WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jean Heitz v. Gezondheid aan huis B.V.

Case No. dnl2018-0056

1. The Parties

The Complainant is Jean Heitz of Germigny, France, represented by Novagraaf Nederland B.V., the Netherlands.

The Respondent is Gezondheid aan huis B.V. of Ede, the Netherlands.

2. The Domain Name and Registrar

The disputed domain name <argiletz.nl> (the “Domain Name”) is registered with SIDN through RootNet NOC B.V.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2018. On the same day, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain name. On September 10, 2018, 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 September 13, 2018. In accordance with the Regulations, article 7.1, the due date for Response was October 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 4, 2018.

The Center appointed Willem J. H. Leppink as the panelist in this matter on October 11, 2018. 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 following facts are undisputed.

Founded in 1953, the Complainant manufactures and sells inter alia soaps, perfumes, cosmetics, pharmaceutical products, and alcohol-free drinks.

The Complainant is the owner of several trademark registrations for the ARGILETZ. This includes the Benelux trademark registration 426043, filed on October 30, 1986, and the International trademark registration registration 865411, registered on July 27, 2005 (hereinafter collectively referred to as the “Trademark”).

The Domain Name was registered by the Respondent on January 12, 2008, and resolves to the website “www.gezondheidaanhuis.nl” (the “Website”), a web shop offering for sale various cosmetics and pharmaceutical products.

5. Parties’ Contentions

A. Complainant

Insofar as relevant, the Complainant contends the following.

The Domain Name includes the Trademark in its entirety. For the purpose of the Regulations the Domain Name is confusingly similar to the Trademark.

The Respondent has no rights or legitimate interests in respect of the Domain Name.

The Respondent does not own any rights to the Trademark or have any other right to the denomination of the Trademark. The Complainant did not give its consent for the Respondent to use and/or refer to the Trademark in the Domain Name, nor for any other purpose. There is no commercial link between the Complainant and the Respondent.

The Respondent is not using the Domain Name for a legitimate noncommercial purpose. Even more, the Domain Name resolves to the Website, being the main web shop of the Respondent, offering products of the Complainant.

Internet users are being misled and will assume that the Website is related to the Complainant. Since there is no commercial link between the owner of the Website (the Respondent) and the Complainant, this tarnishes the Trademark and is therefore unlawful.

The Respondent registered the Domain Name for the sole purpose of disrupting the business of the Complainant by attracting customers to the Website.

The Complainant has made several attempts to contact the Respondent, sending in total 14 letters and/or emails to the Respondent in the period from October 25, 2011 through July 17, 2018. The Respondent has failed to provide a substantive reply, only requesting communication in the Dutch language on November 21, 2011. No response was received to the correspondence translated into Dutch and sent on behalf of the Complainant on November 23, 2011.

B. Respondent

The Respondent has not replied 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 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 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 Domain Name; and

c. the Domain Name has been registered or is being used in bad faith.

Article 10.3 of the Regulations provides that in the event a respondent fails to submit a response, the complaint shall be granted unless the panel considers it to be without basis in law or in fact. The Panel thereby notes that this does not mean that the requested remedy should automatically be awarded. The Panel will have to determine whether the Complainant’s prima facie case meets the requirements of article 2.1 of the Regulations.

A. Identical or Confusingly Similar

Pursuant to article 2.1(a) under I of the Regulations, the Complainant must establish that the Domain Name is identical or confusingly similar to a trademark or trade name in which the Complainant has rights.

The Complainant has shown that it has rights in the Trademark.

The Domain Name incorporates the Trademark in its entirety. Previous panels have found that a domain name is confusingly similar to a complainant’s trademark where the domain name incorporates the trademark in its entirety. The country code Top-Level Domain “.nl” may 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 therefore finds that the Domain Name is identical to the Trademark for purposes of the Regulations.

The Complainant has established the first element of article 2.1 of the Regulations.

B. Rights or Legitimate Interests

Whether the Respondent has registered and/or is using the Domain Name in connection with a bona fide offering of goods pursuant to article 3.1(a) of the Regulations, has to be assessed in light of the decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (regarding the domain name <okidataparts.com>).¹

To be bona fide, the offering must meet several requirements which have been referred to in the afore‑mentioned decision. Those include, at minimum, the following:

- the respondent must actually be offering the goods or services at issue. See, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering);

- the respondent must use the website to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. See, e.g., Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774 (use of Nikon-related domain names to sell Nikon and competing cameras not a legitimate use;

- the site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. See, e.g., Houghton Mifflin Co. v. The Weatherman, Inc., WIPO Case No. D2001-0211 (no bona fide offering where website’s use of Complainant’s logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering, Ltd. and Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton, WIPO Case No. D2000-1201 (no bona fide offering because domain name <quaifeusa.com> improperly suggested that the reflected site was the official United States of America (“U.S.”) website of Quaife, an English company; moreover, respondent’s deceptive communications with inquiring consumers supported a finding of no legitimate interests); Easy Heat, Inc. v. Shelter Products., WIPO Case No. D2001-0344 (no bona fide use when respondent suggested that it was the manufacturer of complainant’s products);

- the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 (“a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark”).

From the evidence provided by the Complainant, it is clear that the Respondent sells various goods on the Website other than goods under the Trademark.

In addition, in the evidence provided by the Complainant no disclaimer can be found on the Website, that accurately discloses the (lack of) relationship of the Respondent and the Complainant.

Based on the above, the Respondent’s use of the Domain Name fails to meet the applicable Oki Data criteria.

The Complainant has thus established the second element of article 2.1 of the Regulations.

C. Registered or Used in Bad Faith

In light of its considerations under Section 6.B, the Panel finds that the Domain Name has been registered and used in bad faith. The Respondent has used the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the Website, by creating a likelihood of confusion which may arise with the Trademark as to the source, sponsorship and endorsement of the Website. This constitutes evidence of bad faith registration and use in accordance with article 3.2(d) of the Regulations.

In addition, even if that fact is by itself not dispositive, the Panel notes an earlier decision involving what can be assumed to be the same party as the Respondent (Emcur Gesundheitsmittel aus Bad Ems GmbH v. M.J. Roeleveld, WIPO Case No. DNL2017-0028), in which the panel found against that respondent on similar grounds.

Finally, although the lack of a reply by the Respondent as such cannot by itself lead to a conclusion of use in bad faith, the cumulative circumstances as outlined in the present decision are cause for the Panel to find that the use of the Domain Name by the Respondent is in bad faith.

The Panel finds that the Complainant has also 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 <argiletz.nl> be transferred to the Complainant.

Willem J.H. Leppink
Panelist
Date: October 25, 2018

¹ Having been rendered under the Uniform Domain Name Dispute Resolution Policy (“UDRP”) this decision has been confirmed to be of relevance under the Regulations, inter alia in Seiko EPSON Corporation v. ANEM Computers / ANEM, WIPO Case No. DNL2010-0024 and Maison Louis Latour v. Jos Beeres Wijnkoperij,WIPO Case No. DNL2011-0074.