WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TNT Holdings B.V. v. Sylvie Bona
Case No. D2008-1070
1. The Parties
The Complainant is TNT Holdings B.V., of Netherlands, represented by Novagraaf Nederland B.V., Netherlands.
The Respondent is Sylvie Bona, of France.
2. The Domain Name and Registrar
The disputed domain name <tnt-transport.com> is registered with Online SAS.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2008. On July 15, 2008, the Center transmitted by email to Online SAS a request for registrar verification in connection with the domain name at issue. On July 16, 2008, Online SAS 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 that the Complaint was administratively deficient, the Complainant filed an amended Complaint on August 8, 2008. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 August 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 3, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 4, 2008.
The Center appointed Richard Hill as the sole panelist in this matter on September 16, 2008. 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
Communications between the Center and the Registrar took place in English.
The Respondent understood a communication in English from the Complainant and replied to it in English.
The Complainant owns numerous marks around the world for the string TNT, which it uses to market transportation services. The Complainant’s mark and services are very well known around the world.
The Respondent does not have a license or permission to use the disputed domain name.
The Respondent used the disputed domain name to offer transportation services.
5. Parties’ Contentions
The Complainant makes the following allegations.
The Complaint is based on a large number of the Complainant’s trademarks throughout the world for the word mark TNT for, inter alia, transportation services in class 39, including in particular logistics, mail delivery and express services.
The TNT trademarks of the Complainant have been intensively used in commerce for many years, worldwide, and continue to be used. The TNT trademarks are used on the Complainant’s website “www.tnt.com”. As far as known, the term “TNT” has nowhere in the world a descriptive meaning in any language in connection with transportation services and was created by the Complainant for use in connection with its services.
The Respondent has registered the disputed domain name on February 1, 2008. The disputed domain name is visually, phonetically and conceptually similar to the Complainant’s registered trademarks. In this connection, the element “TNT” in the disputed domain name is the distinctive and dominant part. The word “transport” is in several languages, including the Dutch and English languages, merely descriptive for carrying or moving people or goods from one place to another, especially over some distance. The disputed domain name is inherently connected with transport activities. In fact, the website under the disputed domain name was actually in use for offering transportation services.
On April 22, 2008, the Complainant sent an email to the Respondent’s email address requesting her to transfer the disputed domain name to the Complainant, and to cease and desist use of the mark TNT or any similar sign for transportation services or similar goods/services. The Respondent was also notified that, failing such cooperation, a Complaint was to be filed. On the same day the Respondent replied by informing that she registered the disputed domain name on behalf of one of her clients and that she is not the beneficial owner of the disputed domain name. She changed the contents of the website to point to a parking page. The Respondent, however, remains the judicial owner of the disputed domain name as she is recorded as such in the WHOIS databases. The Respondent informed that the cease-and-desist email should be sent to a different email address. After having done so, the Complainant did not receive any further reaction from or on behalf of the Respondent.
The Respondent has no rights or legitimate interests whatsoever in respect of the disputed domain name. The Complainant did not consent to the Respondent’s use of the TNT mark, and the Respondent is not commonly known by a name corresponding to it.
Initially, the disputed domain name linked to a website on which the Respondent offered transportation services. Obviously, the Respondent has the intention to take unfair advantage of the repute of the Complainant’s TNT trademarks, also creating(a risk of confusion among the relevant public on the market. Use of a domain name incorporating the Complainant’s famous trademark TNT to offer identical and/or similar services cannot be bona fide as it is misleading, confusing and tarnishing.
The disputed domain name was registered and is being used primarily for the purpose of offering transportation services, which are identical with and/or similar to the services offered under the Complainant’s famous TNT trademarks. It is obvious that the Respondent takes unfair advantage of the repute of the Complainant’s TNT trademarks in an attempt to attract for commercial gain Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s famous trademark TNT as to source, sponsorship affiliation, or endorsement of the Respondent’s web site or of a service on the Respondent’s website. By deliberately diverting the Complainant’s customers to another website, the Respondent also disrupts the Complainant’s business.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Before discussing the merits, the Panel will rule on the language of the proceedings.
According to paragraph 11(a) of the Rules, “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
In the present case, there has been no agreement by the parties, and the Registration Agreement is in the French language. The Complaint was originally submitted in English. Recognizing that the Registration Agreement is in French, the Center appropriately requested that the Complainant submit its Complaint in French, which it did.
The Respondent has not replied, even though she received the French-language version of the Complaint. Given that the Complaint was originally drafted in English by a Dutch company, that the Registrar Online SAS communicated with the Center in English, that the Respondent understood an English communication from the Complainant and replied to it in English, and that the Respondent has not provided a Response, the Panel determines that the language of the proceedings shall be English.
A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant’s mark TNT.
B. Rights or Legitimate Interests
The Respondent does not have a license or other permission to use the Complainant’s marks.
It is difficult to imagine how the Respondent could envisage a bona fide use of the disputed domain name, given that the Complainant’s transportation services are marketed and widely-known around the world under the brand name TNT.
Paraphrasing Motorola, Inc. vs. NewGate Internet, Inc., WIPO Case No. D2000-0079, it can be said that the use of somebody else’s trademark as a domain name clearly does not constitute a bona fide offering of goods or services when the web site owner has no registered or common law rights to the mark, since the only reason to use the trademark as a domain name is to attract customers who were not looking for the services offered by the web site owner, but were instead looking for the products or services associated with the trademark. Such use of a trademark can create customer confusion or dilution of the mark, which is precisely what trademark laws are meant to prevent. And actions that create, or tend to create, violations of the law can hardly be considered to be bona fide.
The Panel finds that the Respondent is redirecting Internet users interested in the Complainant’s products and services to her own website for commercial gain and that such use does not fall within the parameters of a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy.
C. Registered and Used in Bad Faith
On the basis of the evidence available to it, the Panel holds that the disputed domain name was registered and is being used primarily for the purpose of offering transportation services, which are identical with and/or similar to the services offered under the Complainant’s famous TNT trademarks. Thus the Respondent attempts to attract for commercial gain Internet users to her website, by creating a likelihood of confusion with the Complainant’s trademark as to source, sponsorship affiliation, or endorsement of the Respondent’s web site or of a service on the Respondent’s website.
This constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy. See Shaw Industries Group, Inc. and Columbia Insurance Company v. Click Consulting Ltd. WIPO Case No. D2006-1422; and HYDAC Technology GmbH v. Click Consulting Ltd., WIPO Case No. D2006-1364.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <tnt-transport.com> be transferred to the Complainant.
Dated: September 30, 2008