The Complainant is Do or Drink, LLC, United States of America (“United States” or “US”), represented by Solace Law, United States.
The Respondent is Do Drink, Do Or Drink, 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 January 5, 2021. On January 5, 2021, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On January 6, 2021, SIDN transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 12, 2021, providing the registrant and contact information disclosed by SIDN, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 14, 2021. 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 January 25, 2021. In accordance with the Regulations, article 7.1, the due date for Response was February 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 22, 2021. The Center appointed Willem J. H. Leppink as the panelist in this matter on March 19, 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 following facts are undisputed: The Complainant markets board games under the name “Do or Drink”. The Complainant is the owner of several trademark registrations, including but not limited to the European Union Trade Mark (word mark) DO OR DRINK, with registration no. 018303234, with a filing date of September 4, 2020, and with a registration date of September 29, 2020, for goods in class 28 (the “Trademark”). It is also the owner of the United States trademark DO OR DRINK, with registration no. 6156717, with a filing date of September 27, 2019, and with a registration date September 22, 2020, for goods in class 28 (the “US Trade Mark”). The registration of the US Trademark indicates first use as of August 10, 2019. The Domain Name was registered on August 3, 2020, and resolves to a website that offers several goods using the Complainant’s name (the “Website”). 5. Parties’ Contentions A. Complainant Insofar as relevant for deciding this matter, the Complainant contends the following. The Domain Name is identical and confusingly similar to the Complainant’s Trademark, since the Domain Name fully incorporates the Trademark. The Respondent has no rights or legitimate interests in the Domain Name. The Complainant has not authorized the Respondent to use the Trademark in the Domain Name. The Respondent is not known by the Complainant, nor does the Respondent have authorization to sell the Complainant’s goods. Also, the Respondent is using the Domain name to divert potential customers who are looking for the Complainant, to a webpage which contains unauthorized counterfeit copies of the Complainant’s goods under the appearance that those goods are in fact being offered by the Complainant. Moreover, the Complainant claims that the use of the Domain Name is not a bona fide offering of goods or services. The Domain Name is registered and is being used in bad faith. The Respondent is using the Domain Name in order to disrupt the Complainant’s business and offer for sale counterfeit copies of the Complainant’s goods for direct commercial gain. 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 case prima facie meets the requirements of article 2.1 of the Regulations. A. Identical or Confusingly Similar Pursuant to article 2.1(a) under I 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 Trademark, which also grants protection in the Netherlands. The Panel finds that, 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,1 as set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. In this case, the Trademark is included in the Domain Name, and the addition of other terms, in the current case the term “game”, does not prevent a finding of confusing similarity under the first element, as set out in WIPO Overview 3.0, section 1.8. It is furthermore well-established under “.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 confusingly similar to the Trademark, as required by the Regulations. The Complainant has thus 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 earlier decisions under the Regulations, 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. DNL2008-0027). 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. The Respondent does not appear to be affiliated with the Complainant in any way. Neither does the record show that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever requested and been permitted in any way by the Complainant to register or use a domain name incorporating the Trademark. The Complainant has submitted screenshots purporting to demonstrate that the Website is designed to mislead the customer into purchasing what appears to be counterfeit copies of the Complainant’s products. Furthermore, the Complainant has submitted evidence suggesting that none of the customers seem to have actually received the goods they purchased via the Website. Noting further that the Respondent has failed to respond to the Complaint and thus has not taken any steps to rebut the Complainant’s arguments, the Panel finds that the Respondent lacks rights to or legitimate interests in the Domain Name. The Complainant has thus established the second element of article 2.1 of the Regulations. C. Registered or Used in Bad Faith In light of its considerations under Section 6.B, the facts presented by the Complainant and the lack of a response by the Respondent, the Panel finds that the Domain Name has been registered and is used in bad faith. The Domain Name was registered nearly a year after the Complainant filed its application for the US Trademark, and after the Complainant’s first use of such mark. In the Panel’s view, in the absence of any rebuttal by the Respondent and in light of the content of the Website, there is no plausible explanation why the Respondent registered the Domain Name other than the Respondent intending to trade off the goodwill and reputation associated with the Complainant. The Panel finds that the Respondent has intentionally attempted to attract Internet users to its website and to disrupt the Complainant’s business by creating a likelihood of confusion with the Trademark. The Panel is thus satisfied that the third element of article 2.1 of the Regulations has been met and that the Domain Name was registered and is being used in bad faith. 7. Decision For 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 both cases decided under the Regulations and 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: April 2, 2021
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