Complainant is Toskani S.L., Spain, represented by ETL Nexum Juridico, S.L., Spain.
Respondent is Tine Hylebos, Belgium. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2019. On the same day, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On October 21, 2019, SIDN transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 23, 2019, providing the registrant and contact information disclosed by SIDN, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on October 28, 2019. The Center verified that the Complaint together with the amended 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 1, 2019. In accordance with the Regulations, article 7.1, the due date for Response was November 21, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 22, 2019. The Center appointed Remco M.R. van Leeuwen as the panelist in this matter on December 6, 2019. 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 Complainant states that it is a medical-based cosmetics company from Barcelona, Spain, with more than 30 years of experience in the provision of solutions to aesthetic and dermatologic skin concerns. According to the website connected to Complainant’s domain name Complainant is the proprietor of the European Union Trade Mark TOSKANI, registered on May 27, 2010, registration number 008753394, for goods in classes 3, 5, and 35 (the “Trademark”). The Domain Name was first registered by Respondent on January 19, 2017. Currently, and – according to Complainant – on the date of the Complaint, the Domain Name is inactive. 5. Parties’ Contentions A. Complainant Complainant bases the Complaint on the Trademark. Complainant contends that the Domain Name is identical to the Trademark. According to Complainant, Respondent is the representative administrator of the company Montreuil Hylebos. This company was previously a distributor of Complainant. Complainant argues that Respondent is trying to create confusion through the Domain Name. Having registered the Domain Name, Respondent can intentionally attempt to attract, for commercial gain, Internet users to the website connected to the Domain Name by creating a likelihood of confusion with the Trademark and taking advantage of Complainant’s popularity in many countries. Complainant argues that Respondent has no rights or legitimate interests in the Domain Name. Complainant is not aware of any legitimate third-party use of the Trademark. The Domain Name is not similar to Respondent’s name or business. Respondent has not been authorized by Complainant to register and/or use the Domain Name. Complainant further asserts that no further commercial relationship exists after the termination of the distribution relationship between Complainant and Respondent. Complainant argues that the Domain Name has been registered in bad faith. Respondent has never had any intention of using the Domain Name. The sole purpose of its was to sell it to Complainant. Complainant supports this argument by submitting screenshots of WhatsApp conversations between the Parties showing that Respondent offered to sell the Domain Name to Complainant for EUR 10,000 or EUR 15,000 in combination with the domain name Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings As Respondent has not filed a Response, the Panel shall rule based on the Complaint. In accordance with article 10.3 of the Regulations, the Complaint shall in that event be granted, unless the Panel considers it to be without basis in law or 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 Respondent. Pursuant to article 2.1 of the Regulations, Complainant’s request to transfer the 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 Complainant has rights, or other name by means of article 2.1(a) under II of the Regulations; and b. 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. Considering these conditions, the Panel rules as follows. A. Identical or Confusingly Similar Complainant has based the Complaint on the Trademark. Complainant has submitted a copy of the trademark certificate demonstrating that Complainant is the holder of the Trademark. The Trademark is a figurative mark. The dominant part of this mark is the word TOSKANI. The Trademark is protected under Dutch law as required by article 2.1(a) of the Regulations. The Panel notes that it is established in prior decisions under the Regulations that the country code Top-Level Domain “.nl” may be disregarded in assessing confusing similarity between the relevant trademark on the one hand, and the disputed domain name on the other hand (see, Caterpillar Inc. v. H. van Zuylen Materieel,WIPO Case No. DNL2011‑0073; Roompot Recreatie Beheer B.V. v. Edoco LTD,WIPO Case No. DNL2008‑0008). The Domain Name includes the entire dominant part of the Trademark to which it is textually, visually, and phonetically similar to (the dominant part of) the Trademark. The Panel finds that the Domain Name is confusingly similar to the Trademark for purposes of the Regulations. Therefore, the first requirement of article 2.1(a) under I of the Regulations is met. B. Rights or Legitimate Interests Article 2.1(b) of the Regulations requires Complainant to demonstrate that Respondent has no rights to or legitimate interests in the Domain Name. This condition is met if (a) Complainant makes out a prima facie case that Respondent has no such rights or legitimate interests and if 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). Complainant alleges that Respondent lacks rights to or legitimate interests in the Domain Name for the reasons set out in section 5.A above. The Panel finds that these reasons establish prima facie that Respondent has no rights to or legitimate interests in the Domain Name. As a result of its failure to submit a Response, Respondent has not refuted Complainant’s arguments and/or shown rights to or legitimate interests in the Domain Name. Furthermore, no commercial relationship exists (any more) between Complainant and Respondent. Based on the record, the Panel could not establish any indication that any of the circumstances as described in article 3.1 of the Regulations apply, or that Respondent in any other way has rights to or legitimate interests in the Domain Name. The Panel concludes that Complainant has met the second requirement of article 2.1(b) of the Regulations. C. Registered or Used in Bad Faith Considering the apparent former existence of a distribution agreement between Complainant and Respondent’s company, the fact that the Domain Name is (almost) identical to the Trademark, the fact that Complainant has apparently never licensed or otherwise authorized Respondent to register and/or use the Trademark in a domain name, the fact that the Domain Name does not resolve to a website and has been offered for sale by Respondent to Complainant for a considerable amount, the Panel finds that Respondent clearly knew of the Trademark at the time of registration of the Domain Name. Against this background, and noting the fact that Respondent has no rights to or legitimate interests in the Domain Name, the Panel finds it highly likely that Respondent registered the Domain Name primarily for the purpose of selling the Domain Name to Complainant for valuable consideration in excess of Respondent’s costs directly related to the Domain Name. Taking into account the foregoing, the Panel finds that the requirement of registration or use in bad faith of the Domain Name pursuant to article 2.1(c) of the Regulations has been met. 7. Decision For the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain name Remco M.R. van Leeuwen
Panelist
Date: December 12, 2019
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