The Complainant is Refurbed GmbH, Austria, represented by Herbst Kinsky Rechtsanwälte GmbH, Austria.
The Respondent is Yvonne van Zadelhoff, 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 October 9, 2020. On the same day, the Center transmitted by email to SIDN a request for registrar verification in connection with the Disputed Domain Name. On October 12, 2020, 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 October 14, 2020. In accordance with the Regulations, article 7.1, the due date for Response was November 3, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2020. The Center appointed Thijs van Aerde as the panelist in this matter on November 27, 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 European online retailer for refurbished electronic products. Apart from its principal domain name The Complainant holds various trademark registrations for REFURBED, including two figurative European Union trademarks, registered on October 18, 2017 (registration no. 016840936), and February 1, 2019 (registration number 017965177), hereinafter jointly referred to as the “Trademarks”. According to the information provided by SIDN, the Respondent registered the Disputed Domain Name on January 6, 2020. At the time of the Decision, the Disputed Domain Name resolves to a registrar parking page. 5. Parties’ Contentions A. Complainant The Complainant contends that the Disputed Domain Name is identical to the Trademarks. The Complainant asserts that the Respondent is not authorized to use the Trademarks. Furthermore, the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods and services, therefore lacking any legitimate rights or interests in the Disputed Domain Name. The Complainant argues that the Respondent acquired the Disputed Domain Name for the purpose of selling it to the Complainant, which must be considered bad faith under the Regulations. 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 Disputed 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 Disputed Domain Name; and, c. the Disputed Domain Name has been registered or is being used in bad faith. As the 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 in fact. A. Identical or Confusingly Similar The Complainant established that it has rights in the Trademarks, registered in the European Union and thus protected under Dutch law. In accordance with section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) 1, the standing test for confusing similarity involves a relatively straightforward comparison between the invoked trademark and the domain name at issue. This test aims to assess whether the mark is recognizable within the domain name, and, being a standing requirement, is independent of the trademark law concept of “likelihood of confusion”. The Panel finds the Disputed Domain Name to be confusingly similar to the Trademarks, noting also that the country code Top-Level Domain (“ccTLD”) “.nl” may be disregarded when assessing the similarity between the domain name on the one hand, and the relevant trademark on the other hand (see, Roompot Recreatie Beheer B.V. v. Edoco LTD,WIPO Case No. DNL2008-0008). The Complainant has established the first element of the Regulations. B. Rights or Legitimate Interests Article 3.1 of the Regulations provides non-exclusive examples of instances in which a respondent may establish rights or legitimate interests in respect of a domain name, by demonstrating any of the following: a. before having any notice of the dispute, the registrant made demonstrable preparations to use the domain name (or a name corresponding to the Disputed Domain Name) in connection with a bona fide offering of goods or services; b. the registrant as an individual, business or other organization is commonly known by the domain name; c. the registrant 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. It is established case law under the Regulations that a respondent generally is in the best position to demonstrate rights or legitimate interests in a domain name. Section 2.1 of the WIPO Overview 3.0 sets out that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. In the present case, the Complainant has prior rights in the Trademarks which precede the Respondent’s registration of the Disputed Domain Name. The Complainant has asserted the Respondent’s lack of permission to use the Trademarks in the Disputed Domain Name. The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name, and thus it is on the Respondent to produce evidence to rebut this presumption. The Respondent has neither advanced rights or legitimate interests, nor rebutted the Complainant’s assertions. Accordingly, the Panel concludes that the Complainant prevails on the second element of Article 2.1 of the Regulations. C. Registered or Used in Bad Faith The Complainant asserts that it had been in contact with the Respondent before the filing of the Complaint. While the record shows that the Complainant initiated this contact, it appears likely that the Respondent hoped to attract the Complainant’s attention to the Disputed Domain Name, which could be of value to the Complainant in expanding its outreach. Following its receipt of a cease-and-desist letter from the Complainant’s legal representative, the Respondent countered that the Complainant could “buy the domain name at discount for EUR 10,000”. The fact that the Disputed Domain Name reproduces the Trademarks, together with the Respondent’s attempt to sell the Disputed Domain Name for valuable consideration in excess of the cost of registration, and the Complainant’s prominence in Google search results, suggests that the Respondent was aware of the Trademarks at the time of registration of the Disputed Domain Name. As noted in section 3.3 of the WIPO Overview 3.0, previous UDRP panels have consistently found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive-holding. In accordance with this doctrine, the Panel takes into account the apparent reputation of the Trademarks, the Respondent’s attempt to sell the Disputed Domain Name for an amount far in excess of the cost of registration, and its failure to submit a response. The Panel furthermore notes that the Complainant has pointed out that the Respondent has been a party to a previous domain name case initiated earlier this year by a competitor of the Complainant, i.e., JUNG S.A.S. v. Yvonne van Zadelhoff,WIPO Case No. DNL2020-0013. Similar to the present case, the respondent had registered a domain name incorporating a third-party trademark and failed to provide evidence of actual or contemplated good-faith use, while the domain name remained inactive. This circumstance suggests that the Respondent is engaged in a pattern of registering domain names in order to prevent the owners of trademarks from reflecting their mark in a corresponding domain name. Based on the foregoing, the Panel concludes that the Disputed Domain Name was registered and is being used in bad faith. The Panel holds that the Respondent registered the Disputed Domain Name primarily for the purpose of selling it to the Complainant for valuable consideration in excess of the cost of registration, as established by article 3.2(a) of the Regulations. The Panel therefore 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 Thijs van Aerde 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 both cases decided under the Regulations and cases decided under 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).
Panelist
Date: December 11, 2020
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