WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Consumentenbond v. Fundacion Private Whois
Case No. D2013-2144
1. The Parties
The Complainant is Consumentenbond of The Hague, Netherlands, represented by SOLV Advocaten, Netherlands.
The Respondent is Fundacion Private Whois of Panama.
2. The Domain Name and Registrar
The disputed domain name <actualiteitenconsumentengids.com> is registered with Internet.bs Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2013. On December 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 16, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2014.
The Center appointed Christophe Imhoos as the sole panelist in this matter on January 16, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant presents itself as a Dutch association established in 1953 that represents and defends the interests of Dutch consumers (Annex 1 to the Complaint). It publishes a consumer review magazine under the title “Consumentengids”, which magazine offers independent tests and reviews of consumer goods and services. The Complainant further explains that the magazine Consumentengids has been published monthly since April 1953 and has 475,000 subscribers as per March 2013 (Annex 5 to the Complaint). The Complainant further submits that both the trademark CONSUMENTENGIDS and the magazine Consumentengids are very well known among the relevant public (consumers, companies, governmental and non-governmental organizations).
Members of the Complainant’s association also consult Consumentengids online on the website <consumentenbond.nl> of which the Complainant is the owner.
The Complainant registered the Benelux word mark (registration number 0403439) CONSUMENTENGIDS on November 5, 1984 for various goods and services, including magazines, printed materials, advice for consumers, audio-and visual carriers (Annex 4 to the Complaint).
The Respondent registered the domain name <actualiteitenconsumentengids.com> on February 6, 2012.
5. Parties’ Contentions
A. Complainant
The Complainant’s submissions are mainly the following:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The disputed domain name <actualiteitenconsumentengids.com> is similar to the mark CONSUMENTENGIDS in which the Complainant has rights. The disputed domain name incorporates the Complainant’s trademark CONSUMENTENGIDS in its entirety. The inclusion of an additional term such as “actualiteiten”, does not dispel a domain name from being identical or confusingly similar and is not sufficient to render a domain name distinctive from the mark of the Complainant.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent is not commonly known by the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use its marks or to apply for or use any domain name incorporating the trademark CONSUMENTENGIDS and is not using the disputed domain name, which is actually not active, in good faith (Annex 8 to the Complaint).
(iii) The disputed domain name was registered and is being used in bad faith.
As already mentioned, the Respondent does not actively use the domain name, as the domain name does not lead to a website. Furthermore, the Respondent has not made any active attempt to sell or contact the Complainant. This passive holding of the disputed domain name by the Respondent leads to the conclusion that the disputed domain name was registered and is being used in bad faith, under the principles established by Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Complainant contends the evidence of bad faith by the following circumstances:
(a) The Respondent knew or at least should have known about the existence of the trademark CONSUMENTENGIDS as it was well-known and widely used both online and offline at the time the disputed domain name <actualiteitenconsumentengids.com> was registered.
(b) The Respondent has taken active steps to conceal its true identity, by using a privacy registration service. Given the longstanding use of the trademark CONSUMENTENGIDS by the Complainant, it is impossible to conceive any use to which the Respondent could put the disputed domain name that would not infringe the Complainant’s rights.
(c) The Respondent is engaged in a pattern of conduct consisting in registering domain names that incorporate the trademark of the Complainant. The Respondent has the same administrative and technical contact as the private registrant who has registered the domain name <actueelconsumentengids.com> (Zona 15, Panama); moreover, the current registrar for both domain names is Internet.bs Corp (Annex 10 to the Complaint).
(d) The registrant of the domain name <actueelconsumentengids.com> has also registered the domain name <consumentengidsonline2013.com>. This leads to the conclusion that the Respondent not only registered the disputed domain name <actualiteitenconsumentengids.com>, but also the domain names <actueelconsumentengids.com> and <consumentengidsonline2013.com>. These three domain names contain the entire trademark CONSUMENTENGIDS as the dominant element in the domain name. Furthermore, the domain names <actueelconsumentengids.com> and <actualiteitenconsumentengids.com> are variations of each other, as “actueel” means “actual” or “up to date” and “actualiteiten” means “current issues” or “being up to date”. It should also be noted that the Respondent has filed both domain names <actualiteitenconsumentengids.com> and <actueelconsumentengids.com> on the same date, i.e. on February 6, 2012 (Annex 10 to the Complaint).
Such a pattern of conduct is generally regarded as evidence of bad faith (for example Mr. Christophe Marx v. The Russian House and Mr. Alexander Mandl,WIPO Case D2000-1108; Movado LLC v. Online Marketing Realty,
WIPO Case No. D2008-0757).
In addition, the Respondent has been convicted in the past for registering and using the domain names <actueelconsumentengids.com> and <consumentengidsonline2013.com> in bad faith (Consumentenbond v. Philippe AIME / Private registrant, A happy DreamHost customer,
WIPO Case No. D2013-0514 and Consumentenbond v. Private registrant, A happy DreamHost customer / Paul Snow or Philippe Aime,
WIPO Case No. D2013-1071).
In Consumentenbond v. Private registrant, A happy DreamHost customer / Paul Snow or Philippe Aime, (supra), the Respondent was ordered to transfer the domain name <consumentengidsonline2013.com>, since it was clear that the Respondent was attempting to divert Internet traffic intended for the Complainant’s website to its own for commercial gain by creating a likelihood of confusion as to the source or sponsorship of the Respondent’s website.
Moreover, the Respondent’s subsequent passive holding of the disputed domain name was further evidence of the Respondent’s bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of said Rules.
The Complainant must prove in the administrative proceeding that each of the aforesaid three elements is present so as to warrant relief, according to paragraph 4(a) of the Policy.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of said Rules.
In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly Similar
The Complainant has established its rights in the trademark CONSUMENTENGIDS (see Annex 4 to the Complaint).
The Panel follows the Complainant's view that the fact that the disputed domain name at stake includes additional terms does not affect the confusing similarity.
The Panel finds therefore that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances which, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the disputed domain name. Those circumstances are described as follows:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see e.g.Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 or Isabelle Adjani v. Second Orbit Communications, Inc.,
WIPO Case No. D2000-0867).
The Complainant should nevertheless make out a prima facie case that the Respondent lacks rights or legitimate interests (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,
WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,
WIPO Case No. D2004-0110).
As rightly pointed out by the Complainant, the latter has not granted any license or otherwise permitted the Respondent to use the Complainant’s trademark or to apply for any domain name incorporating the Complainant’s trademark. Moreover, the Respondent is not known by the disputed domain name.
Under these circumstances and absent evidence to the contrary, the Panel is unable to find any evidence that would tend to establish that the Respondent has rights or legitimate interests in respect of the disputed domain name.
The Panel finds therefore that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Anyone of the following behaviors is sufficient to support a finding of bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
As already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration and use of the disputed domain name.
Nevertheless, the Panel still has the responsibility of determining which of the Complainants' assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University,
WIPO Case No. D2000-0944).
The disputed domain name <actualiteitenconsumentengids.com> is not active; added to the pattern of conduct described by the Complainant in its Complaint, as set out above, the Respondent shows bad faith registration and use within the meaning of the Policy and various UDRP decisions, some of them cited by the Complainant and mentioned to above.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4 of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <actualiteitenconsumentengids.com> be transferred to the Complainant.
Christophe Imhoos
Sole Panelist
Date: January 30, 2014
