WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
N.V. Torfs v. J Besselink Holding BV
Case No. D2011-1048
1. The Parties
The Complainant is N.V. Torfs of Sint-Niklaas, Belgium, represented by Hermans & Verwaest, Belgium.
The Respondent is J Besselink Holding BV of Vught, Netherlands.
2. The Domain Name and Registrar
The disputed domain name <torfsschoenen.com> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2011. On June 21, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On June 21, 2011, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amendment to the Complaint on June 28, 2011. In response to a notification by the Center that the Complaint and the amendment to the Complaint were administratively deficient, the Complainant filed a second amendment to the Complaint on July 1, 2011.
The Center verified that the Complaint together with the amendments to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 July 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 26, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 27, 2011.
The Center appointed Torsten Bettinger as the sole panelist in this matter on August 1, 2011. 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.
The Panel notes that the Complainant, in its initial Complaint, made a request that Dutch be the language of the proceeding on the basis that it believed this to be the language of the registration agreement. The Registrar, however, confirmed that English was the language of the registration agreement. Thus, in accordance with paragraph 11 of the Rules, and also noting that the Complaint and both amendments to the Complaint were filed in English, the Panel confirms that English is the proper language of the proceeding.
4. Factual Background
Since the mid-1920’s, the Complainant has sold and promoted footwear under the “Torfs” brand. The company was founded in 1918 as a family business, and therefore uses the name “Torfs”, which is in fact the surname of the founder, who is also the great-grandfather of the current CEO. Today the “Torfs” brand is synonymous with footwear sales outlets as well as the TORFS line of shoes. The Complainant indicates that its shoe store network consists of 57 branches and enjoys a well-known reputation.
The Complainant is the registered proprietor of the TORFS trademark. That mark was registered through the Benelux Office for Intellectual Property (BOIP) on May 7, 1993, with registration number 0532809. Additionally, the Complainant operates a website at “www.torfs.be”.
The disputed domain name was registered on May 17, 2011. It resolves to a website at “www.torfsschoenen.com”, which according to the evidence provided by the Complaint previously displayed pictures of footwear similar or identical to the Complainant’s goods in addition to third-party advertising links. As of the date of this decision, the website at the disputed domain name displays an advertisement for domain name sales through the Registrar’s reseller.
5. Parties’ Contentions
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.
In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant argues that the disputed domain name is confusingly similar to its TORFS mark, as it fully includes the trademark in addition to the descriptive term “schoenen”, which means “shoes” in the Dutch language, and the Generic Top-Level Domain (gTLD) “.com”.
The Complainant further contends that it has not authorized the Respondent to use its TORFS mark in any manner, that the Respondent has no connection with the Complainant, and that the Respondent is not using the disputed domain name in connection with any bona fide commercial, noncommercial or fair use.
Finally, the Complainant states that the disputed domain name was registered and is being been used in bad faith due to its well-known use of the TORFS mark in connection with footwear, and its registration for the mark which predates the registration of the disputed domain name. As the website at the disputed domain name previously displayed pay-per-click links for products related to those of the Complainant, the Complainant argues that the Respondent has registered the disputed domain name in order to divert Internet users to its website for commercial gain in violation of paragraph 4(b)(iv) of the Policy. The Complainant alleges that the Respondent’s failure to reply to two cease-and-desist letters is further indication of the Respondent’s bad faith, and that the Respondent has previously requested a high out-of-pocket transfer cost via telephone conversation.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the disputed domain name is used or other marketing and use factors usually considered in trademark infringement. See F. Hoffmann-La Roche AG v. P Martin, WIPO Case No. D2009-0323; and BWT Brands, Inc and British American Tobacco (Brands), Inc v. NABR, WIPO Case No. D2001-1480.
The addition of a generic word or term which is descriptive of a complainant’s goods or services will not serve to distinguish a respondent’s domain name from the relevant trademark. See Revlon Consumer Products Corporation v. Vladimir Sangco, WIPO Case No. D2010-1774; Viacom International Inc. v. Transure Enterprise Ltd., WIPO Case No. D2009-1616; and Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110. In this case, the descriptive term “schoenen”, which means “shoes” in Dutch, has been appended to the Complainant’s registered TORFS mark, which may serve to heighten Internet user confusion.
Finally, it is well established that a gTLD suffix, such as “.com”, is generally held to be irrelevant for the purposes of determining identity or confusing similarity under the Policy. See Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
The Panel thus finds that the disputed domain name <torfsschoenen.com> is confusingly similar to the Complainant's TORFS mark and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. It is, however, the consensus view among UDRP panelists that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack rights or legitimate interests in the domain name. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
In this case, the Complainant has made a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant confirms that it has not licensed or authorized the Respondent to use its TORFS mark in any fashion and that there is no connection between the Respondent and the Complainant. There is no evidence on the present record, on the website active at the disputed domain name, or in the publicly-available WhoIs records to indicate that the Respondent is commonly known by the disputed domain name or a name corresponding to the disputed domain name. Additionally, as the website previously displayed what appeared to be the Complainant’s goods (or similar-looking footwear products) alongside links to third-party websites, through which the Respondent presumably generated click-through revenue, the Respondent clearly is not making any noncommercial or fair use of the disputed domain name. The fact that the Respondent has at this time taken down the page advertising shoes does not alter this finding, particularly as the current parking page also appears to generate revenue via referral advertising, in this case via a domain name reseller. The Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services as it is trading on the goodwill of the Complainant’s trademark in order to generate revenue.
The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to rights or legitimate interests in the disputed domain name.
Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) is also satisfied.
C. Registered and Used in Bad Faith
The Complainant indicated that its TORFS mark is widely recognized in connection with footwear, and that said mark was registered roughly eighteen years before the creation of the disputed domain name. Additionally, the disputed domain name selected by the Respondent contains a dictionary term which is descriptive of the Complainant’s goods, indicating that it was fully aware of the Complainant and its TORFS mark.
Furthermore, by fully incorporating the TORFS mark in the disputed domain name and using the disputed domain name in connection with a parking page providing links to third parties’ websites, the Respondent was, in all likelihood, trying to attract Internet users intended for the Complainant’s website to its own for commercial gain by creating a likelihood of confusion with the Complainant’s mark. Such use constitutes bad faith under paragraph 4(b)(iv) of the Policy. See F. Hoffmann-La Roche AG v. DOMIBOT, WIPO Case No. D2006-0327.
As to the Complainant’s assertion that the Respondent has previously offered to sell the disputed domain name at a high price, the Panel notes that the Complainant does not provide any evidence to support this bare claim. Accordingly, the Panel makes no finding in that regard.
The Panel therefore concludes that the requirement of paragraph 4(a)(iii) of the Policy has also been met.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <torfsschoenen.com> be transferred to the Complainant.
Dated: August 9, 2011