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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PROXIMUS, NV van publiek recht v. Contact Privacy Inc. Customer 1242625283 / Maarten Bekkers

Case No. D2018-1742

1. The Parties

The Complainant is PROXIMUS, NV van publiek recht of Brussels, Belgium, represented by Kirkpatrick S.A., Belgium.

The Respondent is Contact Privacy Inc. Customer 1242625283 of Ontario, Canada / Maarten Bekkers of Brasschaat, Belgium.

2. The Domain Name and Registrar

The Disputed Domain Name <myproximus.app> is registered with Google Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2018. On August 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 7, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Respondent sent an email communication to the Center on August 8, 2018. The Complainant filed an amended Complaint on August 10, 2018.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2018. The Respondent did not submit a substantive Response but sent an informal email communication to the Center on August 8, 2018, indicating that he did not wish to transfer the Disputed Domain Name and requesting information on the further procedure.

Accordingly, on September 4, 2018, the Center notified the Parties that the Center will proceed to Panel Appointment.

The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on September 12, 2018. 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

The Complainant, PROXIMUS NV van publiek recht, is the largest Telecom operator of Belgium. The Complainant is a public limited company and was formerly known as “Belgacom”. The majority of the Complainant’s shares are owned by the Belgian State. The Complainant provides a wide range of telecommunication services to Belgian households and companies, such as mobile and fixed telephony, Internet, digital television and corporate solutions.

The Complainant is the holder of a multitude of trade and service mark registrations for and relating to the mark PROXIMUS, which it uses in connection with its telecommunication services. The Complainant’s trademark portfolio includes, inter alia, the following trade and service mark registrations:

- PROXIMUS, word mark filed with the Benelux Office for Intellectual Property (“BOIP”) under No. 0537039 on September 30, 1993 in classes 9, 38 and 42; and

- PROXIMUS, word mark registered with the BOIP under No. 0953026 on May 22, 2014 in classes 9, 38, 41 and 42.

The Disputed Domain Name <myproximus.app> was registered by the Respondent on May 8, 2018, using a privacy service. The Disputed Domain Name does not resolve to an active webpage.

After verification of the Respondent’s identity and contact details by the Registrar, the Complainant contacted the Respondent with an email written in Dutch dated August 8, 2018. In this email, the Complainant notified the Respondent of its rights and requested the immediate transfer of the Disputed Domain Name. The Respondent replied to this communication on August 8, 2018, contending that he intended to use the Disputed Domain Name in connection to a website containing a user manual for the Complainant’s mobile application “MyProximus”. The same day, the Complainant responded by maintaining that the Respondent’s registration and intended use was not authorized by the Complainant and that it would further pursue the transfer of the Disputed Domain Name through the UDRP proceedings. On August 9, 2018, the Respondent replied that his intention was to clearly differentiate himself from the Complainant when he would use the Disputed Domain Name but that he was prepared to transfer the Disputed Domain Name in exchange for payment by the Complainant. When the Complainant requested a specific figure, the Respondent answered that this would depend on his lost profits and that the Complainant should make him an offer he could not refuse. On August 10, 2018, the Complainant made an offer of 200 EUR to cover the costs incurred for the registration of the Disputed Domain Name. The Respondent subsequently declined by stating that he did not consider this a serious offer.

5. Parties’ Contentions

A. Complainant

The Complainant considers the Disputed Domain Name to be confusingly similar to trademarks in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to the Complainant, the Respondent has not been commonly known by the Disputed Domain Name and is in no way affiliated with the Complainant. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. The Complainant contends that the Respondent knew, or at least should have known, of the existence of the Complainant’s trademark. The Complainant further claims that the Respondent has registered the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name to the Complainant for valuable consideration in excess of the documented out-of-pocket costs directly related to the Disputed Domain Name and that the Respondent attempts to attract Internet users, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. On August 8, 2018, the Respondent sent an informal email communication to the Center in which he maintained that he had registered the Disputed Domain Name with a purpose and that he did not wish to transfer the Disputed Domain Name.

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities.

Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) The Disputed Domain Name has been registered and is being used in bad faith.

The Panel will therefore deal with each of these requirements.

A. Identical or Confusingly Similar

To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there is a trademark in which the Complainant has rights. The Complainant’s PROXIMUS mark has been registered and used in connection to its telecommunication services.

The Disputed Domain Name incorporates the Complainant’s PROXIMUS trademark in its entirety, merely adding the non-distinctive prefix “my”.

The Panel is of the opinion that the mere addition of non-distinctive text to a complainant’s trademark does not avoid confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see Karen Millen Fashions Limited v. Akili Heidi, WIPO Case No. D2012-1395; Belstaff S.R.L. v. Jason Lau, Sharing, WIPO Case No. D2012-0783; Lime Wire LLC v. David Da Silva / Contactprivacy.com, WIPO Case No. D2007-1168; See also section 1.8, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), and cases cited therein).

The addition of generic Top-Level Domains (“gTLDs”) can be disregarded when comparing the similarities between a domain name and a mark (see e.g., Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206and Zions Bancorporation v. Mohammed Akik Miah, WIPO Case No. D2014-0269).

In the present case, the addition of the non-distinctive term “my” in the Disputed Domain Name, together with the gTLD “.app” may even strengthen the association with the Complainant and its PROXIMUS mark as it directly refers to the Complainant’s mobile application “MyProximus” (see in this regard the analysis under “C. Registered and used in bad faith”).

Accordingly, the Complainant has made out the first of the three elements of the Policy that it must establish.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

It is well established that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

The Panel notes that the Respondent has not been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights. The Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent exists.

Moreover, the Panel is of the opinion that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, the Respondent is not making any use of the Disputed Domain Name in connection with an active website. In his communications with the Complainant, the Respondent maintained that he was planning to use the Disputed Domain Name in connection with a website containing a user manual for the Complainant’s mobile application “MyProximus”. However, neither the Respondent nor the facts of the case indicate any demonstrable preparations to use the Disputed Domain Name (See section 2.2, WIPO Overview 3.0). Additionally, such an intended use cannot be considered a legitimate noncommercial or fair use of the domain name that does not risk to misleadingly divert consumers for commercial gain or to tarnish the PROXIMUS trademark of the Complainant. Moreover, the Disputed Domain Name does not seem to be comprised of or refer to a dictionary word or phrase. The passive holding or non-use of domain names is, in appropriate circumstances, evidence of a lack of rights or legitimate interests in the domain names (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; American Home Products Corporation v. Ben Malgioglio, WIPO Case No. D2000-1602; Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, WIPO Case No. D2000-1244).

The Respondent had the opportunity to demonstrate its rights or legitimate interests but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.

Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).

In the present case, it is inconceivable that the Respondent was unaware of the Complainant and its trademark rights when it registered the Disputed Domain Name. The Disputed Domain Name includes the Complainant’s distinctive PROXIMUS trademark in its entirety with the mere addition of the non-distinctive prefix “my”. Considering the distinctive character and the established reputation of the Complainant’s trademark in the territory where the Respondent is residing, the Respondent must have had knowledge of the Complainant’s rights at the time of registering the Disputed Domain Name. Furthermore, the Respondent has expressly indicated that his intention was to use the Disputed Domain Name in connection to the Complainant’s mobile application “MyProximus”. The Panel therefore finds that the Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests bad faith (See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc. v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007).

The Respondent is not presently using the Disputed Domain Name. The passive holding of the Disputed Domain Name may amount to bad faith when it is difficult to imagine any plausible future active use of the Disputed Domain Name by the Respondent that would be legitimate and not interfere with the Complainant’s well­known mark (see Inter-IKEA v. Polanski, WIPO Case No. D2000-1614; Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438; Telstra Corporation Limited v. Nuclear Marshmallows, supra). Additional factors to support a finding of bad faith in relation to the passive holding of a domain name include the degree of distinctiveness or reputation of the Complainant’s mark, the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and the Respondent’s concealing its identity or use of false contact details (see section 3.3, WIPO Overview 3.0).

In the present case, the Panel is of the opinion that the Complainant’s PROXIMUS trademark is distinctive and widely known, especially in Belgium where the Respondent is residing. This makes it difficult to conceive any plausible legitimate future use of the Disputed Domain Name by the Respondent. The incorporation of the Complainant’s PROXIMUS trademark together with the prefix “my” and the gTLD “.app” in the Disputed Domain Name directly relates to the Complainant’s mobile application “MyProximus” which is used by the Complainant’s customers to manage the different services they use, to monitor data usage, to pay invoices, etc. Accordingly, the Panel finds it likely that the Respondent has registered the Disputed Domain Name with the intent of attracting, for commercial gain, Internet users to a website connected to the Disputed Domain Name by creating a likelihood of confusion with the Complainant’s PROXIMUS trademark and “MyProximus” mobile application.

Additionally, by using a privacy registration service, the Respondent has taken active steps to conceal its identity, which may further support an inference of bad faith in light of the circumstances in which the service or the domain name is used (see Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696, where it was held that the use of a proxy registration service to avoid disclosing the identity of the real party in interest is also consistent with an inference of bad faith when combined with other evidence of evasive and irresponsible conduct).

The Panel also notes that the Respondent suggested to sell the Disputed Domain Name to the Complainant but that it did not consider the Complainant’s offer of EUR 200 to be reasonable.

Finally, by failing to respond to the Complaint, the Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate.

Therefore, the Panel finds that, on the balance of probabilities, it is shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last element 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 name <myproximus.app> be transferred to the Complainant.

Flip Jan Claude Petillion
Sole Panelist
Date: September 18, 2018

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