WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Qlik Technologies, Inc., QlikTech International AB v. You like IT VOF, Qlikworld B.V.
Case No. DNL2011-0045
1. The Parties
Complainant is Qlik Technologies, Inc., QlikTech International AB of Lund, Sweden, represented by Williams Mullen, P.C., United States of America.
Respondent is You like IT VOF of Rotterdam, The Netherlands, Qlikworld B.V. of Ridderkerk, The Netherlands, represented by de Merkplaats B.V., The Netherlands.
2. The Domain Name and Registrar
The disputed domain name <qlik.nl> (the “Domain Name”) is registered with SIDN through Key-Systems GmbH.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2011. On June 28, 2011, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On June 29, 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 June 30, 2011. In accordance with the Regulations, article 7.1, the due date for Response was July 20, 2011. The Response was filed with the Center on July 20, 2011.
On July 22, 2011, SIDN commenced the mediation process. On August 24, 2011, SIDN extended the mediation process until September 20, 2011. On September 22, 2011, SIDN informed parties that the dispute had not been solved in the mediation process.
On October 4, 2011, Complainant submitted an application for further submissions.
The Center appointed Hub J. Harmeling as the panelist in this matter on October 14, 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.
On November 2, 2011, the Panel issued a Panel Order in which it decided to allow the further submissions of Complainant, and invited Respondent to make a further submission in reaction. Respondent submitted its further submission on November 11, 2011.
4. Factual Background
Complainant is a business intelligence software company.
Respondent establishes, optimizes and maintains information databases facilitating third parties to search for and identify companies in The Netherlands on the Internet.
The Domain Name
Respondent is holder of the Domain Name. The Domain Name was registered by Respondent on November 28, 2000.
Complainant owns the Community trademarks QLIK (no. 001115948) filed on March 23, 1999, and registered on May 16, 2000, QLIKTECH (no. 004106654) filed on November 9, 2004, and registered on May 16, 2006, QLIKVIEW (no. 007012362) filed on May 13, 2004, and registered on January 17, 2006.
Respondent owns Benelux trademark QLIK.NL (no. 0700458) registered on December 22, 2000.
Respondent has registered “Qlik.nl” as a trade name with the Dutch Chamber of Commerce since 2002.
5. Parties’ Contentions
Complainant contends that it has established trademark rights with respect to the QLIK mark through its Community trademark registration in Europe at the Office for Harmonization in the Internal Market (OHIM). Complainant contends that the Domain Name and the trademark are similar. Complainant contends that Respondent’s website offers links to goods and services in the same industry as Complainant’s and thus that consumers may mistakenly believe that Respondent’s Domain Name is associated with Complainant.
According to Complainant, Respondent has no rights to or legitimate interests in the Domain Name since Respondent is not using the Domain Name in connection with a bona fide offering of goods and services. Use of a Domain Name that is confusingly similar to Complainant’s marks as a search engine generating sponsored links or pay-per-click advertising that diverts Internet users to competitive services does not qualify as a bona fide offering of services or goods or a legitimate noncommercial use under the Regulations. Complainant contends that Respondent is not known individually by the Domain Name or by the name “Qlik” generally.
Complainant contends that the Domain Name has been registered or is being used in bad faith. According to Complainant, Respondent is only willing to transfer the Domain Name for a price that exceeds its value, which would confirm that the Domain Name was registered primarily for the purpose of selling it to Complainant. Furthermore, Complainant contends that Respondent registered the Domain Name to prevent Complainant from using it and for the purpose of disrupting Complainant’s activities or business. The Complainant contends that the website at the Domain Name contains pay-per-click advertising for products and services that are in direct competition to those offered by Complainant under its trademarks. Due to the confusingly similar nature of the Domain Name to Complainant’s trademarks and domain names, it is likely that there will be consumer confusion. Respondent’s use of the Domain Name intentionally attracts Internet users to Respondent’s website for commercial gain, by creating a likelihood of confusion with Complainant’s trademarks as to the affiliation of the website and Domain Name.
On this basis, Complainant requests the transfer of the Domain Name.
Respondent contends that Complainant has always used the trademarks QLIKTECH and QLICKVIEW. QLIK is not and has never been used by Complainant in the European Union. Complainant owns the domain name <qlik.com>, which has no other function than being a passageway to “www.qlikview.com”. Respondent contends that because of the absence of genuine use of the mark QLIK by Complainant in the five years following its registration, Respondent has filed an application for revocation of Community trademark QLIK at OHIM.
Respondent contends that the purpose of the Domain Name <qlik.nl> and the website to which the Domain Name resolves is to provide information about companies in The Netherlands. “Qlik.nl” is a trade name of You Like IT B.V., of which Qlikworld B.V. is the only shareholder. Respondent has been using the Domain Name for over 10 years and has invested a substantial amount of money to create brand awareness.
Respondent contends that the Domain Name has been registered and is being used in good faith. The Domain Name <qlik.nl> has been used as Respondent’s main brand since 1999 and has been registered as trademark in the Benelux on December 22, 2000.
6. Discussion and Findings
Language of the Proceedings
Article 17.2 of the Regulations provides that whenever the complainant or the respondent neither resides nor is registered in The Netherlands, proceedings shall be conducted in the English language. In exceptional circumstances however (such as when both parties appear to have full command of the Dutch language), the Center (subject to the panelist’s determination) or panelist may decide that proceedings are to be conducted in the Dutch language, or that the complainant or the respondent may make submissions in Dutch.
In this case, the Complainant neither resides nor is registered in The Netherlands. The Panelist has not found any exceptional circumstances in the record, nor did the Parties submit arguments as to why the proceedings should be conducted in Dutch. The proceedings shall therefore be held in English.
According to article 2.1 of the Regulations, the requested remedy shall be granted if Complainant asserts and establishes each of the following:
“a. [the] domain name is identical or confusingly similar to:
I. a trademark, or trade name, protected under Dutch law in which the 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 the complainant undertakes public activities on a permanent basis; and
b. the registrant has no rights to or legitimate interests in the domain name; and
c. the domain name has been registered or is being used in bad faith.”
A. Identical of Confusingly similar
Complainant demonstrated that it has trademark rights in the trademark QLIK through its Community trademark registration in the European Community with the Office for Harmonization in the Internal Market. The remaining question is whether the Domain Name is identical or confusingly similar to Complainant’s trademark.
It is established case law that the top level domain “.nl” may 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). The Panelist finds that the Domain Name <qlik.nl> is identical to Complainant’s Community trademark QLIK.
It is not for the Panelist in these proceedings to decide on Respondent’s challenge that Complainant’s trademarks are subject to non-use.
Therefore, the Panelist finds that Complainant has complied with article 2.1(a) of the Regulations.
B. Rights or Legitimate Interest
According to article 2.1(b) of the Regulations, Complainant must demonstrate that Respondent has no rights or legitimate interests in the Domain Name. Case law shows that Complainant must make a prima facie case that Respondent has no rights or legitimate interests and that Respondent must subsequently show rights or legitimate interests on its part by, for example, demonstrating the circumstances as mentioned in article 3.1 of the Regulations (see for example Société Air France v. A Coppola, WIPO Case No. DNL2009-0001).
The Panelist finds that Respondent has successfully rebutted Complainant’s prima facie case that Respondent has no rights or legitimate interest in the Domain Name.
In particular, Complainant alleges that Respondent is not using the Domain Name in connection with a bona fide offering of goods and services, but that Respondent is diverting Internet users to websites that advertise goods competing with those of Complainant using sponsored links or pay-per-click services.
As stated by Respondent, and undisputed by Complainant, Respondent has registered a Benelux trademark and Dutch trade name identical to the Domain Name and has used the Domain Name without interruption since 2000.
The Panelist finds that Respondent has sufficiently shown that it is only marginally offering information or products of Complainant’s competitors as part of a much wider, legitimate business model, offering a business-to-consumer service for searching and identifying businesses available in The Netherlands. To the extent Respondent generates value by using parking and landing pages or pay-per-click services, this is more a part of such wider business model than a focus on benefitting from confusion or Domain Name abuse.
In fact, Respondent’s website, being a business directory providing the ability to search and identify companies on the Internet in The Netherlands, offers links to and advertisements for all sorts of companies. Respondent’s use of the Domain Name (identical to its Benelux trademark and its trade name) is not prima facie demonstrating a lack of rights or legitimate interests in the Domain Name.
Therefore, the Panelist finds that Complainant has not fulfilled the requirements of article 2.1(b) of the Regulations and will deny the Complaint. Whilst it is not strictly necessary to consider registration or use in bad faith, this will be done for the sake of completeness.
C. Registered or Used in Bad Faith
According to article 2.1(c) of the Regulations, Complainant must demonstrate that the Domain Name has been registered or is being used in bad faith. Complainant may demonstrate registration or use in bad faith by reference to the circumstances as laid down in article 3.2 of the Regulations.
Complainant contends that the Domain Name has been registered or is being used in bad faith because Respondent registered the Domain Name primarily for the purpose of selling it to Complainant. Furthermore, Complainant contends that Respondent registered the Domain Name to prevent Complainant from using it and for the purpose of disrupting Complainant’s activities or business. Complainant makes these contentions almost 11 years after Respondent’s registration of the Domain Name.
First, the Panelist finds insufficient indication that Respondent registered the Domain Name for the sole purpose of selling it to Complainant. The website and the Domain Name have been used as Respondent’s main brand and business vehicle since 2000 and the Domain Name has been registered as trademark in the Benelux. The name “Qlik.nl” is known as a website providing a business directory. Respondent has made various efforts to increase the brand awareness of “Qlik.nl” by investing considerable amounts of money in the company.
Second, Complainant contends that the Domain Name is registered or used in bad faith because Respondent offered to transfer the Domain Name to Complainant for a price that exceeds the cost of registration thereof. The Panelist, however, accepts that the initial registration costs may be considered an improper basis to reflect the present legitimate value of the Domain Name for Respondent. Respondent is commonly known by the Domain Name and “Qlik.nl” is a registered trade name at the Dutch Chamber of Commerce. Respondent sufficiently showed that it invested in the “Qlik.nl” brand, inter alia, through advertisements on Dutch national television. Since, as a result of such investments, Respondent’s website appears to have gained commercial success over the years, which success is associated with the Domain Name, the latter’s value increased accordingly. In this light, the Panelist finds that Respondent’s refusal to transfer the Domain Name in exchange for an amount of money that exceeds the initial registration costs does not demonstrate registration or use in bad faith.
Third, Complainant contends that Respondent is using the Domain Name solely to attract Internet users to Complainant’s competitors. As stated under “B” above, the Panelist cannot follow Complainant in this respect. The purpose of Respondent’s website is to provide information about companies on the Internet in The Netherlands. It is inevitable that the directory includes some links to companies that could be considered competitors of Complainant. This does not justify the conclusion that the Domain Name is being used to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion as to Complainant’s affiliation of the website and Domain Name. For the same reasons the Panelist finds that Respondent has not registered the Domain Name to prevent Complainant from using it or for the purpose of disrupting Complainant’s activities or business.
Consequently, the Panelist finds that Complainant has not fulfilled article 2.1(c) of the Regulations.
For all the foregoing reasons, the Complaint is denied.
Hub J. Harmeling
Dated: December 2, 2011