysXL'.
The Netherlands Trade Name Act protects trade names which are used in commerce by the company involved. Evidence of such use may be found in the letterhead, business card or directory entries containing the trade name, use of that name on the company's website, on its building and, generally, in any communication emanating from the company in which the trade name is used. The mere registration of a trade name in the Chamber of Commerce register ("Handelsregister") is not sufficient evidence as it does not prove the actual use of the name in commerce. Likewise, use of a logo or device mark containing the company's registered name is not regarded as evidence of use of a trade name (although, possibly, of a trade mark).
The Complainant has submitted documents showing use of a logo containing "Intertoys" on its letterhead and on a website under the domain name . As set out above, the use of a logo, even if it contains the company's name, does not in itself constitute evidence of use of a trade name. If the logo has been registered as a trade mark, use thereof in connection with goods or services for which it has been registered could constitute sustaining use ("in stand houdend gebruik") of that trade mark, but that is not at issue in this case.
The cease-and-desist letter sent to the Respondent has been signed on behalf of "Intertoys Holland B.V." In addition, one of the web pages of which a print has been submitted contains the captions "Over Intertoys" ("About Intertoys") and "De organisatie van Intertoys" ("The organization of Intertoys"), while "Intertoys" is being used in the text on this web page with respect to the Complainant's organization.
With respect to the trade name "ToysXL", the Complainant has only submitted a copy of the extract of the Chamber of Commerce registration of a company called Speelhoorn B.V. with the additional trade name "ToysXL". As set out above, registration of a trade name in the Chamber of Commerce Register is not sufficient evidence of a trade name right, as it does not prove the use of the name in commerce. Moreover, the copy of the extract shows that the trade name "Toys XL'is registered in the name of another company.
Based on these documents, the Panel concludes that the Complainant has shown rights in the trade name "Intertoys" (hereafter the "Trade name"), but not in the trade name "ToysXL".
The Trade Mark and the Trade name consist of the term INTERTOYS and, with the addition of the descriptive word "XL". This descriptive term does not alter the confusing similarity, as INTERTOYS is the dominant feature (see also, WIPO Overview of WIPO Panel views on selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), sections 1.7 and 1.8).1
The Panel finds in accordance with article 2.1(a)(I) of the Regulations that the Domain name is confusingly similar to both Trade mark and the Trade name. B. Rights or Legitimate Interests
The Complainant has to make out a prima facie case that the Respondent does not have rights to or legitimate interests in the Domain name upon which the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (WIPO Overview 3.0, section 2.1). Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant's consent to use the element "Intertoys" as part of the Domain Name.
In addition, evidence submitted by the Complainant shows that the Domain name is used in connection with a website containing links to third-party websites where products are offered for sale that compete with the Complainant's products sold under the Trade mark, capitalize on the reputation and goodwill of the Trade mark or otherwise mislead Internet users (WIPO Overview 3.0, section 2.9). Furthermore, it is known that such websites generate pay-per-click income, while the Panel has verified that at the time of this decision the website was still active and connected to the Domain name. Therefore, the Domain name is not being used for a bona fide offering of goods or services, nor is there a legitimate noncommercial or fair use of the Domain name.
In view of the above, the Panel concludes that the Complainant has established that the Respondent has no rights to or legitimate interests in the Domain Name as set out in article 3.1(c) of the Regulations. C. Registered or Used in Bad Faith
In accordance with article 3.1 (b) of the Regulations, the Complainant has to show that the Domain name was registered or is used in bad faith.
Based on the information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain name the Respondent was or should have been aware of the Trade mark, since:
- The Respondent's registration of the Domain name occurred after the registration of the Trade mark.
- The Trade mark is incorporated in its entirety in the Domain name.
- A simple trade mark register search, or even an Internet search, prior to registration of the Domain name, would have informed the Respondent of the existence of the Trade Mark.
Under these circumstances, the Panel concludes that the Domain name has been registered in bad faith.
With regard to bad faith use, the fact that the Domain name resolves to a website which contains links to websites offering competing products, is an indication that the Domain name is being used to intentionally attempt to attract, for commercial gain, Internet users to the website to which the Domain name resolves by creating a likelihood of confusion with the Trade mark and the Trade name as to the source, sponsorship, affiliation or endorsement of the website, and of the services offered there. These circumstances together with the fact that the Domain name is offered for sale, further serve as evidence of bad faith use..
The Panel concludes that the Domain Name was registered and has been used in bad faith. 7. Decision
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain name
Wolter Wefers Bettink
Panelist
Date: November 3, 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