The Complainant is Mappy SA of Paris, France, represented by DS Avocats, France.
The Respondent is Webhold of Purmerend, the Netherlands.
2. The Domain Name
The disputed domain name <mappy.nl> (the “Domain Name”) is registered with SIDN.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2009. On March 5, 2009, the Center transmitted by email to SIDN a request for registration verification in connection with the Domain Name. On March 6, 2009, SIDN transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center regarding the language of the proceedings, the Complainant submitted a request for English to be the language of the proceedings on March 16, 2009. The Respondent, although given the opportunity to do so by March 18, 2009, did not comment on the notification by the Center. The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”). As to the language of the proceedings the Center, using its provisional authority, decided to accept the Complaint as filed in English and accept a Response either in English or Dutch, leaving the eventual decision to determine the language of the proceedings to the Panelist.
In accordance with the Regulations, articles 5.1 and 15.5, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 19, 2009. In accordance with the Regulations, article 7.1, the due date for Response was April 8, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 9, 2009.
The Center appointed Alfred Meijboom as the panelist in this matter on April 15, 2009. The Panelist finds that the Panelist was properly appointed. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 8.2.
4. Factual Background
The Complainant, Mappy SA, is a French company doing business all over Europe. The Complainant offers route planning services, publishes maps and supplies tourist and practical information through its main website at <mappy.com>.
The Complainant holds the international device mark MAPPY.COM (No. 743504) and the international word mark MAPPY (No. 736390), both designating the Benelux.
Furthermore, the Complainant holds the domain names <mappy.be>, <mappy.fr>, <mappy.com>, <mappy.info>, <mappy.mobi>, <mappy.biz>, <mappy.us>, <mappy.net>, <mappy.org>, <mappy.it> and <mappy.eu>.
The Domain Name has been registered by the Respondent on September 18, 2000. The content on the website under the Domain Name is identical to the content on the Complainant's website.
On July 3, 2008, the Complainant sent the Respondent a cease and desist letter concerning the Domain Name. On July 20, 2008 the Respondent replied that it was willing transfer the Domain Name, but that it expected to be compensated for the costs incurred since the registration in 2000. The Respondent explained that it registered the Domain Name “to prevent other companies to make mis-use of it”. The parties agreed on a payment of EUR 1,000, but despite various reminders of the Complainant the Respondent did not come through and has remained silent since August 17, 2008.
5. Parties' Contentions
A. Complainant
The Complainant holds rights in the aforementioned MAPPY and MAPPY.COM trademark. Furthermore, the Complainant claims to hold trade name rights in the name MAPPY and holds a number of “mappy” domain names. The Complainant has contended that the Domain Name is identical to its trademarks, domain names and trade name.
The Complainant has put forward that the Respondent has no rights to or legitimate interests in the Domain Name for the following reasons:
- the Respondent has no link with the Complainant's business; no authorization has ever been granted by the Complainant to any individual or business entity to register the Domain Name;
- the Respondent is not entitled by the Complainant, expressly nor implied, to use the MAPPY trademark in the Domain Name;
- the Respondent is not known and has never been known under the name MAPPY.
Furthermore, the Complainant has asserted that the Respondent has registered and is using the Domain Name in bad faith, as evidenced by the following factors:
- the Domain Name is phonetically and visually identical to the Complainant's trademarks, domain names and trade name;
- there exists a risk of confusion, especially since the Domain Name redirects to the Complainant's own website;
- the Complainant's activities, trademarks and trade name are known with the relevant public;
- the Respondent can impossibly have been unaware of Complainant's global presence, including its presence in the Netherlands and knew of the MAPPY and MAPPY.COM trademark at the time of registration of the Domain Name;
- the Respondent knew Complainant and its activities when registering the Domain Name, since it wrote that it had “registered the domain name MAPPY.NL to prevent other companies to make mis-use of it”; and
- the Respondent's bad faith is evidenced by the fact that it wanted financial compensation for the transfer of the Domain Name to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Introductory Remarks
Language of the Proceedings
Article 16 of the Regulation provides that “(i)n principle, the language of the proceedings shall be Dutch. If either or both of the parties has/have no knowledge of the Dutch language, the panelist may decide that the proceedings shall be conducted in English. Prior to the appointment of a panelist, the center may take a provisional decision on this matter”.
The Complainant filed the Complaint in the English language without providing the reason why it was not filed in the Dutch language, as is the principle pursuant to article 16 of the Regulations. In response to a notification by the Center regarding the language of the proceedings, the Complainant submitted a reasoned request for English to be the language of the proceedings. The Respondent did not reply to this notification. Subsequently the Center, using its provisional authority, decided to accept the Complaint as filed in English and accept a Response either in English or Dutch, leaving the eventual decision to determine the language of the proceedings to the Panelist.
A party that wishes the language of a “.nl” domain name proceedings to be English, should substantiate that it would be unreasonably onerous if the proceedings would take place in Dutch (e.g. AB Electrolux v. Marcel Vlaar,WIPO Case No. DNL2008-0005). The Complainant substantiated its request by putting forward that the pre-Complaint correspondence between the parties was in English, proving that the Respondent clearly understands the English language while the Complainant is unable to communicate in Dutch. Furthermore, the Complainant stated that if it had to submit all documents in Dutch, the proceedings would be unduly delayed and it would have to incur substantial expenses for translation.
The Panelist agrees with the Complainant that the Respondent is able to communicate in English, since both the Complainant's letter as well as the Respondent's answer thereto were in English. The Respondent did not object to the Complainant's request for English to be the language of the proceedings. All in all, the Panelist finds that the Respondent's right of defense is not prejudiced by the choice of English as the language of the proceedings. In these circumstances the current proceedings shall be in English.
Default of the Respondent
Article 7.4 of the Regulations provides that in the event that a respondent fails to submit a response, the complaint shall be granted unless the Panelist considers it to be without basis in law or in fact.
According to article 2.1 of the Regulations, the requested remedy shall be granted if the Complainant asserts and establishes each of the following:
a) that 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 a Dutch municipal register of persons (“gemeentelijke basisadministratie”), or a name of a Dutch public legal entity or a name of an association or foundation located in the Netherlands under which the Complainant undertakes public activities on a permanent basis; and
b) that the Respondent has no rights to or legitimate interests in the Domain Name; and
c) that the Domain Name has been registered or is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant holds two international trademark registrations for MAPPY and MAPPY.COM, which are valid in the Benelux. Therefore, the Panelist finds that the Complainant has rights in these trademarks protected under Dutch law.
Furthermore, the Complainant has claimed trade name rights in the name Mappy. However, the Complainant failed to submit arguments and/or evidence that this name is actually protected under Dutch law as required in the Regulations, article 2.1(a)(I). Therefore, the Panelist cannot establish that the Complainant holds trade name rights protected under Dutch law.
For the purpose of assessing whether the Domain Name is identical or confusingly similar to the trademarks in which the Complainant has rights, the “.nl” suffix is disregarded, it being a necessary component for registration and use of a domain name. Consequently, the Panelist considers the Domain Name identical to the Complainant's MAPPY word mark (No. 736390) and confusingly similar to the Complainant's MAPPY.COM device mark (No. 743504).
B. Rights or Legitimate Interests
According to the Regulations, article 2.1(b), the Complainant must demonstrate that the Respondent has no rights or legitimate interests in the Domain Name. This condition is met if the Complainant makes a prima facie case that the Respondent has no rights or legitimate interests, and the Respondent fails to rebut that showing by for example providing evidence of one of the three circumstances mentioned in the Regulations, article 3.1.
The Complainant has contended that it has not authorized the Respondent to use its trademarks or to register the Domain Name and the Respondent did not dispute the Complainant's claim to that effect. The Panelist could neither establish any indication that the Respondent, (a) before having notice of the dispute, made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services, (b) is commonly known by the Domain Name, or (c) is making a legitimate noncommercial use of the Domain Name, nor in any possible other way has a right to or legitimate interest in the Domain Name. For these reasons, the Panelist finds that the Complainant has satisfied the Regulations, article 2.1(b).
Consequently, the Panelist concludes that the Respondent has no rights or legitimate interest in the Domain Name.
C. Registered or Used in Bad Faith
The Regulations, article 2.1(c), provides that the Domain Name has been registered or is being used in bad faith.
The international MAPPY trademark registration and the international MAPPY.COM trademark registration predate the registration of the Domain Name. In his e-mail of July 20, 2008 the Respondent wrote: “I can inform you that I have registered the domain name MAPPY.NL to prevent other companies to make mis-use of it”. By doing so the Respondent acknowledged that it knew that the Complainant was active under the MAPPY mark when registering the Domain Name. That is subscribed by the fact that the content on the website under the Domain Name is identical to the content on the Complainant's website. Therefore the Panelist finds that the Domain Name was registered in bad faith.
The Panel thus finds that the Complainant has satisfied the Regulations, article 2.1(c), and because of this finding there is no need to discuss whether the Domain Name is also being used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with articles 1 and 13 of the Regulations, the Panel orders that the domain name, <mappy.nl> be transferred to the Complainant.
Alfred Meijboom Sole Panelist
Dated: April 29, 2009
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