WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Egon Zehnder International B.V. v. Lotom Group S.A.
Case No. DNL2011-0012
1. The Parties
Complainant is Egon Zehnder International B.V. of Amsterdam, the Netherlands, represented by its head Finance & Operations.
Respondent is Lotom Group S.A. of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <egonzehnder.nl> (the “Domain Name”) is registered with SIDN through EPAG Domainservices GmbH.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2011. On February 18, 2011, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On February 18, 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 February 21, 2011. In accordance with the Regulations, article 7.1, the due date for Response was March 13, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 14, 2011.
The Center appointed Hub. J. Harmeling as the Panel in this matter on March 22, 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 the Regulations, article 9.2.
Due to exceptional circumstances, the Center informed parties on behalf of the Panel that the decision date had been moved to April 19, 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 August 9, 1979, and incorporated under Dutch Law. Complainant’s business operations are located in Amsterdam, while its corporate domicile is The Hague. Complainant is a Dutch Executive Search Firm with 63 offices in 37 countries. Complainant’s core business is recruitment and assessment of top-level management worldwide.
Respondent is a legal entity incorporated under foreign law. According to the data in the SIDN register, Respondent is established in Panama City, Panama. From the case documents, the activities of Respondent remain unknown.
Respondent registered the Domain Name on June 12, 2008. The Domain Name offers links to various other websites of companies active in the same industry as Complainant.
Complainant has provided the Center with trademark registration certificates for the trademarks invoked in this procedure in the name of Egon Zehnder International A.G. Complainant has also provided a dated and signed power of attorney from Egon Zehnder International A.G., authorizing Complainant to represent the company and to perform on behalf and in the best interest of the company every legal act in the procedure to claim the Domain Name.
Egon Zehnder International AG of Zurich, Switzerland is the proprietor of the following International trademarks (the “Trademarks”), both registered on July 1, 1993, for advisory services in class 35.
a. word mark EGON ZEHNDER INTERNATIONAL (no. 605798)
b. figurative mark EGON ZEHNDER INTERNATIONAL (no. 605799)
Complainant is a private company with limited liability, Egon Zehnder International B.V., which was incorporated by a notarized deed dated August 9, 1979. The name Egon Zehnder International was first registered at the Dutch Chamber of Commerce on April 1, 1979 (no. 33232562).
As proof that Complainant undertakes public activities on a permanent basis, under the Trade Name Egon Zehnder International, Complainant attached the following documents to its complaint: business card of its head Finance & Operations, stationary and an article in business magazine FEM of December 19, 2009.
5. Parties’ Contentions
First, Complainant states that it is entitled to the EGON ZEHNDER INTERNATIONAL trademarks and trade name. Furthermore, Complainant uses the following domain name for its worldwide operations: <egonzehnder.com>. 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 does not have any valid trademark rights for the name Egon Zehnder, nor is it publicly known by the name Egon Zehnder. Complainant stipulates that Respondent might as well have chosen another domain name without Complainant’s trademarks playing a (prominent) role.
Third, Complainant claims that Respondent uses the Domain Name in bad faith. Complainant puts forward that the Domain Name links to a website showing a collection of sponsored links of which numerous are linked to websites of other executive search firms. Since these other firms offer similar services as Complainant, the public might wrongfully be under the impression that the website with the Domain Name is in fact being exploited by Complainant. Thus, the Domain Name creates a likelihood of customer confusion on the origin of the company behind the Domain Name. Respondent should have been aware of Complainant’s trademarks at the time of registering the Domain Name, as it could simply have searched the trademark register. Furthermore, Complainant states that the Domain Name is being used to gain commercial benefit from Complainants success and well-know reputation.
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. Complainant notes that given these previous cases, it is highly likely that Respondent is a domain name “squatter”.
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
A. Language of Proceedings
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 Panel confirms the Center’s preliminary determination that English is the language of the proceedings, in accordance with article 17.2 of the Regulations.
B. Respondent Default
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 Complainant’s prima facie case meets the requirements set forth in article 2.1 of the Regulations (Taylor Made Golf Company, Inc. v. Lotom Group S.A., WIPO Case No. DNL2010-0067, Société Air France v. Helo Holdings LTD, WIPO Case No. DNL2010-0082 and Leidse Onderwijsinstellingen B.V. v. Edoco LTD., WIPO Case No. DNL2011-0014).
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 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:
C. Identical or Confusingly Similar
Complainant claims it has rights in the International word mark EGON ZEHNDER INTERNATIONAL and in the International figurative mark EGON ZEHNDER INTERNATIONAL (the “Trademarks”), which are registered in the name of Egon Zehnder International AG of Zurich, Switzerland. Complainant provided the Center with registration details.
First, Complainant provided the Center with a dated and signed document by which Egon Zehnder International AG of Zurich, Switzerland, affiliated company to Complainant and trademark proprietor of the previously mentioned Trademarks, gives power of attorney to Complainant to “represent the [c]ompany and to perform (…) every legal act in the procedure to claim the website egonzehnder.nl”. The Panel is satisfied that the general content of the power of attorney “to perform every legal act in the procedure to claim the website egonzehnder.nl”, includes the authorization to conduct proceedings against infringement of the Trademarks in relation to obtain the Domain Name (Epson Europe BV and on behalf of Seiko Epson Corporation v. Lal Kakar, WIPO Case No. D2009-1246).
Second, it is established case law that the specific 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 is considered partly identical to the Trademarks. The only difference lies in the fact that the element ‘international’ in the EGON ZEHNDER INTERNATIONAL Trademarks is not included in the Domain Name <egonzehnder.nl>. This does not make any relevant difference. The Panel is aware of the fact that the element ‘international’ forms part of the Trademarks, and can therefore not be disregarded in assessing the similarity between the Trademarks and the Domain Name. Nonetheless, the Panel considers the Domain Name to be confusingly similar to the Trademarks, since the dominant part of the Trademarks and the Domain Name, ‘egonzehnder’, is identical (Giorgio Armani S.p.A., Swiss Branch Mendrisio v. Remco Dalhuizen, WIPO Case No. DNL2009-0069).
Therefore, the Panel finds that the Domain Name is confusingly similar to the Trademarks on which Complainant relies, 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 Egon Zehnder International. In view of the above findings in relation to Complainant’s Trademarks, there is no need for the Panel to address this additional ground for the Complaint.
D. 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 (e.g. Technische Unie B.V. and Otra Information Services v. Technology Services Ltd., WIPO Case No. DNL2008-0002 and Nutri-Akt b.v. v. Edoco LTD. WIPO Case No. DNL2011-0003).
Complainant claims that Respondent has no rights to or legitimate interests in the Domain Name since Respondent is not publicly known by the name Egonzehnder. 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 Egonzehnder, and/or is not known in relation to the Domain Name.
The Panel finds that the Domain Name resolves to a domain name “parking page” that offers links to, inter alia, websites on which goods and services of Complainant’s competitors are offered for sale. It is by now well established that parking pages built around a trademark (as contrasted with pages built around a dictionary word and used only in connection with the generic or merely descriptive meaning of the word) do not constitute a bona fide offering of goods or services, nor do they constitute a legitimate noncommercial use (see Coöperatieve Raiffeisen-Boerenleenbank B.A. (Rabobank Nederland) v. Nguyet Dang, ND Dang, WIPO Case No. DNL2010-0074).
As Respondent has failed to file a Response, it has not provided any evidence to contradict these findings or in any other way to its defence. In the absence of substantiated contradiction, the Panel did not establish in any way that any of the circumstances as described in article 3.1 of the Regulations would apply, or 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 Domain Name. The Panel does not find that Complainant’s claims come across unlawful or unfounded. The Complaint therefore meets the second element of the Regulations.
E. Registered or Used in Bad Faith
The Domain Name was registered on June 12, 2008. By that date the Trademarks, Trade Name and reputation of Egon Zehnder International B.V. (and its affiliated companies) had long been established. Respondent must therefore be presumed to have known of Complainant’s name, Trade Name and Trademarks at the date of registration of the Domain Name.
The Domain Name links to a website showing a collection of sponsored links of which numerous are linked to websites of other executive search firms. The Panel is of the opinion that since these other firms offer similar services as Complainant, the public might indeed wrongfully gain the impression that the Domain Name is in fact being exploited by Complainant. Thus, the Domain Name creates a likelihood of customer confusion as to the origin of the entity behind the Domain Name. (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).
The Panel further finds that the Domain Name is being used for commercial gain, within the meaning of article 3.2 sub d of the Regulations. By attracting Internet users to Respondent’s website through the likelihood of confusion which may arise with Complainant’s Trademarks, Respondent evidently uses the Domain Name for purpose of capitalizing on the success and reputation of Complainant).
In conclusion, the Panel finds that Respondent engages in a pattern of such conduct. Respondent was involved in at least seven previous .nl domain name disputes of a similar nature involving trademarks and/or trade names (ANWB B.V. v. Lotom Group S.A., WIPO Case No. DNL2010-0072; Taylor Made Golf Company, Inc. v. Lotom Group S.A. WIPO Case No. DNL2010-0067; Delta Lloyd N.V., supra; Bejo Zaden B.V. v. Lotom Group S.A., WIPO Case No. DNL2010-0030; Prof. Dr. Geert Hofstede en Geert Hofstede B.V. v. Lotom Group S.A., WIPO Case No. DNL2008-0043; Technische Unie B.V. v. Lotom Group S.A., WIPO Case No. DNL2008-0063 and ADP Nederland B.V. v. Lotom Group S.A., WIPO Case No. DNL2009-0009), 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.
The Panel is therefore satisfied that the Domain Name was 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 <egonzehnder.nl> be transferred to Complainant.
Hub. J. Harmeling
Dated: April 20, 2011