Complainant is bol.com B.V., the Netherlands, represented by Novagraaf Nederland B.V., Netherlands.
Respondent is Host Master, 1337 Services LLC, Saint Kitts and Nevis. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2021. On February 4, 2021, the Center transmitted by email to SIDN a request for Registrar verification in connection with the Domain Name. On February 5, 2021, SIDN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details, and furthermore confirming the identity and contact details of the Registrar. On behalf of the Panel the Center on May 20, 2021, the Center sent a further verification request to the Registrar for the Respondent as a privacy service; the Center received no further disclosures of contact details or communication from Respondent. The Center verified that 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 February 25, 2021. In accordance with the Regulations, article 7.1, the due date for response was March 17, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 25, 2021. The Center’s Notification of Complaint was sent to Respondent’s postal addresses on April 9, 2021, but Respondent did not avail itself of the additional ten-day response opportunity (i.e., through April 19, 2021). No communication was received from Respondent. The Center appointed Remco M.R. van Leeuwen as the panelist in this matter on April 26, 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 Complainant is a well-known Dutch enterprise, active in the field of (online) purchase and sale of various new and used products. According to Complainant, its services are highly successful in the Benelux. Complainant has spent considerable time, effort and money since 1999 in advertising and promoting its online purchase and sale services in connection under its trademarks. Complainant is the proprietor of multiply trademarks, including various Benelux trademark registrations for, amongst others: - the word mark BOL, registered on May 28, 1998, with registration number 0637248, for services in class 35; and - the word mark BOL, registered on February 7, 2008, with registration number 0834135, for goods and services in classes 9, 16, 28, 35, 38, 39 and 42; and - the word mark BOL, registered on October 14, 2008, with registration number 0847963, for services in classes 35, 37, 38, 41, and 42; and - the word mark BOL.COM, registered on August 25, 2000, with registration number 0670244 for services in classes 35, 37, 38, 41, and 42 (together the “Trademarks”). Complainant communicates on the Internet through its website “www.bol.com”, where it uses its BOL.COM trademark. Complainant is also the proprietor of numerous domain names consisting of the Trademarks. SIDN informed the Center that the Domain Name was first registered on October 28, 2020, and that the date of registration of the Domain Name by the current registrant is also October 28, 2020. Complainant has evidenced that when it filed the Complaint, the website linked to the Domain Name advertised that “bolsales” offers tools which boost the sales of “bol.com” accounts, and furthermore displayed various trademarks of Complainant. The Panel observed the same when it accessed the website on May 10, 2021. 5. Parties’ Contentions A. Complainant Complainant states that it has rights in the Trademarks and that the Domain Name is confusingly similar to the Trademarks. Complainant asserts that the Trademarks are well-known and that its rights in the Trademarks predate the registration of the Domain Name. Complainant states that the Trademarks have been used by Complainant since 1999 and that the term “bol.com” has no descriptive or other meaning in the Dutch and the English language. Complainant submits that the Domain Name is confusingly similar to the Trademark, because it incorporates the Trademark BOL in its entirety, and that the confusing similarity is not removed by the addition of the term “sales”; this addition rather increases the likelihood of confusion, because Complainant is well-known for its online sales. Complainant contends that Respondent has no rights or legitimate interests in respect of the Domain Name because Respondent is not authorized or allowed by Complainant to make any use of the Trademarks, in a domain name or otherwise. Complainant further states that there is no commercial link between Complainant and Respondent. Complainant states that Respondent does not own any rights in the Trademarks nor does Respondent have any other right to the denominations “bol” and “bol.com” or the Trademarks. Complainant further argues and evidences that the website linked to the Domain Name displays various trademarks of Complainant. According to Complainant, consumers will therefore assume that the Domain Name is affiliated to Complainant. This is further reinforced by the circumstance that Complainant also owns a multitude of domain extensions with the Trademarks. Finally, Complainant alleges that the registration and use of the Domain Name was, and currently is, in bad faith. Complainant contends that given the significant reputation of Complainant’s BOL.COM trademarks and the fact that Respondent is using the BOL.COM trademark and logo on its website, it is inconceivable that Respondent was not aware of Complainant at the time it registered the Domain Name. Complainant further argues that the use of the Trademarks in the Domain Name and the use of various of its trademarks on the website linked to the Domain Name may yield commercial gain for Respondent, as consumers may presume the existence of a commercial link between the Parties. According to Complainant, Respondent clearly registered the Domain Name for the purpose of disrupting the business of Complainant or even illicit activities such as phishing. Complainant concludes that the foregoing should be seen as an indication that the Domain Name was registered by Respondent for commercial gain and thus in bad faith. Complainant requests the transfer of the Domain Name. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings The Panel notes that, in accordance with article 16.4 of the Regulations, the Center has fulfilled its obligation to employ reasonably available means to achieve actual notice of the Complaint to Respondent. 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 their holder. The Trademarks are protected under Dutch law. The unrebutted evidence provided in the Complaint regarding the Trademarks constitutes prima facie evidence that Complainant has trademark rights for purposes of the Regulations, and accordingly the Panel will review the Complaint on this basis. Turning to whether the Domain Name is identical or confusingly similar to the Trademark, the Panel observes that the Domain Name comprises: (a) an exact reproduction of the Trademark BOL; (b) followed by the word “sales”; (c) followed by the country code Top-Level Domain (“ccTLD”) “.nl”. It is well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be deemed confusingly similar to that mark despite the addition of a word, in this case, the word “sales” (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, and section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).1 Noting precedent on this point, the Panel accepts Complainant’s contention that the addition of the non-distinctive word “sales” after the Trademark is an additional element that does not serve to distinguish the Domain Name, nor does it prevent a finding of confusing similarity between the Trademarks and the Domain Name. The Panel also notes that it is established case law under the Regulations that the ccTLD “.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, e.g., 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). Consequently, 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)(I) of the Regulations is 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 rights 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. Noting these reasons, 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. Because 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. 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 plausible other way has rights to or legitimate interests in the Domain Name. Consequently, the Panel concludes that Complainant has met the second requirement of article 2.1(b) of the Regulations. C. Registered or Used in Bad Faith Article 2.1(c) of the Regulations requires Complainant to demonstrate that the Domain Name has been registered or is being used in bad faith. Article 3.2 of the Regulations sets out certain non-exhaustive circumstances to be construed as evidence of both of these requirements. The Panel finds that the evidence in the case shows that Respondent has registered and used the Domain Name in bad faith. When Respondent registered the Domain Name, the Trademarks were already registered and being used by Complainant for its products and services. Considering the distinctiveness and reputation of the Trademarks and Complainant’s long-standing rights, the Panel finds that Respondent in all likelihood knew, and in any event should have known of Complainant’s rights at the time of registration of the Domain Name. This is also suggested by the fact that Respondent registered a domain name which includes Complainant’s Trademarks in its entirety. The conclusion that Respondent targeted Complainant is reinforced by the fact that it is established that terms with an “inherent Internet connotation” (e.g. Furthermore, after it filed the Complaint, Complainant received an email from Respondent in which the latter offered to transfer the Domain Name to Complainant in return for a payment of EUR 20,000. Coupled with Respondent’s lack of rights to or legitimate interests in the Domain Name, Respondent’s registration of the Domain Name for the apparent purpose of selling it to Complainant for valuable consideration in excess of Respondent’s costs directly related to the Domain Name, is also indicative of bad faith on the part of Respondent in its registration of the Domain Name. 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 all 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 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: May 27, 2021
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