WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Simyo GmbH v. Lotom Group

Case No. DNL2012-0060

1. The Parties

The Complainant is Simyo GmbH of Düsseldorf, Germany, represented by Koninklijke KPN N.V., the Netherlands.

The Respondent is Lotom Group of Panama City, Panama.

2. The Domain Name and Registrar

The disputed domain name <simiyo.nl> (the “Domain Name”) is registered with SIDN through EPAG Domainservices GmbH.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2012. On September 25, 2012, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On September 27, 2012, SIDN 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 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 October 2, 2012. In accordance with the Regulations, article 7.1, the due date for Response was October 22, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 23, 2012.

The Center appointed Willem Hoorneman as the panelist in this matter on November 6, 2012. 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

The Complainant provides mobile communication services and products, in particular SIM-only/prepaid mobile phone and mobile Internet at low prices, in the Netherlands since 2005.

The Complainant is holder of the following trademarks:

- the Benelux word mark SIMYO, with registration no. 782613, filed on December 8, 2005 and registered for goods and services in classes 9, 35, 38, 41 and 42;

- the Community word and device mark SIMYO, with registration no. 4384855, filed on March 31, 2005 and registered for goods and services in classes 9, 35, 37, 38, 39, 42 and 43; and

- the Community word mark SIMYO, with registration no. 4319307, filed on March 31, 2005 and registered for services in classes 9, 35, 37, 38, 39, 42 and 43.

These trademarks (the “Trademarks”) are being used in relation to the goods and services registered, in particular for mobile communication services and related SIM-only products in the Netherlands.

The Complainant is also commercially active on the Internet operating a website under the domain name <simyo.nl> through which its services are also offered and advertised.

The Domain Name was first registered on October 8, 2005. The Respondent became the current registrant of the Domain Name by new registration on June 12, 2008. The Domain Name directs to a so-called parking page.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its Trademarks. The Domain Name contains (the word element of) its Trademark(s) – SIMYO – in its entirety, be it with the insertion of an extra “i” in the center of the Domain Name, after the identical first part of the Domain Name ”sim”. The Domain Name is phonetically identical to the Trademarks. This is a clear case of typosquatting. “Simiyo” sounds the same as “simyo”, which means that it is highly possible that consumers searching for SIMYO products and services online may mistakenly enter “simiyo” instead of “simyo”.

The Complainant claims that the Respondent has no rights to or legitimate interests in the Domain Name. According to the Complainant, there is no suggestion that the Complainant consented to the Respondent’s registration and use of the Domain Name, nor that the Domain Name was used in a bona fide manner for offering products or services before the Complainant notified the Respondent. Also, the Respondent is not commonly known under the Domain Name as a company or organization. Finally, the Respondent is not using the Domain Name for legitimate noncommercial purposes, because the Domain Name is linked to a website that contains a collection of sponsored links referring to products and services that compete with those provided by the Complainant. With the Domain Name, the Respondent is simply attempting to latch onto the reputation of the SIMYO Trademarks, but has no legitimate interest in or entitlement to this.

The Complainant asserts that the Domain Name has been registered or is being used in bad faith. The Complainant claims that the Respondent must have been familiar with the Complainant and its well-known Trademarks at the time of registering the Domain Name. Also, SIMYO is an imaginary name, and it is therefore not plausible that a third party with no knowledge of the Trademarks would have come up with a virtually identical name and then used this name to lead Internet users to products and services that are identical or similar to the services offered by the Complainant. According to the Complainant, it is therefore evident that the Respondent is using the Domain Name for commercial gain by leading Internet users to its website using the confusion that can occur with the Trademarks of the Complainant. In addition, the Complainant claims that the Respondent registered the Domain Name primarily for the purpose of selling it to the Complainant or one of its competitors for an amount in excess of the registration costs.

Finally, the Complainant refers to a number of previous .nl panel decisions in which the transfer was ordered of domain names registered by the Respondent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

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 fact.

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 the Respondent.

Based on article 2.1 of the Regulations, a request 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 by means of 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.

Considering these conditions, the Panel rules as follows:

A. Identical or Confusingly Similar

The Complainant has based its Complaint on the Trademarks and has submitted copies of its trademark registrations demonstrating that it is the holder of the Trademarks. The Trademarks are protected under Dutch law.

It is established case law that the top level domain “.nl” may be disregarded in assessing the similarity between the relevant trademark or trade name on the one hand, and the domain name on the other hand (see: Taylor Made Golf Company, Inc. v. Lotom Group S.A., WIPO Case No. DNL2010-0067; Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).

Further, the only difference between the Domain Name and (the word element of) the Trademarks is the insertion in the center of the Domain Name of an extra “i”, which does not make any relevant difference (see also: XS4ALL Internet B.V. v. Terminte,WIPO Case No. DNL2009-0042). As for the rest, the Domain Name is textually (and therefore visually and phonetically) identical to the Trademarks.

Therefore, the Panel finds that the Domain Name is confusingly similar to the Trademarks.

B. Rights or Legitimate Interests

As a result of its failure to submit a Response, the Respondent did not use the opportunity to show rights to or legitimate interests in the Domain Name. It may be assumed that the Respondent was and is not commonly known by the Domain Name. The record does not include any indication that the Respondent has any relevant trademark or trade name rights regarding the term “simiyo”.

The Domain Name links to a parking page that appears to contain various links and references to other (commercial) websites and trademarks. It is established case law that such parking pages built around a third party’s trademark as a rule do not constitute a bona fide offering of goods or services, nor do they constitute a legitimate noncommercial use of a trademark (see: mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006; The Knot, Inc. v. In Knot we Trust LTD, WIPO Case No. D2006-0340; Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598; and Coöperatieve Raiffeisen-Boerenleenbank B.A. (Rabobank Nederland) v. Nguyet Dang, ND Dang, WIPO Case No. DNL2010-0074). In the present case, the Panel notes that the linked pages also cover the area of telecommunications, in particular (SIM-only) mobile communication services and products.

Based on the foregoing, the Panel is of the opinion that the Respondent has no rights to or legitimate interests in the Domain Name.

C. Registered or Used in Bad Faith

The registrations and use of the Complainant’s Trademarks predate the registration and use by the Respondent of the Domain Name by several years. As the Complainant owns trademark rights effective and enforceable in the Netherlands and actively runs its business in the Netherlands, while the Domain Name is in the “.nl” domain space and the parking page linked to it is in the Dutch language, indicating that it is directed at users in the Netherlands, the Panel deems it highly likely that the Respondent was aware of the Complainant’s Trademarks when registering the Domain Name.

Considering also that the parking page of the Respondent contains, or at least until recently contained, various links to other (commercial) websites offering mobile (tele)communication services, the Panel finds that the Domain Name is being used by the Respondent for commercial gain, by intentionally attracting Internet users to its website where services similar to those of the Complainant are being advertised, through the likelihood of confusion with the Complainant’s Trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. This constitutes evidence of bad-faith registration and use in accordance with article 3.2(d) of the Regulations (see: Seiko EPSON Corporation v. ANEM Computers / ANEM, WIPO Case No. DNL2010-0024; and Taylor Made Golf Company, Inc. v. Lotom Group S.A., WIPO Case No. DNL2010-0067). The Panel considers the notice on the parking page that the Domain Name is for sale another factor indicating bad faith in this case.

Having refrained from submitting a Response, the Respondent has failed to provide any evidence to the contrary. Furthermore, taking into account the numerous previous .nl panel decisions in which the Respondent was involved and equally chose not to file a response, the Panel finds it likely that the Respondent is a domain name squatter (see: Prof. Dr. Geert Hofstede en Geert Hofstede B.V. v. Lotom Group S.A., WIPO Case No. DNL2008-0043; Technische Unie B.V. v. Lotom Group S.A., WIPO Case No.
DNL2008-0063; ADP Nederland B.V. v. Lotom Group S.A., WIPO Case No. DNL2009-0009; Qsoft Consulting Limited v. Lotom Group S.A., WIPO Case No. DNL2009-0018; Bejo Zaden B.V. v. Lotom Group S.A., WIPO Case No. DNL2010-0030; Delta Lloyd N.V. v. Lotom Group S.A., WIPO Case No.
DNL2010-0043; Taylor Made Golf Company, Inc. v. Lotom Group S.A., WIPO Case No. DNL2010-0067; ANWB v. Lotom Group S.A., WIPO Case No. DNL2010-0072; and Egon Zehnder International B.V. v. Lotom Group S.A., WIPO Case No. DNL2011-0012).

On the above grounds, the Panel finds that the requirements of registration or use in bad faith of the Domain Name pursuant to article 2.1(c) of the Regulations have 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 <simiyo.nl> be transferred to the Complainant.

Willem Hoorneman
Panelist
Date: December 4, 2012