ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION PandaDoc, Inc. v. PERSON Case No. DNL2022-0011 1. The Parties The Complainant is PandaDoc, Inc., United States of America ("United States"), represented by Latimer LeVay Fyock LLC, United States. The Respondent is PERSON, Germany. 2. The Domain Name and Registrar The disputed domain name
(the "Disputed Domain Name") is registered with SIDN through 1API GmbH. 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 1, 2022. On March 2, 2022, the Center transmitted by email to SIDN a request for registrar verification in connection with the Disputed Domain Name. On March 3, 2022, 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 March 11, 2022, providing the information disclosed by SIDN, and inviting the Complainant to amend the Complaint in this light. The Complainant filed an amended Complaint on March 11 and 14, 2022. The Center verified that the Complaint as amended satisfies 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 March 16, 2022. In accordance with the Regulations, article 7.1, the due date for Response was April 5, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 7, 2022. The Center appointed Thijs van Aerde as the panelist in this matter on April 22, 2022. 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. page 2 4. Factual Background The Complainant states that it was founded in 2013 and describes itself as a developer of document automation software, providing its products and services to over 30,000 customers. The Complainant operates the domain name , which was registered on March 7, 2013, and provides a Dutch version of its website at "www.pandadoc.com/nl/". The Complainant holds an International trademark PANDADOC, registered on October 21, 2021, registration No. 1630324, designating, inter alia, the Benelux (the "Trademark"). Additionally, the Complainant evidenced a United States trademark PANDADOC, registered on February 2, 2016, registration No. 4894484. The Disputed Domain Name was registered by the Respondent on December 15, 2018, and resolves to a pay-per-click ("PPC") parking page, showing sponsored links relating to "template documents". The parking page also includes a header stating that the Disputed Domain Name may be for sale and a contact link for potential inquiries. 5. Parties' Contentions A. Complainant The Complainant asserts that the Disputed Domain Name is identical to the Trademark to which the Complainant has rights. The Complainant coined the term "pandadoc" and to the best of the Complainant's knowledge, this term is not used by any other party. By using the Trademark in the Disputed Domain Name, the Respondent creates a likelihood of confusion. The Complainant contends that the Respondent has no rights to or legitimate interests in the Disputed Domain Name. The Respondent is not affiliated with the Complainant and is not licensed or authorized to use the Trademark. The Disputed Domain Name was registered in December 2018, over five years after the Complainant was incorporated. The Disputed Domain Name resolves to an English language website which contains links to the Complainant's competitors. The Respondent is located in Germany and is not commonly known by the Disputed Domain Name, nor has the Respondent acquired any trademark rights in the term "pandadoc" in the Netherlands. The Complainant argues that the use and registration of the Disputed Domain Name by the Respondent are in bad faith. Following the Complainant's inquiry to acquire the Disputed Domain Name, the Respondent demanded an amount of USD 23,000 in return. According to the Complainant, the Respondent is aware of the Trademark and the use of the Disputed Domain Name infringes the Complainant's intellectual property rights, constituting 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 page 3 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 Trademark. The Disputed Domain Name incorporates the Trademark in its entirety, save for the country Top-Level Domain ("ccTLD") ".nl", which may be disregarded for the purpose of assessing the merits under the first element. See, Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Zaaknr. DNL2008-0008. The Panel finds that the Disputed Domain Name is identical to the Trademark. The Complainant has thus satisfied the first limb of article 2.1 of the Regulations. B. Rights or Legitimate Interests Under this second element, the Complainant must make out a prima facie case that the Respondent lacks rights to or legitimate interests in the Disputed Domain Name. Once the Complainant fulfils this requirement, the burden of production then shifts to the Respondent to present evidence showing that it does have rights to or legitimate interests in the Disputed Domain Name. See, section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").1 The Complainant has brought forward sufficient arguments to make out the required prima facie case. The Respondent has not replied to the Complainant's contentions and there is nothing on the website - containing PPC links and stating that it may be for sale - that could suggest that the Respondent is making a bona fide offering of goods or services or is making a legitimate noncommercial or fair use of the Disputed Domain Name. The Panel concludes that the Respondent does not have rights to or legitimate interests in the Disputed Domain Name. Accordingly, the Complainant has satisfied the second element of the Regulations. C. Registered or Used in Bad Faith The Respondent uses the Disputed Domain Name for a PPC website that trades on the Complainant's trademark rights, providing Internet users with links to the Complainant's competitors. Based on the evidence submitted by the Complainant, it reached out to the Respondent upon discovery of the Disputed Domain Name, offering to reimburse the Respondent for its out-of-pocket costs related to the Disputed Domain Name. In response, the Respondent demanded a sum of USD 23,000 for the transfer of the Disputed Domain Name to the Complainant. This suggests that the Respondent acquired the Disputed 1 In view of the fact that the Regulations are substantially similar to 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). page 4 Domain Name primarily for the purpose of selling it to the Complainant or to the Complainant's competitors for valuable consideration in excess of the cost of registration. While the registration of the Disputed Domain Name predates the Complainant's trademark rights protected under Dutch law, the Panel finds that it was undertaken in bad faith. The Panel finds it inconceivable that the Respondent was not aware of the Complainant when registering the Disputed Domain Name, as it matches the Complainant's prior United States trademark rights as well as the Complainant's prior domain name. (In fact, given the Complainant's presence in the Netherlands (and the use of a Dutch language website), it is likely that the Respondent anticipated on the Complainant's interest in a domain name using a ".nl" ccTLD.) This notion is reinforced by the fact that the Respondent itself, allegedly located in Germany, has no evident connection with the Netherlands. Furthermore, the Respondent's use of the Disputed Domain Name in any event cannot amount to anything but use in bad faith. The Panel 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 domain name be transferred to the Complainant. /Thijs van Aerde/ Thijs van Aerde Panelist Date: May 6, 2022
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