The Complainants are Noatum Holdings S.L.U., Spain (“First Complainant”), and Noatum Logistics Netherlands B.V., the Netherlands (“Second Complainant”), represented by Leeway Advocaten, the Netherlands.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Alexander Sokolov, 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 December 8, 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 December 9, 2020, SIDN transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 27, 2020, providing the registrant and contact information disclosed by SIDN and the Registrar, and requesting the Complainant to submit an amendment to the Complaint. In response to a notification by the Center, the Complainant filed an amended Complaint on December 28, 2020. 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 the Respondent of the Complaint, and the proceedings commenced on December 30, 2020. In accordance with the Regulations, article 7.1, the due date for Response was January 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 21, 2021. The Center appointed Thijs van Aerde as the panelist in this matter on February 22, 2021. 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 Complainants form part of a multinational group providing transport and logistics services in 28 countries. The First Complainant’s main office is located in Barcelona, Spain. The Second Complainant, a subsidiary of the First Complainant, is based in the Netherlands. The Complainants operate their websites inter alia under the domain names The First Complainant holds various trademark registrations for NOATUM, including a European Union trademark, registered on June 3, 2011 (registration no. 009676453), hereinafter referred to as the “Trademark”. According to the information provided by SIDN, the Respondent registered the Disputed Domain Name on May 5, 2020. At the time the Complaint was filed, the Disputed Domain Name resolved to a website impersonating the Complainants. 5. Parties’ Contentions A. Complainants The Complainants contend that the Disputed Domain Name is confusingly similar to the Trademark. The Complainants assert that the Respondent is not authorized to use the Trademark. Furthermore, the Respondent is not commonly known under the Disputed Domain Name and lacks any legitimate rights or interests to the Disputed Domain Name. The Complainants argue that the Respondent acquired the Disputed Domain Name for the purpose of impersonating the Complainant, which must be considered bad faith under the Regulations. B. Respondent The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings Pursuant to article 2.1 of the Regulations the Complainants 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 (one of) the Complainants have rights; or 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 First Complainant established that it has rights in the Trademark, registered in the European Union and thus protected under Dutch law. The Disputed Domain Name incorporates the First Complainant’s NOATUM trademark, in combination with the element “bvlogistics”. The Panel further notes that the Disputed Domain Name incorporates all elements of the Second Complainant’s statutory name, albeit in a different order, with the exception of “Netherlands”. The Panel finds the Disputed Domain Name to be confusingly similar to the Trademark, noting also that the country code Top-Level Domain “.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 Complainants have established the first element of article 2.1 of the Regulations. B. Rights or Legitimate Interests The Complainants have made a prima facie case that the Respondent lacks rights to or legitimate interests in the Disputed Domain Name. The evidence on record shows that the Respondent does not make legitimate noncommercial or fair use of the Disputed Domain Name as it misleadingly presents Internet users with a website impersonating the Complainants. There are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the Disputed Domain Name. The Respondent has failed to rebut the Complainants’ assertions. Accordingly, the Panel concludes that the Complainants prevail on the second element of article 2.1 of the Regulations. C. Registered or Used in Bad Faith Conclusive evidence before the Panel indicates that the Disputed Domain Name was registered and is being used to impersonate the Second Complainant, leading Internet users to believe that they are dealing with the Complainants. In its attempt to mislead and defraud Internet users, the Respondent placed the Second Complainant’s business address on the website at the Disputed Domain Name, in combination with a false telephone number and email address. This demonstrates the Respondent’s fraudulent intentions with the Disputed Domain Name, affecting the Complainants’ reputation and compromising business transactions with existing and prospective customers. Further evidence of the Respondent’s bad faith lies in the fact that large portions of the website at the Disputed Domain Name have been copied from the Complainants’ official websites, including extensive textual elements. It is thus apparent that the Respondent had full knowledge of the Complainants and registered the Disputed Domain Name with the intent to impersonate the Complainants. The Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation, or endorsement of the website at the Disputed Domain Name, as established by article 3.2(d) of the Regulations. The Panel therefore finds that the Complainant has 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 Disputed Domain Name Thijs van Aerde
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 (one of) the Complainants undertake public activities on a permanent basis; and,
Panelist
Date: March 8, 2021
Full & Egal Universal Law Academy