Complainant is CEWE COLOR AG & Co. OHG of Oldenburg, Germany, represented by Klos Morel Vos & Schaap, the Netherlands.
Respondent is Helo Holdings LTD of Amsterdam, the Netherlands.
The disputed domain name <cewefotoboek.nl> (the “Domain Name”) is registered with SIDN.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2010. On May 19, 2010, the Center transmitted by email to SIDN a request for registry verification in connection with the Domain Name. On May 20, 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 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 1, 2010. In accordance with the Regulations, article 7.1, the due date for Response was June 21, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default to submit a response on June 22, 2010.
After having received the payment of the fees, the Center appointed Tjeerd F.W. Overdijk as the Panelist in this matter on July 5, 2010. The Panelist finds that he 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 is a German company having its business in Oldenburg, Germany. Complainant is one of the European market leaders in photofinishing services and related products. It is also one of the leading suppliers of photo books and digital value added products. Complainant is the producer of the CEWE photo book. Complainant has registered the domain name <cewe-fotoboek.nl> on September 9, 2005. Complainant is the owner of the following trade mark registrations:
1. International registration CEWE (no. 912556) registered on December 27, 2005, in (amongst others) the European Union as a whole for classes 1, 9, 14, 16, 18, 20, 21, 24, 25, 27, 28, 35, 38, 39, 40, 41 and 42.
2. Community registration CEWE PHOTOBOOK (no. 7289911) registered on October 7, 2009, registered for classes 1, 9, 16, 20, 21, 25, 28, 38, 40 and 42.
3. Community registration CEWE PHOTOWORLD (no. 7290372) registered on October 7, 2009, registered for classes 1, 9, 16, 20, 21, 25, 28, 38, 40 and 42.
These registrations will hereafter jointly be referred to as the “Trade Marks”.
Respondent is a company established in Amsterdam, the Netherlands. Respondent registered the Domain Name on December 30, 2009.
Complainant mainly bases its Complaint on its Trade Marks. Besides that, Complainant alleges that it has been using the name CEWE Color as its Trade Name in its communications towards third parties in the Netherlands. Complainant also bases its claims on this Trade Name.
Complainant mentions that it is the owner of a number of domain names of which CEWE forms the key part. Complainant submitted a list of its domain names, including the domain names <cewe-fotoboek.nl> and <cewe-fotobuch.de>.
In the Domain Name, the most distinctive element is ‘cewe'. The element ‘fotoboek' is a descriptive element which could be translated as ‘photo book'. The element ‘fotoboek' should therefore play a less significant role in the comparison. As a result, the Domain Name is confusingly similar to the International Trade Mark CEWE.
Secondly, Complainant submitted that the Domain Name is similar to the Community Trade Mark CEWE PHOTOBOOK. The first element of the Domain Name, ‘cewe', is identical to the first element of said Community Trade Mark. The second element in the Domain Name, ‘fotoboek' is phonetically and conceptually identical to the second part of said Community Trade Mark. As a result, the Domain Name is confusingly similar. Similar arguments apply in relation to the Community Trade Mark CEWE PHOTOWORLD. According to Complainant the Domain Name is also confusingly similar to this Community Trade Mark.
Complainant furthermore invokes its Trade Name alleging that the Domain Name is highly similar to the Trade Name, CEWE Color, since the distinctive element of the Domain Name is identical to the first and most prominent element of the Trade Name.
Complainant alleges that Respondent is not using the Domain Name for bona fide trade practices, since it is not offering goods or services under the Domain Name at all, nor made any demonstrable preparations to use the Domain Name. Respondent is not associated with Complainant in any way, nor has it received consent of Complainant to use the sign Cewe and/or Cewe fotoboek. Respondent does not own any valid trade mark registration in connection to the Domain Name and it is not generally known under the name Cewe fotoboek or under the name Cewe. Respondent is not making a legitimate non-commercial fair use of the Domain Name. The Domain Name was registered on December 30, 2009, long time after the Trade Marks and the domain names of Complainant were registered. Furthermore, the Domain Name is being offered for sale. Respondent thus only registered and uses the Domain Name in order to benefit from the reputation of the Trade Marks and to commercially benefit from the Internet traffic generated by the Domain Name.
Complainant alleges that it is most likely that Respondent registered the Domain Name for the purpose of selling, renting or otherwise transferring the registration to Complainant. Respondent was obviously aware of Complainant's domain name <cewe-fotoboek.nl>, which has been registered years before the registration of the Domain Name. This shows that Respondent has registered the Domain Name in order to prevent Complainant from using it.
The website connected to the Domain Name contains sponsored links. Internet users are attracted to the website connected to the Domain Name through the likelihood of confusion of the source, sponsorship, affiliation or endorsement of the website. The Domain Name is thus being used for commercial gain.
Respondent did not reply to Complainant's contentions.
As Complainant is not domiciled in the Netherlands and there do not appear to be any exceptional circumstances which persuade the Panelist to decide that the proceedings are to be conducted in Dutch, the language of the proceedings is English in accordance with article 17.2 of the Regulations.
Article 10.3 of the Regulations provides that in the event that a respondent fails to submit a response, the Complaint shall be granted unless the Panelist considers it to be without basis in law or fact.
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 trade mark or trade name protected under Dutch law, or other name by means of article 2.1 sub a (II) of the Regulations;
- The respondent has no rights to or legitimate interests in the domain name;
- The domain name has been registered or is being used in bad faith.
Considering these conditions, the Panelist rules as follows:
It is established case law that the top level domain “.nl” can be disregarded in assessing the similarity between the relevant trade mark or trade name on the one hand, and the disputed domain name on the other, because “.nl” is 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, AB Elextrolux v. Marcel Vlaar, WIPO Case No. DNL2008-0005, Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008 and Oakley Inc. v. Oakley Publishing/Internet Publishing, WIPO Case No. DNL2008-0010).
The Panelist considers that the Domain Name is highly similar to the Community Trade Mark CEWE PHOTOBOOK. The Domain Name is phonetically and conceptually identical to said Community Trade Mark.
Furthermore, similarity is present in the comparison between the Domain Name and the International Trade Mark CEWE. The textual element ‘cewe' is to be considered the dominant part of the Domain Name, while the Dutch word ‘fotoboek' (meaning ‘photobook' in English) is generic. This generic component is not sufficient to avoid the likelihood of confusion between the Domain Name and the International Trade Mark CEWE (see for example Bejo Zaden B.V. v. Lotom Group S.A., WIPO Case No. DNL2010-0030).
Therefore, the Panelist finds that the Domain Name is confusingly similar to Complainant's International Trade Mark CEWE and the Community Trade Mark CEWE PHOTOBOOK within the meaning of article 2.1 sub a of the Regulations.
Given this view of the Panelist in relation to similarity between the Domain Name and the aforementioned Trade Marks, the case does not further depend on the Community Trade Mark CEWE PHOTOWORLD, nor does it depends on the alleged identity between the Domain Name and the Trade Name. The Panel will therefore proceed to the assessment of compliance with the second element of article 2.1 of the Regulations.
It is established in case law (see for example Pieter de Haan, supra, and Technische Unie B.V. and Otra Information Services v. Technology Services Ltd., WIPO Case No. DNL2008-0002) that the condition as set out in article 2.1 sub b of the Regulations is met if a complainant makes a prima facie case that the respondent has no such rights or interests, and the respondent fails to rebut this.
As follows from the Complaint, Respondent does not have any relevant trade mark or trade name rights and it is not generally known under the name Cewe Fotoboek or Cewe. Respondent is not affiliated to Complainant and has no consent to use the Trade Marks or Trade Name. Moreover, Respondent offers the Domain Name for sale and uses the Domain Name to offer sponsored links.
Since Respondent did not file a Response and there is no other indication of any right to or legitimate interest in the Domain Name, the Panelist considers that such a right or interest is not present.
The Panelist therefore rules that the second criterion is also met.
The arguments regarding bad faith have not been contested by Respondent and should be duly taken into account. The Panelist notes that the production of photo books is a growing industry, not only in Germany, but also in the Netherlands. As stated by Complainant, it is one of the market leaders in Europe in the field of photo related products. It is furthermore the largest player in this field in the Netherlands.1 As one of the market leaders, it is likely that Complainant is a well-known company in the industry.
In the absence of a Response by Respondent, the Domain Name therefore can be considered as used for commercial gain; to attract traffic through the likelihood of confusion which may arise with the Trade Marks and to offer the Domain Name for sale. The Panelist thus finds that the Domain Name has been registered and is being used in bad faith.
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 Regulation, the Panel orders that the Domain Name <cewefotoboek.nl> be transferred to Complainant.
Tjeerd F.W. Overdijk
Dated: July 20, 2010
1 Het Financieele Dagblad, July 9, 2010