WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Schleich GmbH v. Ligteringen, M

Case No. DNL2018-0033

1. The Parties

The Complainant is Schleich GmbH of Schwäbisch Gmünd, Germany, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.

The Respondent is Ligteringen, M of Driebergen, the Netherlands.

2. The Domain Name and Registrar

The Domain Name <schleichs.nl> 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 June 5, 2018. On June 6, 2018, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On June 7, 2018, 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 June 11, 2018. In accordance with the Regulations, article 7.1, the due date for Response was July 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 2, 2018.

The Center appointed Willem Hoorneman as the panelist in this matter on July 5, 2018. 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.

4. Factual Background

The Complainant is a German toy manufacturing and company and supplier of figurines, domiciled in Schwäbisch Gmünd, Germany. The Complainant operates offices worldwide and distributes its products via distributors.

The Complainant is the holder of various trademarks comprising the words and/or graphic representation SCHLEICH. Among these trademark registrations, the following trademarks designate the Netherlands: European registration No. 004137584 (registered on May 30, 2006) and 010100675 (registered on November 10, 2011); and international registrations No. 459467 (registered on February 12, 1981) and 1021176 (registered on September 29, 2009). Hereinafter, these trademarks are collectively being referred to as the “Trademarks”.

The Domain Name was registered by the Respondent on October 10, 2013. Currently, the Domain Name redirects Internet users to the website “www.logic4.nl”, providing services for creating webshops.

5. Parties’ Contentions

A. Complainant

The Complainant states that is the rightful holder of the Trademarks and claims that the Domain Name infringes its Trademarks on the following grounds.

Firstly, the Complainant claims that the Domain Name is identical or confusingly similar to the Trademarks. The Trademarks are incorporated in their entirety in the Domain Name, with the letter “s” as a suffix. Therefore, this is a case of typosquatting.

The Complainant further asserts that the Respondent has no rights or legitimate interests in the Domain Name because the Complainant and the Respondent have no commercial relationship in any manner. Furthermore, the Respondent is not known by the name Schleich. Finally, the Complainant asserts that the Respondent is not making a legitimate or noncommercial use of the Domain Name.

The Complainant concludes that the use of the Domain Name by the Respondent is in bad faith. Firstly, the Complainant notes that the Domain Name is being used for commercial gain to misleadingly divert Internet users or to tarnish or otherwise damage the Trademarks. Secondly, the Trademarks are being used without the Complainant’s consent. Furthermore, the Complainant argues that by incorporating the Trademarks in their entirety, the Respondent primarily registered the Domain Name for the purpose of disrupting the Complainant’s activities. The Complainant has also included several examples of domain names registered by the Respondent which according to the Complainant indicates a pattern of conduct evidencing bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to article 2.1 of the Regulations, to be successful the Complainant’s request to transfer the Domain Name must meet three cumulative conditions:

a. The Domain Name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which the Complainant has rights, or other name by means of article 2.1(a) under II of the Regulations; and

b. The Respondent 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.

The Respondent may demonstrate such rights or legitimate interests on its part, inter alia,through the circumstances mentioned in article 3.1 of the Regulations as listed below.

The Complainant may provide evidence that the Domain Name has been registered or is being used in bad faith, inter alia,through the circumstances mentioned in article 3.2 of the Regulations as listed below.

As the Respondent has not filed any response, the Panel shall rule on the basis of the Complaint. In accordance with article 10.3 of the Regulations, the Complaint shall in that event be granted, unless the Panel considers it to be without basis in law or in fact.

A. Identical or Confusingly Similar

The Complainant has provided copies of its registered Trademarks covering the Netherlands and comprising SCHLEICH.

It is established case law that the country code Top-Level Domain (“ccTLD”) “.nl” may be disregarded in assessing the similarity between the domain name on the one hand, and the relevant trademark on the other hand (see: Taylor Made Golf Company, Inc. v. Lotom Group S.A., WIPO Case No. DNL2010-0067; Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).

The Domain Name is confusingly similar to the Complainant’s Trademarks as it incorporates the Trademarks entirely. The Domain Name differs from the Trademarks only in that the letter “s” has been added to the term “schleich” in the Domain Name. This addition does not prevent a finding of confusing similarity as the Trademarks remain the dominant element.

The Panel finds that the Domain Name is confusingly similar to the Trademarks within the meaning of the Regulations. The Complainant has thus established the first element of article 2.1 of the Regulations.

B. Rights or Legitimate Interests

According to established case law, the Complainant needs to show prima facie that the Respondent has no rights to or legitimate interests in the Domain Name (see LEGO Juris A/S v. Moensch, WIPO Case No. DNL2009-0052).

While the overall burden of proof rests with the Complainant, previous panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the Respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, the complainant is generally deemed to have satisfied the second element of article 2.1 of the Regulations.

A respondent may demonstrate such rights or legitimate interests on its part inter alia through any of the following non-limitative circumstances listed in article 3.1 of the Regulations:

a. before having any notice of the dispute, the [respondent] made demonstrable preparations to use the domain name (or a name corresponding to the domain name) in connection with a bona fide offering of goods or services;

b. the [respondent] as an individual, business or other organization is commonly known by the domain name;

c. the [respondent] is making a legitimate noncommercial use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish or otherwise damage the relevant trademark, trade name, personal name, name of a Dutch public legal entity or name of an association or foundation located in the Netherlands.

The Respondent has not provided any evidence that it is known by the name Schleich. Furthermore, according to the evidence provided by the Complainant, at the time of submission of the Complaint, the Respondent was making use of the Domain Name to offer for sale the Complainant's products and products of competitors of the Complainant. This does not constitute a bona fide offering of goods and/or services or a noncommercial use of the Domain Name (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. See also Maison Louis Latour v. Jos Beeres Wijnkoperij WIPO Case No. DNL2011-0074). The fact that, the Domain Name redirects to another website (“www.logic4.nl”) does not affect this conclusion.

Noting the asserted facts, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights to or legitimate interests in the Domain Name.

The Respondent has failed to rebut the Complainant’s prima facie case, and the Panel sees no indication of the Respondent meeting any of the above mentioned circumstances or any other basis for a right to or legitimate interest in the Domain Name.

Based on the foregoing, the Panel concludes that the Complainant has met the conditions of article 2.1 of the Resolution and has shown that the Respondent has no rights to or legitimate interests in the Domain Name.

C. Registered or Used in Bad Faith

Article 3.2 of the Regulations provides that any of the following non-limitative circumstances are deemed to be evidence that a respondent has registered and is using a domain name in bad faith:

(a) the domain name has been registered or acquired primarily for the purpose of selling, renting or transferring it to the complainant or to the complainant’s competitors for valuable consideration in excess of the cost of registration;

(b) the domain name has been registered in order to prevent the complainant from using it;

(d) the domain name has been or is being used for commercial gain, by attracting Internet users to a website of the registrant or other online location through the likelihood of confusion which may arise with the trademark, trade name, personal name, name of a Dutch public legal entity or name of an association or foundation registered in the Netherlands as to, for example, the source, sponsorship, affiliation or endorsement of the website of the registrant or other online location(s) or of products or services on the domain registrant’s website or another online location.

The Trademarks’ registration significantly predates the registration of the Domain Name. The Respondent was most likely familiar with the Complainant, its products and the Trademarks prior to registering the Domain Name. The fact that the Domain Name previously resolved to a website offering for sale products that directly compete with the Complainant’s further supports this finding.

As put forward by the Complainant, the Domain Name appears to have been registered primarily to obtain commercial gain by attracting Internet users to the concerned website in an attempt to profit from the Trademarks’ reputation. Indeed, the specific cumulative circumstances in this case including the Domain Name’s confusingly similarity to the Trademarks, the absence of any response by the Respondent, the fact that the Domain Name previously resolved to a website offering for sale products of the Complainant’s competitors and currently redirects to another commercial website, and the absence of any evidence of actual or contemplated good-faith use by the Respondent of the Domain Name, are indicative of bad faith on the part of the Respondent in its registration and/or use of the Domain Name.

Finally, the examples provided by the Complainant of multiple other domain names that are identical or confusingly similar to trademarks owned by third parties with whom the Respondent does not appear to enjoy a legal relationship, suggests a pattern of illegitimate conduct

The Panelist finds that the Domain Name has been registered and is being used in bad faith.

7. Decision

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

Willem Hoorneman
Panelist
Date: July 19, 2018