Complainant is Lagardère Sports, France, represented by Nameshield, France.
Respondent is S Goedan, the Netherlands. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2020. On July 20, 2020, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On July 21, 2020, SIDN transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 3, 2020. In accordance with the Regulations, article 7.1, the due date for Response was August 23, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 26, 2020. The Center appointed Remco M.R. van Leeuwen as the panelist in this matter on September 11, 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 Complainant is a sports and entertainment agency and the French subsidiary of Lagardère Group. Complainant is the owner of SPORTFIVE, an international sport rights marketing agency with a global network of locations and affiliated companies. According to the website linked to Complainant’s domain name - the International word mark SPORTFIVE, registered on December 6, 2001, with registration number 778676, for services in classes 35, 36, 41 and 42; and - the European Union word mark SPORTFIVE, registered on March 25, 2003, with registration number 2489847, for services in classes 35, 41 and 42; and - the European Union figurative mark SPORTFIVE, registered on October 19, 2004, with registration number 2566552 for services in classes 35, 36, 41, 42 and 43; and - the French word mark SPORTFIVE, registered on June 7, 2001, with registration number 3104355, for services in classes 35, 38, 41, 42, 43 and 45 (the “Trademarks”). The Domain Name was registered on March 5, 2008. Complainant has submitted evidence that at the time the Complaint was filed the Domain Name was not resolving to an active webpage. The Panel accessed the website linked to the Domain Name on September 15, 2020. The website was unavailable and displayed a 404 error message, indicating that the website could not be found on the server. 5. Parties’ Contentions A. Complainant Complainant states that it has rights in the Trademarks and that the Domain Name is identical to the Trademarks. Complainant notes that the Trademarks predate the registration of the Domain Name and that the Domain Name incorporates the Trademarks in its entirety. Complainant also argues that both its Trademarks, as well as its activities are well-known throughout the European Union. Complainant further argues that Respondent, who is unknown to Complainant, has no rights or legitimate interests in the Domain Name, since Respondent is not affiliated in any way with Complainant. Complainant further argues that it does not carry out any activity for, or has any business with Respondent. Complainant also argues that it is well established that the non-use of a Domain Name that does not resolve to an active website, does not prevent a finding of bad faith use under the doctrine of passive holding. In addition, Complainant argues that the fact that the Domain Name incorporates Complainant’s well-known Trademarks in their entirety, indicates that Respondent registered and used the Domain Name with the intention to attract, for commercial gain, Internet users to his website through likelihood of confusion which may arise with the Trademarks of Complainant as to the source, sponsorship, affiliation, or endorsement of his website or other online location or of a service on his website or location, which would constitute a registration of the Domain Name in bad faith. Complainants concludes that the circumstances of this case suggest that Respondent has registered or acquired the Domain Name in bad faith, primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to Complainant for remuneration in excess of Respondent’s documented out-of-pocket costs directly related to the Domain Name. Complainant requests the transfer of the Domain Name. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings As Respondent has not filed a response, the Panel shall rule on the basis of 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. 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: I. a trademark, or trade name, protected under Dutch law in which 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 Complainant undertakes public activities on a permanent basis; 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 submitted a copy of the registration of the Trademarks demonstrating that Complainant is the holder of the Trademarks. The two European Union Trademarks of Complainant are protected under Dutch law. The Panel assumes the validity of these Trademarks and will review the Complaint on this basis. The Panel notes that it is established “.nl” case law that the country code Top-Level Domain suffix “.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 Complainant’s word marks in their entirety, and the Domain Name is textually, visually and phonetically identical. The Panel finds that the Domain Name is confusingly similar to the Trademarks for purposes of the Regulations. Therefore, the first requirement of article 2.1(a) under I of the Regulations has been 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 Complainant makes out a prima facie case that Respondent has no such rights or legitimate interests and if Respondent fails to rebut this with appropriate allegations or evidence demonstrating a right to or legitimate interests in the Domain Name (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. Complainant has demonstrated that the Domain Name is currently unavailable and yields an error message indicating that the website could not currently be found on the server. This does not give rise to a right or legitimate interest on the part of Respondent (see e.g., Akzo Nobel Coatings International B.V. v. E. vanden Hoek,WIPO Case No. DNL2009-0005). The Panel finds that Complainant has fulfilled the obligation to 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 the arguments of Complainant and/or shown rights to or legitimate interests in the Domain Name. Consequently, the Panel is satisfied that Respondent has no rights or legitimate interests in the Domain Name and concludes that Complainant has met the second requirement of article 2.1(b) of the Regulations. C. Registered or Used in Bad Faith When Respondent registered the Domain Name, the Trademarks had already been registered and used in connection to Complainant’s activities. Considering the distinctiveness and reputation of Complainant’s Trademarks, the Panel finds that Respondent knew or should have known of Complainant’s rights. This is also suggested by Respondent’s choice of registration, namely of a domain name which includes Complainant’s Trademark in its entirety. The Panel notes that the Domain Name currently does not resolve to an active website. It is well established that non-use of a domain name does not prevent a finding of bad faith use under the doctrine of passive holding (see section 3.3. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition).1 In addition, the Panel notes that the Domain Name incorporates Complainant’s word marks in their entirety. In the circumstances of this case, and considering Complainant’s renown, the Panel concludes that Respondent registered and used the Domain Name with the intention to attract, for commercial gain, Internet users to his website through likelihood of confusion which may arise with the Trademarks as to the source, sponsorship, affiliation, or endorsement of his website or other online location or of a service on his website or location, which constitutes registration and use in bad faith (see e.g., Avast Software s.r.o. v. Prashant Kumar,WIPO Case No. DNL2020-0023). In conclusion, 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 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 both the Regulations and the UDRP, and therefore the WIPO Overview 3.0, are relevant to this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V.,WIPO Case No. DNL2008-0050).
Further, no commercial relationship exists between Complainant and Respondent. The Panel could not establish any indication that any of the circumstances as described in article 3.1 of the Regulations apply, nor that Respondent in any possible other way has rights to or legitimate interests in the Domain Name.
Panelist
Date: September 25, 2020
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