WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Robeco Groep N.V. v. Bahnhofsgaststaette
Case No. DNL2011-0035
1. The Parties
Complainant is Robeco Groep N.V. of Rotterdam, The Netherlands, represented by N.V. Nederlandsch Octrooibureau, The Netherlands.
Respondent is Bahnhofsgaststaette of Beetzendorf, Germany.
2. The Domain Name and Registrar
The disputed domain name < robecoconcerten.nl> (the “Domain Name”) is registered with SIDN through EuroDNS S.A.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2011. On May 30, 2011, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On May 31, 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 the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 31, 2011. In accordance with the Regulations, article 7.1, the due date for Response was June 20, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 21, 2011.
The Center appointed Alfred Meijboom as the panelist in this matter on June 30, 2011. The Panelist finds that he was properly appointed. 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 holds several ROBECO trademarks, including Benelux word mark ROBECO (No. 153090), registered since 1987, and the Community word mark ROBECO (No. 5377437), registered since 2007. Complainant also holds the trade name ROBECO, which is actually used in The Netherlands.
The Domain Name was registered by Respondent on October 13, 2010. The Domain Name leads to a website displaying a list of so-called sponsored links.
5. Parties’ Contentions
Complainant contends that it has been active as a fund investor for more than 80 years, traditionally worldwide. Complainant puts forward that it has also been active as a sponsor and organizer of the “Robeco Zomerconcerten” (“Robeco Summer Concerts”) for 20 years, which is a well known cultural event in The Netherlands.
Complainant contends that Respondent is using the Domain Name only to generate traffic for its website with sponsored links. The sponsored links are not related to the name ROBECO, nor has Respondent any relevant rights in the name ROBECO. Consequently, Complainant concludes that Respondent has no rights or legitimate interests in the Domain Name.
Furthermore, since Complainant has been active for a long time and the “Robeco Zomerconcerten” are well known in The Netherlands, there is no doubt that Respondent was aware of Complainant’s rights at the point of registration. Consequently, the Domain Name is also being used in bad faith since Respondent is misleadingly diverting consumers for its own commercial gain.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Language of the Proceedings
Respondent is neither residing nor registered in The Netherlands, for which reasons English is the language of proceedings pursuant to article 17.2 of the Regulations.
Grounds of the Complaint
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.
According to article 2.1 of the Regulations, the requested remedy shall be granted if Complainant asserts and establishes each of the following:
(a) that the Domain Name is identical or confusingly similar to:
(i) a trademark, or trade name, protected under Dutch law in which Complainant has rights; or
(ii) a personal name registered in the General Municipal Register (“gemeentelijke basisadministratie”) of a municipality in The Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in The Netherlands under which Complainant undertakes public activities on a permanent basis; and
(b) that Respondent has no rights to or legitimate interests in the Domain Name; and
(c) that the Domain Name has been registered or is being used in bad faith.
A. Identical or Confusingly Similar
Complainant holds the Benelux word mark ROBECO, as well as the Community word mark ROBECO (the “ROBECO trademarks”). Complainant also holds trade name rights in the name ROBECO (the “Trade name”). Therefore, the Panelist finds that Complainant has trademark and trade name rights in the sign ROBECO protected under Dutch law.
The Panelist understands from the Complaint that Complainant means to argue that the Domain Name is confusingly similar to the ROBECO trademarks and Trade name.
For the purpose of assessing whether the Domain Name is identical or confusingly similar to the ROBECO trademarks and Trade name in which Complainant has rights, the “.nl” suffix is disregarded, it being a necessary component for registration of a domain name (e.g., Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).
The Domain Name contains the ROBECO trademarks and Trade name together with a descriptive element “concerten” that refers to one of the services provided by Complainant under, at least, its Trade name. The addition of a descriptive element does not prevent confusion (e.g., ANWB B.V. v. Lotom Group S.A., WIPO Case No. DNL2010-0072 and LEGO Juris A/S v. Nick Terlouw, WIPO Case No. DNL2011-0023). The Panelist is therefore satisfied that the Domain Name is confusingly similar to Complainant’s ROBECO trademarks and Trade name.
B. Rights or Legitimate Interests
According to article 2.1 (b) of the Regulations, Complainant must demonstrate that Respondent has no rights to or legitimate interests in the Domain Name. This condition is met if Complainant makes a prima facie case that Respondent has no rights or legitimate interests, and Respondent fails to rebut that showing, by, for example, providing evidence of one of the three circumstances mentioned in article 3.1 of the Regulations (e.g., Technische Unie B.V. and Otra Information Services v. Technology Services Ltd, WIPO Case No. DNL2008-0002 and LEGO Juris A/S v. M. Moench, WIPO Case No. DNL2009-0052).
The Panelist understands that Complainant has not licensed or otherwise authorized Respondent to use the ROBECO trademarks or Trade name. Nor could the Panelist find any indication that Respondent, (Regulations, article 3.1 (a)) before having been notified of the dispute, made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services, (Regulations, article 3.1 (b)) is commonly known by the Domain Name, or (Regulations, article 3.1 (c)) is making a legitimate noncommercial use of the Domain Name. Consequently, the Panelist concludes that Respondent has no rights to or legitimate interests in the Domain Name.
For these reasons, the Panelist finds that Complainant has satisfied article 2.1 (b) of the Regulations.
C. Registered or Used in Bad Faith
Pursuant to article 2.1 (c) of the Regulations, Complainant must assert and establish that the Domain Name has been registered or is being used in bad faith.
Complainant showed that Respondent uses the Domain Name for commercial gain, by attracting Internet users to the website of Respondent with sponsored links. Furthermore, Complainant has stated that, as it has been active for more than 80 years and operates worldwide, the ROBECO trademarks have acquired a reputation. Complainant sponsors the annual cultural event “Robeco Zomerconcerten”. As Respondent chose the combination “robeco” and “concerten” in the Domain Name, the Panelist agrees with Complainant that there is no doubt that Respondent was aware of Complainant’s ROBECO trademarks when registering the Domain Name. Consequently, the Panelist concludes that it is obvious that the Domain Name both was registered and is being used in bad faith. Therefore, Complainant has satisfied Article 2.1 (c) of the Regulations.
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain name <robecoconcerten.nl> be transferred to Complainant.
Dated: July 13, 2011