WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nutri-Akt b.v. v. Edoco LTD.
Case No. DNL2011-0003
1. The Parties
Complainant is Nutri-Akt b.v. of Woerden, the Netherlands, represented by its in-house counsel.
Respondent is Edoco LTD. of Stockport, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <nutriakt.nl> (the “Domain Name”) is registered with SIDN through SiSpace.at Sieberer EDV.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2011. On January 7, 2011, the Center transmitted by email to SIDN a request for registrant verification in connection with the Domain Name. On January 11, 2011, 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 articles 5.1 and 16.4 of the Regulations, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 11, 2011. In accordance with the article 7.1 of the Regulations, the due date for Response was January 31, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 1, 2011.
The Center appointed Hub. J. Harmeling as the Panel in this matter on February 11, 2011. 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 article 9.2 of the Regulations.
As Respondent is not domiciled in the Netherlands and there do not appear to be any exceptional circumstances which persuade the Panel 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.
Due to exceptional circumstances, the Center informed parties on behalf of the Panel that the decision date had been moved to March 25, 2011.
4. Factual Background
The Panel will proceed on the facts as stated by Complainant, and not contested by Respondent. Furthermore, the Panel will assess the information provided by the Center and SIDN.
Complainant is a private company with limited liability, established on May 11, 1999, and incorporated under Dutch Law. Complainant is a Dutch recruitment agency specialized in recruiting personnel in food, technology, nutrition and health sectors.
Respondent is a legal entity incorporated under foreign law. According to the data in the SIDN register, Respondent is established in Stockport, United Kingdom of Great Britain and Northern Ireland. From the case documents, the activities of Respondent remain unknown.
Respondent registered the Domain Name on April 20, 2007.
The Domain Name currently redirects to the website “www.ndparking.com/nutriakt.nl”.
Complainant is the proprietor of the Benelux wordmark NUTRI-AKT, applied for on September 2, 2008 (publication of the application on September 5, 2008) and registered under number 1165987 on December 10, 2008. The trademark registration concerns the following goods and services classes:
35: Advertising; business management; business administration; office functions;
41: Education; providing of training; entertainment; sporting and cultural activities;
45: Legal services.
Complainant is a private company with limited liability, Nutri-Akt b.v., which was incorporated by a notarized deed dated May 11, 1999. The name Nutri-Akt was first registered at the Chamber of Commerce on May 21, 1999.
5. Parties’ Contentions
First, Complainant states that it is entitled to the NUTRI-AKT trademark and trade name. Furthermore, Complainant registered and uses the following domain name: <nutri-akt.nl>. The Domain Name is confusingly similar to Complainant’s trademark, trade name and domain name, which Complainant uses to participate in social and economic life.
Second, Complainant alleges that Respondent has no rights to or legitimate interests in the Domain Name. Respondent is not publicly known by the name Nutriakt, but by Edoco.
Third, Complainant claims that Respondent uses the Domain Name in bad faith. Complainant puts forward that its related business is online abused by Respondent, since Respondent’s business is in fact unrelated to Complainant’s activities. Thus, the use of the Domain Name disturbs Complainant’s activities.
In addition, Complainant notes that Respondent has repeatedly registered and used domain names, which have been subject to procedures under the Regulations. This strengthens the view of Complainant that Respondent is acting in bad faith.
Finally, Complainant submitted correspondence from Complainant to Respondent, suggesting Complainant’s ultimately fruitless attempts to arrange an amicably transfer of the Domain Name to Complainant.
Complainant requests the Panel to decide that Complainant shall become the registrant of the Domain Name instead of Respondent.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
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 Panel considers it to be without basis in law or fact.
The Panel notes that Respondent has not filed a response. However, the Panel finds that this does not mean that the requested remedy should automatically be awarded. The Panel will have to determine whether the Complainant’s prima facie case meets the requirements of article 2.1 of the Regulations (Taylor Made Golf Company, Inc. v. Lotom Group S.A., WIPO Case No. DNL2010-0067 and Société Air France v. Helo Holdings LTD, WIPO Case No. DNL2010-0082).
Based on article 2.1 of the Regulations, a claim to transfer a domain name must meet three cumulative conditions:
1. The disputed domain name is identical or confusingly similar to a
(i) trademark or trade name protected under Dutch law, or
(ii) other name mentioned in article 2.1 sub a (II) of the Regulations;
2. The respondent has no rights to or legitimate interest in the disputed domain name;
3. The disputed domain name has been registered or is being used in bad faith.
Considering these conditions, the Panel rules as follows:
A. Identical or Confusingly Similar
Complainant claims it has rights in the Benelux wordmark NUTRI-AKT. Considering Complainant provided neither the Center nor the Panel with further details, the Panel has exercised its discretion to conduct limited additional research (Arnhem Coming Soon B.V. v. Benson and Partner Ltd, WIPO Case No. DNL2011-0002) and has confirmed in the Benelux Trademark Register that Complainant is indeed the holder of the wordmark NUTRI-AKT.
It is established case law that the registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The Regulations, in similar fashion to the Uniform Domain Name Dispute Resolution Policy (“UDRP”), make no specific reference to the date on which the owner of the trademark acquired rights (for cases under the UDRP, see e.g. Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827, AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527, Iogen Corporation v. IOGEN, WIPO Case No. D2003-0544 and MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598).
It is established case law that the top level domain “.nl” can be disregarded in assessing the similarity between the relevant trademark on the one hand, and the Domain Name on the other (Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008; FrontRange Solutions Inc. v. NOBLIS SaleSConnectionS BV, WIPO Case No. DNL2008-0018 and Technische Unie B.V. v. Lotom Group S.A., WIPO Case No. DNL2008-0063). In this regard, the Domain Name could be considered practically identical to the trademark. The only difference is the fact that the hyphen in the NUTRI-AKT trademark is not included in the Domain Name <nutriakt.nl>, which does not make any relevant difference.
Therefore, the Panel finds that the Domain Name is confusingly similar to Complainant’s trademark within the meaning of article 2.1 sub a of the Regulations. Therefore the first criterion is met.
Complainant further claims rights in the trade name Nutri-Akt. In view of the above conclusion in relation to confusing similarity with Complainant’s trademark, there is no need for the Panel to address this additional ground for the Complaint.
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 at least a prima facie case that Respondent has no such rights or interests, and Respondent fails to rebut this. Complainant is then deemed to have satisfied the second criterion. (See for example Technische Unie B.V. and Otra Information Services v. Technology Services Ltd., WIPO Case No. DNL2008-0002 and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
While the overall burden of proof is on Complainant, the element of possible rights or legitimate interests of Respondent in the Domain Name is in fact specifically within the knowledge of Respondent. This may put Complainant in the often impossible position of proving a negative. This should, as indicated correctly in Julian Barnes – V - Old Barn Studios Limited, WIPO Case No. D 2001-0121, be approached as follows: “the [c]omplainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the [r]espondent has no rights to the name of which he is aware, he has not given any permission to the [r]espondent).” Unless the allegation is manifestly misconceived, Respondent has to demonstrate his rights or legitimate interests in respect of the Domain Name under article 3.1 of the Regulations (Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
Complainant claims that Respondent has no rights to or legitimate interests in the Domain Name since Respondent is not publicly known by the name Nutriakt. The Panel understands this to mean that Complainant has not granted permission to Respondent to use the Domain Name, that Respondent has no trademark or trade name rights in the name Nutriakt, and/or is not known in relation to the Domain Name.
As Respondent has failed to file a Response, it has not provided any evidence on its behalf. In the absence of such contradiction, the Panel did not establish any indications that any of the circumstances as described in article 3.1 of the Regulations apply, nor that Respondent has rights to or legitimate interests in the Domain Name in any other way.
Considering all of the above, the Panel is of the opinion that there is nothing in the record that evidences Respondent’s rights to or legitimate interest in the disputed Domain Name. The Panel does not find that Complainant’s claims come across unlawful or unfounded. The Complaint meets the second element of the Regulations.
C. Registered or Used in Bad Faith
Complainant relies on use of the Domain Name in bad faith. The Domain Name currently redirects to the website “www.ndparking.com/nutriakt.nl”. This website is a host for parked domain names used for generating revenue on a click per view or pass through to sponsored websites, inter alia relating to competitors of Complainant. Thus the Domain Name may be considered to be used for commercial gain within the meaning of article 3.2 sub d of the Regulations. Respondent uses the Domain Name to attract Internet users through the likelihood of confusion which may arise with Complainants’ trademark (Société Air France v. Helo Holdings LTD, WIPO Case No. DNL2010-0082 and Delta Lloyd N.V. v. Lotom Group S.A., WIPO Case No. DNL2010-0043).
Indeed the website has a left hand side bar with click on links such as “werving en selectie” (recruitment and selection). This link then defaults to other websites from recruitment agencies, e.g. within the health sector. These facts make it quite clear that a link or association is sought to be drawn between the Domain Name and Complainant’s trademark, and the Domain Name was chosen to attract web traffic for the purposes of commercial gain by creating a likelihood of confusion with Complainant’s trademark (also see: BHP Billiton Innovation Pty Ltd. v Whois Privacy Services pty Ltd / Disco. Names 1, WIPO Case No. D2010-0684).
The Panel also finds that Respondent engages in a pattern of such conduct, since it was involved as a respondent in at least five previous .nl domain name disputes of a similar nature involving trademarks and/or trade names (Roompot Recreatie Beheer B.V., supra; 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; Fit!Vak v Edoco LTD., WIPO Case No. DNL2010-0064 and Boels Verhuur B.V. v. Edoco LTD., WIPO Case No. DNL2010-0020), in all of which cases it also chose not to file a response, in the absence of which conclusions similar to those in the present case have been drawn.
Given the above, the Panel holds that the Domain Name 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, Panel orders that the Domain Name <nutriakt.nl> be transferred to Complainant.
Hub. J. Harmeling
Dated: March 21, 2011