Complainant is ERREA' SPORT S.p.A. of Torrile (Parma), Italy, represented by Crea Avvocati Associati, Italy.
Respondent is Media & Internet of Tilburg, the Netherlands. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with SIDN through Xcellerate. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2018. On April 17, 2018, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain name. On April 18, 2018, SIDN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent’s 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 April 23, 2018. In accordance with the Regulations, article 7.1, the due date for Response was May 13, 2018. The Center received various email communications from Respondent between April 23, and May 14, 2018 stating that Respondent’s knowledge of English is very bad and that it cannot respond to the Complaint if it is not in Dutch. Respondent did not submit a substantive response. Accordingly, the Center notified the Parties of the Commencement of Panel Appointment Process on May 14, 2018.
The Center appointed Richard C.K. van Oerle as the panelist in this matter on June 6, 2018. 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
According to the evidence submitted, Complainant holds, inter alia, International Registration number 621285, in which the Benelux has been designated, registered on June 16, 1994, in which the word “errea” is written in a special script:
Complainant is also the proprietor of the European Union wordmark ERREA, registration No. 009284191, filed on July 30, 2010 and registered on April 1, 2011.
These trademarks will jointly be referred to hereunder as “the Trademarks”.
The Domain Name was registered on June 6, 2016 by Respondent. The Domain Name does not resolve to an active website. 5. Parties’ Contentions A. Complainant
Complainant is an Italian company founded in 1988 and specialized in the production of technical-athletic apparel; it is a leading brand renowned at international level. As a consequence of lengthy, large-scale and intensive use, the Trademarks are well known internationally. Complainant has sponsored for many years and is sponsoring several internationally famous sports clubs as well as organizations in the Netherlands, among which: the professional football team of ADO Den Haag, the professional volleyball team Sliedrecht, as well as the Dutch national volleyball team.
According to Complainant, the Domain Name is confusingly similar to the Trademarks and the company name because it incorporates the core part of the Trademarks. The addition of the suffix “store” in connection with the Trademarks underlines the confusing similarity to the Trademarks and its business. “Store” is a generic expression which does not add any difference but only increases the risk of confusion that there might be a commercial relationship between Complainant and Respondent. Furthermore, Complainant notes that it is owner of the domain names and , which were both registered prior to the Domain Name.
Complainant notes that Respondent is a company involved in the field of marketing, web design and media communication. Respondent has no relationship with Complainant and has no authorization from Complainant to use its trademarks, domain names or company name. Also, Respondent is not a representative or licensee of Complainant. In addition, Respondent was not commonly known by the Domain Name prior to its registration and Respondent has never used the Domain Name. Therefore, according to Complainant, Respondent has no rights or legitimate interests in the Domain Name.
Complainant concludes that Respondent had knowledge about the Trademarks at the moment of the Domain Name registration as the Trademarks are a global brand with presence in the European Union and the Netherlands. Complainant states that only someone familiar with the Trademarks and Complainant’s activity would have registered the Domain Name inclusive of such trademark. Furthermore, Respondent is not actively using the Domain Name. Complainant notes that “passive holding” constitutes use in bad faith. Respondent has provided no evidence of good-faith use. B. Respondent
Respondent did not submit a substantive response to Complainant’s contentions. Respondent only stated that its English is very bad and requested the language of the proceedings to be Dutch. 6. Discussion and Findings
Language of the proceedings
As Complainant is not domiciled in the Netherlands and there do not appear to be any exceptional circumstances which persuade the Panel to decide that the proceedings are to be conducted in Dutch, the language of the proceedings is English in accordance with article 17.2 of the Regulations.
Legal framework
Based on article 2.1 of the Regulations, a claim to transfer a domain name must meet three cumulative requirements:
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 mentioned in article 2.1 (a) sub II of the Regulations; and
b. the registrant has no rights to or legitimate interest in the domain name; and
c. the domain name has been registered or is being used in bad faith.
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 (Time Export A/S v. Kraan- en Truck Service B.V.,WIPO Case No. DNL2016-0003).
The Panel notes that Respondent has not filed a substantive response and shall therefore rule on the basis of the Complaint. A. Identical or Confusingly Similar
The figurative trademark consists of a stylized representation of the letters ERREA; this textual element is dominant. The non-textual elements of the trademark do not detract from the prominence of the word element. The word mark consists of the letters “ERREA”, which the Domain Name incorporates in full.
The addition of the common, descriptive and non-distinctive term “store” is insufficient to prevent confusion. It is established case law that the country code Top-Level Domain (“ccTLD”) “.nl” may be disregarded in assessing the similarity between the Trademarks on the one hand, and the Domain Name on the other hand (see, inter alia, Taylor Made Golf Company, Inc. v. Lotom Group S.A.,WIPO Case No. DNL2010-0067; Roompot Recreatie Beheer B.V. v. Edoco LTD,WIPO Case No. DNL2008-0008).
The Panel finds that the Domain Name is confusingly similar to the Trademarks within the meaning of article 2.1(a) of the Regulations. Therefore, the first requirement is met. B. Rights or Legitimate Interests
Complainant has established that Respondent has no rights to or legitimate interests in the Domain Name. Complainant states that Respondent has no relationship with Complainant and is not authorized to use the Trademarks, nor is Respondent a representative or licensee of Complainant. Respondent moreover has never used and is not using the Domain Name. Respondent has not filed a substantive Response and the record of this case does not contain any evidence which shows that Respondent has rights to or legitimate interests in the Domain Name.
Respondent has failed to rebut the foregoing factors. In particular, Respondent has not submitted any explanation why it has chosen to register the Domain Name, which appears entirely unrelated to Respondent’s own name.
The Panel concludes that Respondent has no rights to or legitimate interests in the Domain Name. Therefore, the second requirement is met. C. Registered or Used in Bad Faith
The Panel is of the opinion that the Domain Name has been registered in bad faith. Complainant has registered the Trademarks worldwide and in the Netherlands, long before the Domain Name was registered. In all the circumstances, it is most likely that Respondent undertook the domain name registration in awareness of the Trademarks.
With respect to the use of the Domain Name, Respondent has not provided any evidence of actual or contemplated good-faith use of the Domain Name. This in itself may indicate bad faith, (see Casa del Caffè Vergnano S.p.A. v. Campo Largo B.V.,WIPO Case No. DNL2016-0040), as may passive holding of the Domain Name (see, Williams-Sonoma, Inc. v. E. Linders,WIPO Case No. DNL2013-0020).
Noting also Respondent’s abovementioned failure to explain its registration of the Domain Name in the face of Complainant’s trademark rights, the Panel finds that the third requirement is 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: June 14, 2018
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