WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fit!Vak v. Edoco LTD.
Case No. DNL2010-0064
1. The Parties
Complainant is Fit!Vak of Oosterbeek, the Netherlands, represented by De Haan Advocaten & Notarissen, the Netherlands.
Respondent is Edoco LTD. of Bramhall, Stockport, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <fitvak.nl> (the “Domain Name”) is registered with SIDN through the registrar SiSpace.at Sieberer EDV.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2010. On November 2, 2010, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On November 3, 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 November 3, 2010. In accordance with the Regulations, article 7.1, the due date for Response was November 23, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 25, 2010.
The Center appointed Gregor S.P. Vos as the panelist in this matter on December 9, 2010. The Panel finds that it was properly constituted. 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.
4. Factual Background
Complainant, Fit!Vak, is a trade association of fitness centers and related physical exercise centers. The association of Complainant inter alia supports its members in the field of quality control, management, employment policy, capacity and product development.
The association of Complainant was established in 1995, and it uses the trade name Fit!Vak (hereafter: the “Trade Name”) since that date.
Respondent is a company established in Bramhall, Stockport, United Kingdom. Respondent became the holder of the Domain Name on June 13, 2009.
5. Parties’ Contentions
Complainant bases its Complaint on its Trade Name.
The Domain Name is Identical or Confusingly Similar to Complainant’s Trade Name Rights
According to Complainant, the Domain Name is confusingly similar or even identical when compared to Complainant’s Trade Name.
Complainant furthermore alleges that already in a number of cases, actual confusion amongst several companies in the fitness sector has occurred by evidencing that these companies have included the Domain Name in the contact details when referring to Complainant on their websites.
Respondent has no Rights or Legitimate Interests in the Domain Name
According to Complainant, Respondent has no trade name rights in the name Fitvak and does not own any trademark registrations or is known in relation to the Domain Name. Complainant has further not granted Respondent permission to use its Trade Name.
Complainant furthermore alleges that Respondent is not using the Domain Name for bona fide trade practices. The use of the Domain Name cannot be described as legitimate non-commercial use of the Domain Name because the website under the Domain Name is a circulating display of sponsored links, some of which direct to competitors of Complainant.
Respondent has Registered or is Using the Domain Name in Bad Faith
Complainant contends that the Trade Name has a strong reputation and is well-known in the Netherlands. Therefore it would be hard to imagine a plausible good faith use of the Domain Name.
Complainant alleges that the Domain Name has been registered by Respondent with the aim to take advantage of the confusion between the Domain Name and Complainant’s rights to its Trade Name. The Domain Name is therefore registered in bad faith.
The website under the Domain Name contains sponsored links. Internet users are attracted to the website under the Domain Name through the likelihood of confusion of the source, sponsorship, affiliation or endorsement of the website. The Domain Name is therefore being used for commercial gain.
In addition, Complainant notes that Respondent has repeatedly registered domain names, which have been subject to procedures under the Regulations. This strengthens the view of Complainant that Respondent is acting in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Default of Respondent
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 disputed domain name is identical or confusingly similar to a trademark or trade name protected under Dutch law, or other name mentioned in article 2.1 sub a (II) of the Regulations;
- The respondent has no rights to or legitimate interest in the disputed domain name;
- The disputed domain name has been registered or is being used in bad faith.
Considering these conditions, the Panelist rules as follows:
A. Identical or Confusingly Similar
Complainant contends that it is participating actively and durably in Dutch society under its Trade Name since 1995, which it has supported with underlying documents. The alleged trade name rights of Complainant have not been contested by Respondent. The Panelist is therefore satisfied that Complainant owns valid trade name rights in the Netherlands in the name Fit!Vak.
It is established case law that the top level domain “.nl” can be disregarded in assessing the similarity between the relevant trade name on the one hand, and the disputed domain name on the other. In this regard, the Domain Name could be considered practically identical to the Trade Name. The only difference between the Domain Name and the Trade Name is the fact that the exclamation mark in the Trade Name Fit!Vak is not included in the Domain Name <fitvak.nl>, which does not make any relevant difference.
Therefore, the Panelist finds that the Domain Name is confusingly similar to Complainants’ Trade Name within the meaning of article 2.1 sub of the Regulations.
B. Rights or Legitimate Interests
Pursuant to article 2.1 sub b of the Regulations, Complainant must demonstrate that Respondent has no rights to or legitimate interest in the Domain Name. This condition is met if Complainant makes a prima facie case that Respondent has no such rights or interests, and Respondent fails to rebut this (see for example Technische Unie B.V. and Otra Information Services v. Technology Services Ltd., WIPO Case No. DNL2008-0002).
Complainant alleged that Respondent does not have any relevant trademark or trade name rights regarding the term “Fitvak” and that Respondent is not affiliated to Complainant and has received no consent to use the Trade Name. Respondent uses the Domain Name to offer sponsored links. The Panelist furthermore found that the Domain Name is being offered for sale.
Respondent did not dispute this, and the Panelist could not establish any indications that any of the circumstances as described in article 3.1 of the Regulations apply, nor that Respondent in any possible other way has a right to or legitimate interest in the Domain Name. The Panelist is therefore satisfied that Respondent has no rights to, or legitimate interest in, the Domain Name.
C. Registered or Used in Bad Faith
Given the fact that Complainant’s Trade Name pre-dates the date of the current registration of the Domain Name and the fact that Complainant apparently has been active under its Trade Name as of 1995 and since then has become one of the leading trade associations in its field in the Netherlands, the Panelist is of the opinion that Respondent was aware or should been aware of Complainant and its Trade Name. Taken into account that the website under the Domain Name offers sponsored links to inter alia competitors of Complainant and is offered for sale, the Domain Name can also be considered as used for commercial gain, by attracting Internet users to a website of Respondent or other online locations through the likelihood of confusion which may arise with the Complainants’ Trade Name.
Furthermore, taking into account various previous administrative panel decisions such as Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008; GGD Nederland v. Edoco LTD., WIPO Case No. DNL2008-0015; De Stichting The Clash of the Coverbands v. Edoco Ltd., WIPO Case No. DNL2009-0050 and Boels Verhuur B.V. v. Edoco LTD., WIPO Case No. DNL2010-0020), in all of which Respondent was involved as the respondent as well and in which it also chose not to file a response, it seems likely that Respondent follows a pattern of registering and using domain names in bad faith.
Given the above, the Panelist holds that the Domain Name has been registered and is being used in bad faith. The third criterion is therefore also met.
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name <fitvak.nl> be transferred to Complainant.
Gregor S.P. Vos
Date: December 23, 2010