WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Royal Canin v. “Planet Media Group N.V.”
Case No. DNL2008-0009
1. The Parties
The Complainant is Royal Canin, France, represented by Cabinet Dreyfus & Associes, France.
The Respondent is “Planet Media Group N.V.”, The Netherlands.
2. The Domain Name and Registrar
The disputed domain name <royal-canin.nl> is registered with KPN Internet.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2008 in hardcopy. After a Notification of Complaint Deficiency by the Center (of May 2, 2008), the Complainant also filed its Complaint by email on May 7, 2008. On April 29, 2008, the Center transmitted by email to SIDN a request for registrar verification in connection with the domain name at issue. On the same date, SIDN transmitted its verification response to the Center by email, stating that the Respondent is listed as Registrant with KPN Internet 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 article 16 of the Regulations, the Center provisionally decided that the procedure could continue in the English language. In the light of the circumstances of this case, the Panel agrees with that decision.
In accordance with the Regulations, paragraphs 5.1 and 15.5, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 7, 2008. In accordance with the Regulations, paragraph 7.1, the due date for the Response was May 27, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on May 28, 2008.
The Center appointed the undersigned as the sole panelist in this matter on June 5, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence on June 6, 2008. In accordance with Article 13.2 of the Regulations, the Panel extended the due date for forwarding the decision to the Center to June 26, 2008.
4. Factual Background
The Complainant is Royal Canin, a worldwide manufacturer and supplier of dog and cat foods that was created in 1967 in France. In 2006, the Complainant had revenue of over one billion euros (80% outside of France) and more than 3,200 employees (70% of whom outside of France). The Complainant is represented in 90 countries, including The Netherlands.
The Complainant owns trademark registrations worldwide, which consist of or include the mark ROYAL CANIN (as evidenced by Annex 6 to the Complaint). These registrations include the following:
- ROYAL CANIN, registered with the WIPO on January 19, 1968, Registration No. 343136, with validity in the Benelux;
- ROYAL CANIN, registered with the WIPO on August 12, 1982, Registration No. 471300, with validity in the Benelux;
- ROYAL CANIN, registered with the WIPO on October 6, 1988, Registration No. 529628, with validity in the Benelux;
- ROYAL CANIN LITE, registered with the WIPO on May 20, 1988, Registration No. 524613, with validity in the Benelux;
- ROYAL CANIN JUNIOR, registered with the WIPO on May 27, 1988, Registration No. 524593, with validity in the Benelux;
- ROYAL CANIN FELINE HEALTH NUTRITION, registered with the OHIM on February 25, 2004, Registration No. 003063567;
- ROYAL CANIN CANINE HEALTH NUTRITION, registered with the OHIM on April 21, 2004, Registration No. 003057403:
The Complainant is the registrant of many domain names that consist of or contain the ROYAL CANIN trademarks or variations thereof. Among the domain names are <royalcanin.com>, <royalcanin.net>, <royalcanin.nl>, <royal-canin.org>, <royal-canin.info> and <royal-canin.com>.
The Respondent registered the disputed domain name on July 28, 2004.
5. Parties’ Contentions
Identical or confusingly similar
The Complainant contends that it is a well-known company represented in 90 countries (including The Netherlands) and that it is a leading actor in the European market. This is evidenced by Google search results, information provided about the Complainant on various websites and information that follows from an EEC regulation merger procedure (no. 4064/89). The Complainant states that it owns many trademark registrations for ROYAL CANIN, in particular in the Benelux, and that the domain name is almost identical to the Complainant’s trademarks.
Rights or legitimate interests of the Respondent
The Complainant contends that the Respondent has no (prior) rights or legitimate interests in the disputed domain name, since the Respondent is an internet service provider not affiliated to the Complainant in any way and the Complainant has never authorized the Respondent to use and register its trademarks and service marks or to seek the registration of any domain name incorporating the ROYAL CANIN marks. Furthermore, the Complainant states that the Respondent has never used the term ROYAL CANIN in any way.
The Complainant asserts that the disputed domain name is “so identical” to the famous trademarks of the Complainant that the Respondent cannot reasonably pretend that it intended to develop a legitimate activity.
Registration or use in bad faith by the Respondent
According to the Complainant, several elements demonstrate that the disputed domain name has been registered and is being used by the Respondent in bad faith. The Complainant points out that the domain name is inactive and that inaction in relation to a domain name registration can, in certain circumstances, constitute bad faith. It asserts that all circumstances of the Respondent’s behavior must be given close attention.
With regard to registration in bad faith, the Complainant contends that the Respondent must have known the ROYAL CANIN trademarks at the time it registered the disputed domain name, since the trademarks are famous and well-known worldwide and the Complainant is also represented in The Netherlands (it has a subsidiary in this country). Furthermore, the Complainant refers to a print-out of Google search results for the words “ROYAL CANIN”, which demonstrates that search results on – at least – the first page all refer to the Complainant. The Complainant also notes that it registered the domain name <royalcanin.com> since 1997, seven years before the Respondent registered the disputed domain name.
In addition to this, the Complainant states that it has written a cease and desist letter and three reminders regarding this letter to the Respondent (of which evidence is annexed to the Complaint) and that the Respondent never answered. The Complainant refers to a WIPO case in which such behavior was considered as an absence of interest of Respondent in proving the existence of a fair or legitimate interest in the domain name (Banque Transatlantique S.A. v. DOTSCOPE, WIPO Case No. D2004-1100). The mentioned conduct, the Complainant argues, is another element of the Respondent’s bad faith.
Based on the foregoing, the Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not file a Response.
6. Discussion and Findings
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 Panel considers it to be without basis in law or in fact.
A. Identical or Confusingly Similar
The Complainant has provided evidence that it is the owner of trademark registrations worldwide (several of these with validity in The Netherlands) consisting of or including the words ROYAL CANIN.
The Panel notes that for the relevant comparison to be made as to the similarity of the domain name and trademarks of the Complainant, only the second-level portion of the domain name is relevant.
Since the entire ROYAL CANIN trademark is incorporated in the disputed domain name, the Panel finds the domain name to be confusingly similar to the trademark. This is not altered by the addition of a hyphen between the two words (see, for instance, InfoSpace.com, Inc. v. Tenenbaum Ofer, WIPO Case No. D2000-0075).
B. Rights or Legitimate Interests
The Panel is of the opinion that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant has not given the Respondent permission to register the domain name and there is no evidence that the Respondent has an own right in the name ROYAL CANIN. There is no evidence either that the Respondent used or uses the name “ROYAL CANIN”.
C. Registered or Used in Bad Faith
The Panel notes that the Regulations, other than the Uniform Domain Name Dispute Resolution Policy, require registration or use in bad faith (article 2.1 c of the Regulations).
On the basis of the evidence submitted by the Complainant, the Panel is satisfied that the Complainant’s trademarks are widely-known in The Netherlands. Therefore, it may be assumed that the Respondent was aware of the Complainant and its trademarks at the time of registration of the disputed domain name. In view of the notoriety of the trademarks, it is difficult to imagine any good faith use of the domain name.
Given also the fact that the Respondent has apparently not responded to the registered cease and desist letter and e-mail, nor any of the three reminders, and that it has not submitted a Response, the Panel is of the opinion that the domain name was registered in bad faith.
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 <royal-canin.nl> be transferred to the Complainant.
Wolter Wefers Bettink
Dated: June 23, 2008