WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Eutelsat SA v. Hooftsaecke BV

Case No. DNL2013-0010

The Complainant is Eutelsat SA of Paris, France, represented by Nameshield, France.

The Respondent is Hooftsaecke BV of Zevenbergen, the Netherlands, internally represented.

2. The Domain Name and Registrar

The disputed domain name <eutelsat.nl> is registered with SIDN through Terrabyte Internet Services B.V.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2013. On February 20, 2013, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain name. On February 21, 2013, SIDN transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on February 22, 2013. In accordance with the Regulations, article 7.1, the due date for Response was March 14, 2013. The Response was filed with the Center on March 13, 2013.

On March 18, 2013, SIDN commenced the mediation process. On April 19, 2013 SIDN informed parties that the dispute had not been solved in the mediation process.

The Center appointed Alfred Meijboom as the panelist in this matter on May 6, 2013. 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.

In accordance with article 17.2 of the Regulations, the language of the proceeding is English.

4. Factual Background

The Complainant is a French satellite operator and supplier of fixed satellite services, and owns several registered trademarks, including:

- International Registration for EUTELSAT, registered on June 20, 1983, registration number 479499, for goods and services in classes 7, 9, 12, 16, 35, 38 and 41, with the Benelux as designated jurisdiction;

- International Registration for EUTELSAT, registered on December 31, 2001, registration number 777505, for goods and services in classes 9, 16, 35, 37 and 38, with the Benelux as designated jurisdiction;

- Benelux trademark EUTELSAT, registered on December 18, 1987, registration number 155860, for services in classes 35, 38 and 41.

The Panel shall refer to these trademarks as the “Trademarks”.

The Complainant is also the holder of various domain names containing the Trademarks, such as <eutelsat.com>, <eutelsat.net>, <eutelsat.biz>, <eutelsat.org>, <eutelsat.ch>, <eutelsat.de>, <eutelsat.fr> and <eutelsat.eu>.

The Respondent is a family-owned company which is part of the Insulinde Groep, which is active in different sectors such as real estate, venture capital, wood industry and automotive accessories.

The Respondent registered the disputed domain name on March 29, 2000. The disputed domain name directs to a so-called parking page of a webhosting company, indicating that the disputed domain name “is registered on behalf of our dear customer”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical to the Trademarks, as it is reproduced in the disputed domain name in its entirety, and the addition of the country code Top-Level Domain (ccTLD) “.nl” is not sufficient to prevent a finding of confusing similarity between the disputed domain name and the Trademarks.

The Complainant claims that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant argues that the Respondent is not commonly known under the name “Eutelsat”. The Complainant further claims that the Respondent has no relationship with the Complainant’s business and is not authorized or licensed to use the Trademarks. Finally, the Complainant alleges that the disputed domain name is not used for a bona fide offering of services and/or goods and that by registering the disputed domain name, the Respondent attempts to disrupt the Complainant’s activities.

The Complainant asserts that the disputed domain name has been registered or is being used in bad faith. The Complainant claims that the Trademarks are well known in Europe, especially in the Netherlands where the Trademarks have been registered since 1987. The Respondent could not have ignored the Trademarks when it registered the disputed domain name in 2000. The Complainant alleges that the Trademarks are distinctive and it is reasonable to infer that the Respondent has registered the disputed domain name with knowledge of the Trademarks and uses the disputed domain name for misleading and disrupting the Complainant’s business.

B. Respondent

The Respondent contends that it registered the disputed domain name on March 29, 2000 when it was working on a real-estate project with a customer who planned to establish a restaurant called “Eutelsat Restaurant”, which is a fantasy name.

The Respondent does not dispute the claim that the disputed domain name is identical to the Trademarks. The Respondent does, however, claim that it was not aware of the existence of the Complainant or the Trademarks.

The Respondent alleges that it has a legitimate interest in the disputed domain name as the Eutelsat Restaurant project was shelved, but the disputed domain name was kept in case the project would be revived. The Respondent argues that it has invested quite some time in developing its ideas for the Eutelsat Restaurant and that there is a possibility the project may be realized in the future. The Respondent does not dispute that it is not commonly known as Eutelsat.

The Respondent claims that it did not register the disputed domain name in bad faith as it was not aware of the Trademarks and has held the disputed domain name for 13 years without any complaint from the Complainant. The Respondent asserts that it does not intend to disrupt the business of the Complainant and does not understand on which basis the Complainant draws this conclusion. The Respondent points out that it has never tried to sell the disputed domain name for commercial gain and that it has no reputation of being a domain name squatter and has never been involved in domain name proceedings before.

6. Discussion and Findings

A. Identical or Confusingly Similar

It is established case law that the top level domain “.nl” may be disregarded in assessing the similarity between the Trademarks on the one hand, and the disputed domain names on the other hand (see, e.g. Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).

The disputed domain name is identical to the Trademarks, which is not disputed by the Respondent.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of article 2.1(a) of the Regulations.

B. Rights or Legitimate Interests

Article 2.1(b) of the Regulations requires that the Complainant demonstrates that the Respondent has no rights or legitimate interests in the disputed domain name. This condition is met if the Complainant makes a prima facie case that the Respondent has no such rights or interests, and the Respondent fails to rebut this (see, e.g., Technische Unie B.V. and Otra Information Services v. Technology Services Ltd., WIPO Case No. DNL2008-0002 and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.).

The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and the burden of proof therefore shifts to the Respondent.

The Respondent argued that it planned to start a real-estate project for a restaurant under the name “Eutelsat”. The Respondent has, however, not furnished any evidence to support this claim. Furthermore, the Panel could not establish any indications that any of the circumstances as described in article 3.1 of the Regulations apply, nor that the Respondent in any other way has rights to or legitimate interests in the disputed domain name.

The Respondent has therefore failed to rebut the prima facie case made by the Complainant. As a result, the Panel is satisfied that the Respondent has no rights to or legitimate interests in the disputed domain name.

C. Registered or Used in Bad Faith

The lack of any active use of the disputed domain name to resolve to an active website without any active attempt to sell or to contact the Complainant does as such not prevent a finding of bad faith. The Panel must examine all circumstances of the case to determine if the Respondent has registered or used the disputed domain name in bad faith (cf. WIPO Overview 2.0, paragraph 3.2.).

The Complainant has been the owner of the EUTELSAT trademark which has been valid in the Netherlands since as early as 1983 and the Complainant has submitted evidence of actual use of such trademark. The registration and use of the EUTELSAT trademark therefore significantly predate the Respondent’s registration of the disputed domain name. In the absence of evidence to the contrary, the Panel considers it unlikely that the Respondent was not aware of the EUTELSAT trademark when it registered the disputed domain name. Even if the Respondent was unaware, the Panel in the circumstances of this case finds that the Respondent should have been so aware. The Respondent contends that it planned to start a real-estate project for a restaurant under the name “Eutelsat”, which the Respondent describes as a “fantasy name”. As noted, the Respondent has provided no evidence whatsoever of any such actual or contemplated use of the disputed domain name in good faith.

Considering the foregoing, the Panel finds that the requirements of registration or use in bad faith of the disputed domain name pursuant to article 2.1(c) of the Regulations have also been met.

7. Decision

For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the disputed domain name <eutelsat.nl> be transferred to the Complainant.

Alfred Meijboom
Panelist
Date: May 17, 2013