WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NV (Naamloze Vennootschap) Euphony Benelux v. Websitemaken.NU BV

Case No. D2013-0652

1. The Parties

Complainant is NV (Naamloze Vennootschap) Euphony Benelux of Antwerpen, Belgium, represented by Monard-D'Hulst, Antwerp, Belgium.

Respondent is Websitemaken.NU BV of Klazienaveen, Netherlands.

2. The Domain Names and Registrar

The disputed domain names <euphonie-nederland.com> and <euphony-nederland.com> are registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2013. On April 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 11, 2013, the Registrar transmitted by email to the Center its verification response confirming that 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, Complainant filed an amendment to the Complaint on April 15, 2013.

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” 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 Respondent of the Complaint, and the proceedings commenced on April 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 10, 2013.

The Center appointed Stephanie G. Hartung as the sole panelist in this matter on May 22, 2013. 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

Complainant is a company incorporated under the name of “Euphony Benelux” with apparent legal domicile in Antwerp, Belgium.

Complainant has submitted evidence that it is the registered owner of numerous trademarks relating to the designation EUPHONY, including the following:

- Word mark EUPHONY, Benelux Office for Intellectual Property, Registration Number: 0664921, Registration Date: September 1, 1999; Status: Active;

- Word mark EUPHONY, Office for Harmonization in the Internal Market (OHIM), Registration Number: 9230641, Registration Date: December 12, 2010; Status: Active;

- Word/design mark EUPHONY REWARDING PEOPLE, Office for Harmonization in the Internal Market (OHIM), Registration Number: 8786048, Registration Date: September 20, 2010; Status: Active;

- Word/design mark EUPHONY, Office for Harmonization in the Internal Market (OHIM), Registration Number: 1229681, Registration Date: January 18, 2011; Status: Active.

The disputed domain names <euphonie-nederland.com> and <euphony-nederland.com> were registered on October 27, 2011; they redirect to websites at “www.euphonie-nederland.com” as well as “www.euphony-nederland.com” which, inter alia, offer the disputed domain names for sale in the Dutch language (“Dit Domein Naam is te koop”).

Complainant requests that the disputed domain names be cancelled.

5. Parties’ Contentions

A. Complainant

Complainant alleges that its EUPHONY trademark is well-known in the relevant trade and industry.

Complainant asserts that the disputed domain names are confusingly similar to Complainant’s EUPHONY trademark, because (1) the word “euphony” in one of the disputed domain names is identical with Complainant’s EUPHONY trademark, while the word “euphonie” in the other disputed domain name is highly similar thereto, (2) the added suffix “nederland” solely refers to the geographical area of the Netherlands, one of the national markets where Complainant is active by one of its subsidiaries, namely Euphony Netherland BV, so that the addition of the word “nederland” in the disputed domain names has a descriptive character and will confuse Internet user even more and (3) given the fact that the websites under the disputed domain names call for employees for the purpose of reselling Complainant’s services is likely to confuse Internet users and may make average consumers think that there is some kind of affiliation between Complainant and Respondent.

Complainant further suggests that Respondent has no rights or legitimate interests in respect of the disputed domain names, because (1) Respondent neither has any trademark rights in the disputed domain names nor are there any indications apparent that Respondent is commonly known by the disputed domain names, (2) Respondent has no connection or affiliation with Complainant and has not received any license or consent, express or implied, to use any of Complainant’s EUPHONY trademarks, (3) even if Respondent was one of Complainant’s “business consultants”, according to Complainant’s policies for business consultants Respondent still had no rights to use Complainant’s EUPHONY trademark and (4) the disputed domain names and the contents of the websites thereunder are offered for sale, thus Respondent is not using the disputed domain names in connection with a bona fide offering of goods and services.

Finally, Complainant claims that the disputed domain names were registered and are being used in bad faith since (1) the disputed domain names are clearly offered for sale, (2) Respondent did not answer any of Complainant’s pre-procedural correspondence, such as a cease-and-desist letter dated March 26, 2013 and (3) Respondent clearly is trading on the reputation and good will of Complainant’s EUPHONY trademark by letting Internet users believe that there is some kind of affiliation between Complainant and Respondent, which is not the case.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:

(i) That the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) That the disputed domain names have been registered and are being used in bad faith.

Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(e) of the Rules provides that if Respondent does not submit a Response, in the absence of special circumstances, the Panel is to decide the dispute solely based upon the Complaint.

A. Identical or Confusingly Similar

The Panel concludes that the disputed domain names <euphonie-nederland.com> and <euphony-nederland.com> are confusingly similar to the EUPHONY trademark in which Complainant has shown to have rights.

The disputed domain name <euphony-nederland.com> incorporates the EUPHONY trademark in its entirety; the disputed domain name <euphonie-nederland.com> incorporates the EUPHONY trademark as well with the simple variation of using “ie” instead of “y”, which from an acoustic point of view may not even be perceived, thus the designation “euphonie” is at least highly similar to Complainant’s EUPHONY trademark.

Moreover, it has been held in numerous UDRP decisions and has meanwhile become a consensus view among panelists (see WIPO Overview of Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9) that the addition of a generic or descriptive term or geographical wording to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Accordingly, the mere addition of the geographical term “nederland” is not capable to dispel the confusing similarity arising from the incorporation of Complainant’s EUPHONY trademark into the disputed domain names. The Panel also recognizes that Complainant’s name is “Euphony Benelux” and that Complainant undisputedly has a subsidiary under the name of “Euphony Netherland”, so that adding the term “nederland” to Complainant’s EUPHONY trademark in the disputed domain names even reinforces this finding of a confusing similarity.

As an explanatory note, the content of the websites operated under the disputed domain names may in fact lead to a consumer confusion; however, such confusion has no relevance for the determination whether or not the disputed domain names are identical or confusingly similar to Complainant’s EUPHONY trademark (see WIPO Overview 2.0, paragraph 1.2).

Therefore, the first element under the Policy as set forth by paragraph 4(a)(i) in the case at hand is fulfilled.

B. Rights or Legitimate Interests

The Panel is further convinced that on the basis of Complainant’s undisputed contentions, Respondent apparently neither has made use of the disputed domain names in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain names, nor can it be found that Respondent made a legitimate, noncommercial or fair use of the disputed domain names without intent for commercial gain.

The disputed domain names redirect to websites under “www.euphonie-nederland.com” as well as “euphony-nederland.com” where they are offered for sale. Against this background, the Panel takes the view that – regardless of the alleged reputation and good will of Complainant’s EUPHONY trademark which have not been further evidenced – Respondent apparently neither made use of the disputed domain names in connection with a bona fide offering of goods or services nor in a legitimate, noncommercial or fair manner without intent for commercial gain. Moreover, there are no indications whatsoever apparent that Respondent is one of Complainant’s so-called “business consultants” or that it has any other function which might confer rights or legitimate interests in the disputed domain names under the UDRP (such as e.g. an authorized or even an unauthorized reseller under the so-called “Oki Data” doctrine).

Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, Respondent did not reply to Complainant’s allegations as they were included in the Complaint duly notified to Respondent by the Center on April 17, 2013.

Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and thus the second element of the Policy.

C. Registered and Used in Bad Faith

The Panel finally holds that the disputed domain names were registered and are being used by Respondent in bad faith.

The Panel takes the view that the redirection of the disputed domain names, which are confusingly similar to Complainant’s EUPHONY trademark, to websites which offer the disputed domain names for sale is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own websites, by creating a likelihood of confusion with Complainant’s EUPHONY trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s websites or a product thereon. Such circumstances shall be evidence of registration and use of the disputed domain names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

Moreover, given the fact that Respondent registered two domain names which are highly similar to Complainant’s EUPHONY trademark and are clearly offered for sale, allows the educated guess that Respondent registered the disputed domain names primarily for the purpose of selling them to Complainant being the owner of the EUPHONY trademark for valuable consideration in excess of Respondent’s out-of-pocket costs; these circumstances, which have by no means been disputed by Respondent, again shall be evidence of registration and use of the disputed domain names in bad faith (see paragraph 4(b)(i) of the Policy).

Therefore, the Panel finds that also the third element under the Policy set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) of the Policy.

7. Decision

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 names <euphonie-nederland.com> as well as <euphony-nederland.com> be cancelled.

Stephanie G. Hartung, LL.M.
Sole Panelist
Date: June 5, 2013