Complainant is CCA and B, LLC, United States of America (“United States”), represented by The Sladkus Law Group, United States.
Respondent is Luchtsport Centrum Overijssel, 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 May 20, 2021. On May 21, 2021, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On May 25, 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 Complainant on May 31, 2020, providing the registrant and contact information disclosed by SIDN, and requesting Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 2, 2021. The Center verified that the Complaint as amended 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 June 3, 2021. In accordance with the Regulations, article 7.1, the due date for Response was June 23, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 24, 2021. The Center appointed Dinant T. L. Oosterbaan as the panelist in this matter on July 12, 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 family owned and operated publishing company. A children’s book entitled “The Elf on the Shelf: A Christmas Tradition” was published in 2005. Since that time, Complainant has published, marketed and sold this book alongside a line of Christmas related products aimed at families with children. Complainant also maintains a large social media presence. According to the evidence submitted by Complainant, Complainant has obtained multiple registrations for the trademark THE ELF ON THE SHELF, including European Union Trade Mark THE ELF ON THE SHELF number 0966832, registration date June 11, 2008. In addition, Complainant owns the domain name SIDN informed the Center that the Domain Name was registered by Respondent on November 11, 2016. The Domain Name at the time of the decision (and when the Complaint was filed) does not resolve to an active webpage. The trademark registrations of Complainant were issued prior to the registration of the Domain Name. 5. Parties’ Contentions A. Complainant Complainant submits that the Domain Name is confusingly similar to Complainant’s trademark THE ELF ON THE SHELF as the Domain Name incorporates the substantial majority of Complainant’s trademark, everything but the first “the”. According to Complainant, Respondent has no rights to or legitimate interests in the Domain Name. According to the information provided by Complainant, the Domain Name has never resolved to an active website. Complainant submits that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. Complainant asserts that it has no affiliation, association or connection with Respondent. Respondent is also not commonly known by the Domain Name. According to Complainant, the Domain Name has been registered and is being used in bad faith. Complainant asserts that Respondent knew or should have known at the time of registration that the Domain Name was either identical or confusingly similar to Complainant’s trademarks. A combination of other factors supports a finding of bad faith, including the fact that the Domain Name is passively held and the fact that Respondent did not respond to a request of Complainant’s counsel to transfer the Domain Name voluntarily. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Based on article 2.1 of the Regulations, a claim to transfer a domain name must meet three cumulative conditions: a. the domain name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which the complainant has rights, or other name mentioned in article 2.1(a) under II of the Regulations; 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. As Respondent has not filed a Response, the Panel shall rule based on 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 Complainant has established that it is the owner of multiple trademarks, including the European Union Trade Mark THE ELF ON THE SHELF. The Domain Name incorporates almost the entirety of the THE ELF ON THE SHELF trademark, the only difference being the omission of the first three descriptive letters “the” of the trademark. Decisions under the Regulations have found that a domain name is confusingly similar to a complainant’s trademark where the domain name incorporates the distinctive part or entirety of such trademark. The omission of the first three letters “the” may thus be disregarded for this purpose. See also sections 1.7 and 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).1 The country code Top-Level Domain “.nl” may also be disregarded for purposes of article 2.1(a) of the Regulations, see Roompot Recreatie Beheer B.V. v. Edoco LTD,WIPO Case No. DNL2008-0008. The Panel finds that the Domain Name is confusingly similar to Complainant’s THE ELF ON THE SHELF trademark. B. Rights or Legitimate Interests As stated in the WIPO Overview 3.0, “while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. In the Panel’s opinion, Complainant has made out a prima facie case that Respondent lacks rights to or legitimate interests in the Domain Name. According to the undisputed submission and evidence provided by Complainant, the Domain Name at the time of the Decision does not resolve to an active website and had never resolved to an active website. The Panel does not consider such use a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the Domain Name. There is no evidence that Complainant authorized Respondent to register and use its trademark in any manner. In addition, there has never been any affiliation, association, connection or relationship between Complainant and Respondent. There is also no indication that Respondent is commonly known by the Domain Name. No Response to the Complaint was filed and Respondent has not rebutted Complainant’s prima facie case. The Panel finds that Respondent has no rights to or legitimate interests in the Domain Name. C. Registered or Used in Bad Faith The Panel finds that the Domain Name has been registered and is being used in bad faith. Considering the distinctiveness of the THE ELF ON THE SHELF trademark and the overall circumstances of this case, the Panel finds it highly likely that Respondent knew or should have known Complainant’s THE ELF ON THE SHELF trademark at the time of registration, especially in view of the fact that the Domain Name includes almost the entirety of Complainant’s THE ELF ON THE SHELF trademark. The Panel notes that at the time of the decision the Domain Name 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 3.0). In addition, the Panel notes that the Domain Name incorporates Complainant’s trademark almost in its entirety, which indicates, in the circumstances of this case, that Respondent registered and used the Domain Name with the intention to attract, for commercial gain, Internet users to its website through likelihood of confusion which may arise with the trademarks of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or other online location or of a service on its website or location, which constitutes registration and use in bad faith. 7. Decision For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name Dinant T. L. Oosterbaan 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, may be relevant to the determination of this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V.,WIPO Case No. DNL2008-0050).
Panelist
Date: July 19, 2021
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