Complainant is Shure Acquisition Holdings, Inc. of Niles, Illinois, United States of America, represented by Schäfer, Germany.
Respondent is FP Geluidstechniek of Utrecht, the Netherlands.
The disputed domain name <shure.nl> (the “Domain name”) is registered with SIDN.
The Complaint was filed by e-mail with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2010. The respective hard copy was received by the Center on January 18, 2010. On January 14, 2010 the Center transmitted by email to SIDN a request for registry verification in connection with the Domain Name. On January 15, 2010, SIDN transmitted by email to the Center its verification response confirming that 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 16.5, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 19, 2010. In accordance with the Regulations, article 7.1, the due date for Response was February 8, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on February 9, 2010.
After having received the payment of the fees, the Center appointed Mr. Tjeerd .F.W. Overdijk as the Panelist in this matter on February 16, 2010. 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 9.2.
Complainant was established in 1925 and produces, among others, audio products that amplify, process and mix sound and offers accompanying audio services. Complainant owns the following word marks regarding goods and services in the field of audio products and audio services (registered for, inter alia, goods in Nice class 9):
CTM 110833 - SHURE; filed on April 1, 1996;
CTM 3261369 - SHURE; filed on July 9, 2003;
CTM 5619754 - SHURE; filed on December 18, 2006;
BNL 62733 - SHURE; filed on September 24, 1971.
These trademark registrations will hereinafter jointly be referred to as “the Trademarks”.
Complainant registered, by itself or through its affiliates, inter alia the following domain names:
<shure.com>, <shure.eu>, < shure.de> and <shure.fr>.
Respondent is FP Geluidstechniek. This Dutch company apparently offers goods and services in the field of light and sound technology and operates primarily in the Dutch market. On January 3, 2002, Respondent has registered the Domain Name.
Complainant invokes its trademark rights and its corporate name, which is Shure Acquisition Holdings, Inc. Complainant furthermore invokes the corporate names of its affiliated companies, all of which prominently encompass the sign “Shure”, such as Shure Incorporated and Shure Europe GmbH. Complainant alleges that its trademark should be considered a well-known trademark in the meaning of article 6bis of the Paris Convention.
Complainant alleges that the Domain Name is identical to the Trademarks and identical to the dominant part of its corporate name.
Complainant stipulates that it is unaware of any reason or circumstance which could be indicative of a legitimate interest. There is no relation between the parties, nor is there a license agreement or other authorization to use the Trademarks of Complainant.
Respondent has not made a legitimate, non-commercial, fair use of the Domain Name. The only uses made by Respondent of the Domain Name are (1) rerouting of site traffic from the Domain Name to Respondent's website at “www.fpgeluidstechniek.nl” and (2) offering the Domain Name for sale for 40.000 Euros. Respondent itself was never known by the name “shure”.
In the view of the above, Complainant considers that the Domain Name has been registered in bad faith. The Domain Name was registered on January 3, 2002. The Benelux Trademark has been filed in 1971 and the first Community Trademark was filed in 1996. Both the Trademarks and the company name are well-known amongst the relevant public, especially in Europe and in the Netherlands. Respondent is furthermore active in the same field, i.e. audio technology, therefore Respondent was unmistakably supposed to know of the existence of the Trademarks and Complainant's company name and thus demonstrated the bad faith with intentionally registering the Domain Name.
Complainant stipulates that the Domain Name is intentionally used, in order to primarily attract, for commercial gain, Internet users to Respondent's website by creating confusion and misleading those users with Complainant's trademarks. More in particular, the Internet user automatically gets redirected to the website “www.fpgeluidstechniek.nl” of Respondent when entering the Domain Name into the address bar of an Internet browser.
In the registration of the Domain Name, Respondent precluded Complainant from using this Internet address, even though Complainant offers audio products as well as audio services and therefore, the Internet is an important means in order to initiate business contacts with respect to the multimedia environment.
Moreover, after Complainant contacted Respondent in order to acquire the Domain Name on amicable terms, Respondent asked for a fee of 40.000 Euros, which according to Complainant by far exceeds valuable consideration for the costs of registration of the Domain Name, which underlines the bad faith of the registration.
Respondent did not reply to Complainant's contentions.
Since no Response was submitted, the Panelist will in conformity with article 10.3 of the Regulations decide this dispute based on the Complaint and find for Complainant, unless this would lead to a manifestly unlawful or unfounded result.
Based on article 2.1 of the Regulations, a claim to transfer a domain name must meet three cumulative conditions:
- The domain name is identical or confusingly similar to a trademark, a company name or other name by means of article 2.1 sub a (II) of the Regulations;
- The respondent has no rights or legitimate interest to use the domain name;
- The domain name has been registered or is being used in bad faith.
Considering these conditions, the Panelist rules as follows:
The Domain Name is identical to the Trademarks of Complainant. In assessing whether the Domain Name is identical or confusingly similar to the Trademarks, the “.nl” suffix is disregarded, it being a necessary component for registration and use of a domain name (see for example Pieter de Haan v. Orville Smith Ltd., WIPO Case No. DNL2008-0017). There are no differences between the Trademarks and the main element of the Domain Name. Therefore, consumer confusion is obvious, which is compounded by the fact that Respondent offers competing goods and services (in relation to audio technique) on its own website.
The Panelist considers that the claim to transfer the Domain Name meets the requirement of article 2.1 of the Regulations on the basis of the Trademarks. Therefore, there is no need for the Panelist to take into consideration the company names and other domain names.
The first requirement is therefore met.
Complainant alleges that Respondent has no authorization to register and use the Domain Name. Complainant furthermore alleges that Respondent is not generally known by the Domain Name, is not making a legitimate, non-commercial, fair use of the Domain Name, and has no other right to or legitimate interest in the Domain Name.
Since Complainant has convincingly argued that Respondent lacks an independent right or a legitimate interest, it is for Respondent to prove the opposite, as previously held in numerous cases. See for example Pieter de Haan v. Orville Smith Ltd., supra.
As Respondent did not file a Response and there is no other indication of a right to or a legitimate interest in the Domain Name, the Panelist considers that such right or interest is not present.
The Panelist therefore rules that the second criterion is also met.
As noted, the Panelist is of the opinion that the Domain Name is identical to the Trademarks, and the resulting confusion is compounded by the rerouting of the Domain Name, so that it resolves to Respondent's homepage. Complainant has argued that Respondent was aware of the well-known Trademarks of Complainant. This argument has not been contested by Respondent, which appears to be engaging in activities competing to those of Complainant. Furthermore, since the Domain Name is used to reroute visitors to Respondent's homepage and the Domain Name has been offered for sale, the Panel finds it plausible that Respondent has registered and used the Domain Name in bad faith, namely to generate more traffic to its homepage or otherwise obtain financial gain.
In the view of the above, the third criterion is also met.
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain name <shure.nl> be transferred to Complainant.
Tjeerd F.W. Overdijk
Dated: March 15, 2010