The Complainant is KMAX International S.R.L., Italy, represented by Bugnion S.p.A., Italy.
The Respondent is Astopa B.V., Netherlands, self-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2019. On the same day, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On December 20, 2020, SIDN transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing its 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 January 3, 2020. In accordance with the Regulations, article 7.1, the due date for Response was January 23, 2020. The Respondent did not submit any response within this period. Accordingly, the Center notified the Respondent’s default on January 27, 2020. The Center received various communications from both the Complainant and the Respondent in the period between February 1 and 12, 2020. The Center appointed Richard C.K. van Oerle as the panelist in this matter on February 14, 2020. 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 an Italian company and the successor in interest of Wilco S.R.L. The company specializes in instant hair makeup solutions since 2003. The Complainant is the owner of the following trademark: European Union Trademark registration No. 015823446, registered on December 23, 2016 (the “Trademark”); it concerns a figurative mark, in which the words “KMAX KERATIN MAXIMIZATION” are written in a special script: The Respondent registered the Domain Name on May 12, 2017, shortly after its conclusion of an Exclusive Distribution Agreement of May 1, 2017, with the Complainant (the “Agreement”). The Domain Name currently resolves to a website that prominently displays the Trademark and mentions to be the website of KMAX Benelux, as a subsidiary of Astopa B.V. 5. Parties’ Contentions A. Complainant The Complainant claims that the Domain Name is identical to the Trademark for the textual part of the Domain Name. In particular, “KMAX” is identical to “KMAX”. The mere addition of a generic Top-Level Domain “gTLD” or a country-code Top Level Domain “ccTLD” is insufficient to differentiate a disputed domain name from a trademark. The Complainant submits that the Respondent has no rights or legitimate interest in respect of the Domain Name. The Complainant states that the Respondent does not own any rights whatsoever in the Trademark in the Netherlands/Benelux or European Union. The Complainant has never granted its authorization to the Respondent to register or use the Domain Name; the use of the Trademark in a domain name is even explicitly prohibited by the Agreement. Furthermore, the Respondent is not commonly known by the Domain Name. In addition, the Complainant states that it has prior rights in the Trademark, which predate the Respondent’s registration of the Domain Name. The Complainant submits that given that the Domain Name is a letter-by-letter match of the dominant and distinctive part of the Trademark, there is a high risk of implied affiliation; such risk makes it hardly possible for the Respondent to ever use the Domain Name fairly. The Respondent has no legitimate interest as the Agreement has ceased due to a breach of contract, which was notified on January 11, 2018. According to the Complainant, the Respondent registered and used the Domain Name in bad faith because of the following events: (i) prior to the registration of the Domain Name the Complainant and the Respondent were still engaging in preliminary negotiations, (ii) the parties agreed to execute the Agreement, which prohibits the use of the Trademark in a domain name, (iii) the prior knowledge of the Trademark is evident from the content of the Respondent’s website, and (iv) the website looks and feels like a reproduction of the Complainant’s official website, including reproductions of the Complainant’s logo’s, trademarks and advertising material. In light of these circumstances, the Complainant is of the opinion that the Respondent was certainly aware of the Complainant’s rights in the Trademark and that the Respondent was never granted authorization to register the Domain Name. The Complainant asserts that the Respondent only registered the Domain Name in order to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Trademark. Furthermore, the Complainant states that the Respondent failed to comply with the Agreement, and acted in bad faith by keeping ownership of the Domain Name after the notification of breach of contract. B. Respondent The Respondent did not reply to the Complainant’s contentions before the deadline of January 23, 2020. However, the Respondent replied summarily to the Complainant’s contentions per email messages on February 1 and 6, 2020. While these messages attached the Notification of Complaint and Commencement of Administrative Proceeding which the Respondent had received from the Center, the Respondent claimed not to have received the Complaint as “official paperwork”. The Respondent briefly stated that it is allowed to use the Trademark in the Domain Name, and that it satisfies the criteria for legitimate interest as it actually sells the relevant branded goods, offers only the branded goods on the website, and clearly indicates the relationship between the reseller and the Trademark owner. 6. Discussion and Findings As to the Respondent’s above-mentioned procedural comment, the Panel notes that the case file evidences that the Complaint with the annexes was sent by the Center to the Respondent on January 3, 2020, and delivered by DHL on January 6, 2020, to the address which the Respondent had provided to SIDN. In addition, the case file shows that on January 3, 2020, the Center also sent an email containing the Notification of Complaint, the Complaint and its annexes to the email address provided by the Respondent to SIDN, to the administrative contact (from which email address the Respondent subsequently sent its communications of February 1 and 6), and to the only email address mentioned on the website to which the Domain Name leads, as well as to the concerned postmaster address. With the exception of the postmaster email address, the Center did not receive any notice of non-delivery, and indeed, the Respondent itself has implicitly confirmed proper receipt. The Panel concludes that the Respondent has been properly notified and is in possession of the Complaint and its annexes. The Panel furthermore determines that it will take into consideration the Respondent’s email messages of February 1 and 6, 2020. Pursuant to article 2.1 of the Regulations, the Complainant’s request to transfer a 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; (b) The respondent has no rights or legitimate interest in the disputed domain name; and (c) The domain name has been registered or is being used in bad faith. A. Identical or Confusingly Similar The Complainant has submitted copies of the registration of the Trademark. The Panel finds that the Complainant has proven that it has rights in the Trademark. With regard to the assessment of identity or confusing similarity of the Domain Name with the Trademark, it is generally accepted that this test involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain name. While each case is to be judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)) 1. The applicable TLD in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see section 1.11.1, WIPO Overview 3.0). The Trademark consists of a stylized representation of the terms “KMAX KERATIN MAXIMIZATION”. The textual element “KMAX” is thereby dominant. Furthermore, the non-textual elements do not detract from the prominence of the textual element. The Domain Name incorporates the entirety of the Trademark. The Panel finds that the Domain Name is confusingly similar to the Trademark for purposes of the Regulations. Therefore, the Panel concludes that the Complainant has met the requirement of article 2.1 (a). B. Rights or Legitimate Interests The Complainant is required to demonstrate that the Respondent has no rights to or legitimate interest in the Domain Name. This condition is met if the Complainant makes out a prima facie case that the Respondent has no such rights or legitimate interest and if the Respondent fails to come forward with relevant evidence (see section 2.1, WIPO Overview 3.0 and e.g., Technische Unie B.V. and Otra Information Services v. Technology Services Ltd., WIPO Case No. DNL2008-0002). Noting the Complainant’s assertions set out in section 5.A above, the Panel is of the view that the Complainant has established a prima facie case and it is thus for the Respondent to prove that it has rights or legitimate interest in the Domain Name. In this regard, the Respondent argues that it actually sells the relevant branded goods, offers only those branded goods on the website, and clearly indicates its relationship with the Trademark owner. It appears that on the website the Respondent sells and offers only the branded goods. At the same time, since the termination of the Agreement on January 11, 2018, the Respondent is no longer an exclusive distributor, and the website in fact does not indicate the lack of such relationship between the Parties. Furthermore, the record establishes that the Agreement prohibited the Respondent from registering the Trademark as a domain name. In conclusion, the Panel finds that the Respondent has no rights or legitimate interest in the Domain Name under article 2.1 (b) of the Regulations. C. Registered or Used in Bad Faith Based on the Complainant’s use of the Trademark and the agreed prohibition of its use by the Respondent in a domain name, the Panel finds that the Respondent must have been aware of the Complainant’s rights in the Trademark when the Respondent registered the Domain Name. With regard to use, the Panel considers that the Domain Name still resolving to a website that reproduces the look and feel of the Complainant’s official website suggests that the Domain Name is being used to intentionally attempt to attract Internet users to the website for commercial gain, by creating a likelihood of confusion with the Trademark as to source, sponsorship, affiliation or endorsement of the website to which the domain name resolves, within the meaning of paragraph 3.2 (d) of the Regulations. Noting also the mentioned contractual prohibition, the Panel finds that, while the Regulations require only one of these two elements to be established, the Domain Name was registered and is being used by the Respondent in bad faith. 7. Decision For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders the domain name Richard C.K. van Oerle 1 In view of the fact that the Regulations are to an extent based on the Uniform Domain Name Dispute Resolution Policy (“UDRP”) it is well established that cases decided under the UDRP, and therefore WIPO Overview 3.0, are relevant to this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V.,WIPO Case No. DNL2008-0050).
Panelist
Date: February 26, 2020
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