The Complainant is Škoda Auto a.s., Czech Republic, represented by Baker & McKenzie, Czech Republic.
The Respondent is ETS Francois Sprl, 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 December 20, 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 23, 2019, 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 January 10, 2020. In accordance with the Regulations, article 7.1, the due date for Response was January 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 2020. The Center appointed Willem J. H. Leppink as the panelist in this matter on February 12, 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 a well-known car manufacturer and part of the Volkswagen Group. The Complainant is the owner of many trademark registrations for the wordmark ŠKODA (as well as SKODA), amongst others the international trademark registration ŠKODA No. 197564 designating the Benelux, registered in 1956 (hereinafter: the “Trademark”) and the European Union Trademark registration MYŠKODA No. 018007941, registered in January 2019 (hereinafter: the “MYŠKODA Trademark”). The Complainant launched a “MyŠkoda software application” (the “Application”) at the turn of 2015 and 2016, when it was present on the Internet under the name “MyŠkoda” or “Service app”. The Domain Name was registered on June 6, 2018, by the Respondent. The website to which the Domain Name resolves is not active. 5. Parties’ Contentions A. Complainant The Complainant contends the following. The Domain Name is identical to the MYŠKODA Trademark. The addition of the country-code Top-Level Domain (“gTLD”) suffix “.nl” is non-distinctive and a mere technical requirement and disregarded in the similarity analysis. Furthermore, the Domain Name includes the Trademark in its entirety, apart from the diacritic above the “s”. The prefix “my” does not have a distinctive meaning in the given case. Therefore, the Domain Name is identical to the MYŠKODA Trademark and/or confusingly similar to the Trademark. The Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent is not authorized or permitted to use the Trademark, nor is the Respondent associated with the Complainant. Furthermore, the Respondent is not using the Domain Name in connection with a bona fide offering of goods and services. In addition, the Domain Name is not in use at all. The Domain Name was registered and is being used in bad faith. The Complainant introduced the Application in, amongst others, the Dutch market at the turn of 2015 - 2016. The Application has been commonly used on the Internet no later than August 2016. The Respondent must have been well aware of the Complainant and its rights, and its conduct amounts to cybersquatting. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to article 2.1 of the Regulations the Complainant must prove each of the following three elements: a. the Domain Name is identical or confusingly similar to: I) a trademark or trade name protected under Dutch law in which the Complainant has rights; or II) a personal name registered in the General Municipal Register (Gemeentelijke Basisadministratie) of a municipality in the Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in the Netherlands under which the Complainant undertakes public activities on a permanent basis; and b. the 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. Article 10.3 of the Regulations provides that in the event 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. The Panel thereby notes that this does not mean that the requested remedy should automatically be awarded. The Panel will have to determine whether the Complainant’s prima facie case meets the requirements of article 2.1 of the Regulations. A. Identical or Confusingly Similar Pursuant to article 2.1(a) of the Regulations, the Complainant must establish that the Domain Name is identical or confusingly similar to a trademark or trade name in which the Complainant has rights. The Complainant has shown that it has rights in the MYŠKODA Trademark and the Trademark. The Domain Name incorporates the Trademark in its entirety. Previous panels have found that a domain name is confusingly similar to a complainant’s trademark where the domain name incorporates the trademark in its entirety. For the purpose of the comparison between the Domain Name and the Trademark the difference between “š” and “s” may be disregarded as Internet users will use these interchangeably. It is accepted .nl case law that the country code Top-Level Domain “.nl” may be disregarded for purposes of article 2.1(a) of the Regulations. The Panel finds that the Domain Name is identical to the MYŠKODA Trademark and confusingly similar to the Trademark under the Regulations. The Complainant has established the first element of article 2.1 of the Regulations. B. Rights or Legitimate Interests The Respondent did not reply to the Complainant’s contentions. Consistent with .nl case law, the Complainant must prima facie demonstrate that the Respondent has no rights to or legitimate interests in the Domain Name. If the Complainant succeeds in making out this prima facie case, the burden of production shifts to the Respondent, who will then have to come forward with appropriate allegations or evidence demonstrating a right to or legitimate interests in the Domain Name (See, Auto 5 v. E. Shiripour,WIPO Case No. DNL 2008-0027). The Respondent may demonstrate such rights or legitimate interests inter alia through any of the following circumstances based on article 3.1 of the Regulations: a. before having any notice of the dispute, the Respondent made demonstrable preparations to use the Domain Name (or a name corresponding to the Domain Name) in connection with a bona fide offering of goods or services; or b. the Respondent as an individual, business or other organization is commonly known by the Domain Name; or c. the Respondent is making a legitimate noncommercial use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish or otherwise damage the relevant trademark, trade name, personal name, name of a Dutch public legal entity or name of an association or foundation located in the Netherlands. There is no evidence in the case file that the Respondent has any rights or legitimate interests in the Domain Name. The Respondent does not appear to be affiliated with the Complainant in any way. There is no evidence that the Respondent is commonly known as “myskoda” or “skoda”. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant to register or use the MYŠKODA Trademark, or to apply for or use any domain name incorporating either of these. The Respondent did not demonstrate any use or demonstrable preparation to use the Domain Name in connection with a bona fide offering of goods or services. Finally, in the circumstances of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the Domain Name is further supported by the fact that no response was filed by the Respondent. See GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang,WIPO Case No. D2005-0090; and Pomellato S.p.A. v. Richard Tonetti,WIPO Case No. D2000-04931 . Consequently, the Panel finds it established that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant has established the second element of article 2.1 of the Regulations. C. Registered or Used in Bad Faith The Panel notes that the Trademark is, as well as the activities of the Complainant, well-known throughout the world. Accordingly, in the Panel’s view, the Respondent must have been aware of the Complainant’s existence and rights at the time the Respondent registered the Domain Name. In addition, there is no other plausible explanation why the Respondent registered the Domain Name, other than the Respondent being aware of the Complainant, the Trademark and the Application. The Domain Name was registered at the time the Application was launched, and received significant media attention. The Panel finds that, in accordance to section 3.8.2 in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the facts of the case establish that the Respondent’s intent in registering the Domain Name, which is identical to the Application, was to unfairly capitalize on the Complainant’s rights in this regard. Therefore, the Panel finds that the Respondent registered the Domain Name in bad faith. Furthermore, panels have consistently held that the non-use of a domain name (including a blank or “under construction” page) would not prevent a finding of bad faith under the doctrine of passive holding. See WIPO Overview 3.0, section 3.3. The Panel finds that the circumstances of this case give rise to such a finding here. The Panel finds that the Complainant has also established the third element of article 2.1 of the Regulations. 7. Decision For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name Willem J. H. Leppink 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 are relevant to this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V.,WIPO Case No. DNL2008-0050).
Panelist
Date: February 24, 2020
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