WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Click Sales, Inc. v. W. van Asselt
Case No. DNL2011-0062
1. The Parties
Complainant is Click Sales, Inc. of Boise, Idaho, United States of America, represented by Holland & Hart, LLP, United States of America.
Respondent is W. van Asselt of Apeldoorn, The Netherlands.
2. The Domain Name and Registrar
The disputed domain name <clickbank.nl> (the “Domain Name”) is registered with SIDN through Tiscom Hosting B.V.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2011. On September 30, 2011, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On October 3, 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 October 3, 2011. In accordance with the Regulations, article 7.1, the due date for Response was October 23, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 25, 2011.
The Center appointed Wolter Wefers Bettink as the Panel in this matter on November 14, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.
On December 5, 2011, the Panel issued a Procedural Order, ordering the Center to send the Notification of Complaint document to Respondent on the address indicated by Complainant, and extended the due date for submitting a Response with twenty days from the day the Notification of Complaint document was sent. The Center sent the Notification of Complaint document on December 6, 2011. No Response was received. Accordingly, the Center notified the parties on December 28, 2011, that the Panel would render its decision within fourteen days after the new Response due date.
On December 30, 2011, the Center received an email communication from Respondent. The Center replied on January 3, 2012, informing Respondent regarding the proceedings and the Response due date. The Center advised Respondent that the admissibility of any further submission would be subject to the Panel’s determination.
4. Factual Background
Complainant is established in the United States. Complainant operates the website “www.clickbank.com”, a digital marketplace.
The Domain Name has been registered on September 26, 2004. On July 10, 2007, the Domain Name was registered in the name of Respondent. The Domain Name is linked to the pornographic website “www.sexsitevinden.nl”.
5. Parties’ Contentions
Complainant contends that the Domain Name is confusingly similar to its CLICKBANK trademarks. Furthermore, Complainant states that, beginning in 1998, it does business under the name “ClickBank” throughout more than 200 countries, including The Netherlands, and processes more than 26,000 digital transactions per day.
Complainant claims that Respondent has no rights to or legitimate interests in the Domain Name. Respondent is not making a legitimate noncommercial use of the Domain Name, because the Domain Name is linked to a website with adult content.
Complainant asserts that the Domain Name is registered and is being used in bad faith, because Respondent uses the Domain Name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s CLICKBANK trademark or trade name as to the source, sponsorship, affiliation, or endorsement of the Domain Name and the services offered at the website of Respondent. Furthermore, Respondent’s use of the Domain Name tarnishes Complainant’s CLICKBANK trademark or trade name by associating it with commercial pornographic content without Complainant’s consent.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant claims to own several CLICKBANK trademarks. As evidence thereof, Complainant provides a registration certificate from the United States Patent and Trademark Office for the trademark CLICKBANK, registered on December 13, 2005. In accordance with article 2.1 of the Regulations, a complainant needs to establish that it has rights in a trademark or trade name which is protected under Dutch law. A United States trademark is not protected under Dutch law. For completeness’ sake, the Panel also notes that, according to the trademark registration certificate, the relevant CLICKBANK trademark is owned by Keynetics, Inc. In the Complaint itself, Complainant has not explained its relation with this entity.
Complainant also claims that it does business under the name “ClickBank” and that it uses this name to identify itself as a corporate entity. Complainant’s Vice President of Operations has stated in a declaration, which Complainant provided as evidence, that “ClickBank” is used in commerce extensively and therefore has become famous in The Netherlands. As evidence thereof, Complainant has also provided a screenshot which shows the results of a search on “www.google.nl” generated by the term “clickbank ervaringen” (“clickbank experiences”). Complainant also refers to its website “www.clickbank.com”, which contains, inter alia, press articles on ClickBank (the company) and an item “Why ClickBank?” which refers to ClickBank as the company operating the website “www.clickbank.com” (“a secure online outlet for more than 50,000 products and 100,000 active marketers”). The Panel understands from this that Complainant in this case also relies on rights under Dutch law in the trade name “ClickBank”.
Under Dutch law, rights in a trade name are obtained by a company using the relevant name in commerce. It is not necessary that the entity is established in The Netherlands or that its trading area is located in The Netherlands. It is sufficient that a name qualifies for protection because it has a reputation in the Netherlands.1
The website “www.clickbank.com” contains, inter alia, the following statements:
“Founded in 1998, ClickBank is a secure online retail outlet for more than 50,000 digital products and 100,000 active affiliate marketers.
ClickBank makes a sale somewhere in the world every three seconds, safely processing more than 35,000 digital transactions a day. We serve more than 200 countries, and are consistently ranked as one of the most highly-trafficked sites on the web.
ClickBank is privately held with offices in Broomfield, Colorado and Boise, Idaho. Click Sales Inc. is a subsidiary of Keynetics Inc.”
This suggests that the name “ClickBank” is being used in commerce by Complainant.
Furthermore, the Panel has performed a Google search for “clickbank ervaringen”. The Panel found that this search yielded approximately 938,000 results. Complainant also submitted a screen-print of the Google results page for the same Google search, which resulted in around 35,800 hits. A number of these hits refer to websites under the .nl country code Top Level Domain which contain discussions in Dutch on how to use ClickBank as well as – Dutch language – endorsements from persons who apparently have earned money using ClickBank. This confirms that Complainant is using “ClickBank” as its trade name in The Netherlands and that it is known there.
The Panel is therefore satisfied that Complainant has relevant rights in the trade name “ClickBank”.
The Panel concludes that the Domain Name is identical to the trade name in which Complainant has rights.
B. Rights or Legitimate Interests
Complainant states that Respondent has no rights to or legitimate interests in the Domain Name because the Domain Name is linked to a website with adult content, and that therefore it is not making a legitimate noncommercial use of the Domain Name. The Domain Name redirects to the website “www.sexsitevinden.nl”. This is in fact a pornographic website. The Panel agrees with Complainant that this use of the Domain Name does not constitute a legitimate interest in the Domain Name.
As Respondent has failed to file a Response, it has not provided any evidence in its defense. Furthermore the Panel could not find any evidence in the record that Complainant has granted permission to Respondent to use the Domain Name or that Respondent has rights of its own in a trade name or trademark for “ClickBank”.
The Panel therefore concludes that Respondent has no rights to or legitimate interests in the Domain Name.
C. Registered or Used in Bad Faith
The Domain Name redirects to the pornographic website “www.sexsitevinden.nl”. The diversion to a pornographic website constitutes a significant indicator of bad faith, based on the concept of tarnishment of Complainant’s trade name “ClickBank” (see, e.g., V&V Supremo Foods, Inc. v. email@example.com, WIPO Case No. D2006-1373; Susan Scheff v. Psyborgue, WIPO Case No. D2008-1177; CHRISTIAN DIOR COUTURE v. Paul Farley, WIPO Case No. D2008-0008; and The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743).
Also taking into account that “ClickBank” is not prima facie a descriptive term, it is likely that Respondent registered the Domain Name while being aware of the existence of Complainant’s trade name rights in The Netherlands, where Respondent is located. This is a clear indication that Respondent had Complainant or its trade name in mind when selecting the Domain Name for the purpose of linking it to a pornographic website, use which is not suggested by the Domain Name. Also, a simple Google search would have revealed the existence of these trade name rights. Although such a search is not required in order to be allowed to register a domain name, Respondent refrains from doing so at its own peril. After all, paragraph 8 of the General Terms and Conditions for .nl Registrants states: “The registrant of a .nl domain name is responsible for ensuring that neither the name nor its use is inconsistent with public order or decency, and that neither the registration nor the use of the .nl domain name infringes another party’s rights, or is unlawful or illegal in any other way.”
By registering and using the Domain Name under these circumstances, Respondent has apparently attempted to attract Internet users to its website, by creating a likelihood of confusion with Complainant’s trade name as to the source, affiliation, or endorsement of Respondent’s website. Respondent’s default is under the circumstances of this case a further indication of bad faith registration and/or use of the Domain Name.
The Panel concludes that the Domain Name has been registered and is being used in bad faith.
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name <clickbank.nl> be transferred to Complainant.
Wolter Wefers Bettink
Dated: January 3, 2012
1 HR 15 January 1965, NJ 1965, 137, HR 7 January 1972, NJ 1972, 156, HR 2 June 1978, NJ 1980, 295, HR 18 January 1980, NJ 1980, 472, HR 13 September 1996, NJ 1997, 213, Hof Amsterdam 16 December 1999, BIE 2002, 57 and Hof Amsterdam 3 March 1988, BIE 1989, 92.