WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Digital Revolution BV v. Sascha Labarbe

Case No. DNL2018-0053

1. The Parties

The Complainant is Digital Revolution BV of Nederhorst den Berg, the Netherlands, represented by Thijs Bregman, the Netherlands.

The Respondent is Sascha Labarbe of Berlin, Germany.

2. The Domain Name and Registrar

The disputed domain name <124inkt.nl> (the “Domain Name”) is registered with SIDN through EPAG Domainservices GmbH.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2018. On September 5, 2018, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain name. On September 6, 2018, SIDN transmitted by email to the Center its verification response disclosing the registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. Pursuant to article 17.2 of the Regulation, the administrative proceeding shall be conducted in English whenever the Complainant or the Respondent neither resides nor is registered in the Netherlands. The Center sent an email communication to the Complainant on September 12, 2018, providing the registrant and contact information disclosed by SIDN and requesting the Complainant to submit an amended Complaint, translated into English. The Center verified that the amended 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 September 17, 2018. In accordance with the Regulations, article 7.1, the due date for Response was October 7, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2018.

The Center appointed Wolter Wefers Bettink as the panelist in this matter on October 19, 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

On the basis of the undisputed submissions and evidence provided by the Complainant, the following facts are established.

The Complainant has been operating a webshop in printer supplies under the domain name <123inkt.nl> since the year 2000, and currently has more than 2,000,000 customers and more than 300 employees. For every year since 2008,the Complainant has been chosen “Best web shop” by consumers in the Netherlands in the category Computer, hardware, and software.

The Complainant is the owner of the European Union trademark 123INKT, registered under no.014573356 on February 1, 2016 and the Benelux device mark 123INKT.NL registered under no. 0913712 on April 10, 2012 (hereafter the “Trade Marks”).

The Domain Name has been registered on October 22, 2014, and resolves to a website with the heading “124inkt.nl may be for sale. Click here for more information”, which contains sponsored links to, inter alia, “Printer cartridges” and “Inkt printer”. The bottom of the web page includes the text “The Sponsored Listings displayed above are served automatically by a third party”.

5. Parties’ Contentions

A. Complainant

According to the Complainant, it has used the trade name “123inkt” and the domain name <123inkt.nl> since the year 2000. The Complainant further contends that for the past 10 years, its web shop at <123inkt.nl> has been chosen “Best web shop” by consumers in the category computer, hardware, and software at the “Nationale Thuiswinkel Awards” and the “Webshop Awards”. In addition, the Complainant submits that in 2010, 2015, and 2016, its web shop was a major winner of the overall customer award “Best web shop of the Netherlands”. The Complainant contends that this has been widely covered by national media such as “De Telegraaf”, “AD”, “de Pers”, “nu.nl”, “Twinkle Magazine” and others.

The Complainant states that the Domain Name differs only one character from the trade mark 123INKT and therefore is confusingly similar to that trademark.

The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name. In this context, the Complainant points out that it is well known, that it has been trading under the name “123inktnl” for more than 18 years, and it has not given written permission to the Respondent to use the Domain Name in any way whatsoever. Furthermore, the Complainant contends that a Google search on the Domain Name does not show any results that refer to the Respondent, but instead provides the suggestion “did you mean: 123inkt.nl”, displaying the sponsored link to the website under the Complainant’s domain name <123inkt.nl>. In addition, the Complainant states that the Respondent has no reputation under a similar domain name.

According to the Complainant, the Domain name has been registered and is being used in bad faith. The Complainant submits that the Domain Name is a typical case of typo-squatting, where a consumer looking for the web shop of the Complainant and making a mistake while typing the complainant’s domain name, ends up on a website owned by the respondent. The Complainant contends that the Domain Name has apparently been registered with the aim of generating advertising income by abusing the Trade Marks.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 2.1 of the Regulations, to succeed the Complainant must satisfy the Panel that:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name was registered or is being used in bad faith.

The Respondent filed no response, so that the Complainant’s claims were uncontested as such. 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 fact.

In this regard the Panel notes that in section 4.3 of the WIPO Overview of WIPO Panel views on selected UDRP Questions, Third Edition ¹ (“WIPO Overview 3.0”) stipulates that “a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. In cases involving wholly unsupported and conclusory allegations advanced by the complainant, or where a good faith defense is apparent (e.g., from the content of the website to which a disputed domain name resolves), panels may find that – despite a respondent’s default – a complainant has failed to prove its case.”

On the other hand, certain inferences may be drawn from the particular facts and circumstances of the case e.g., where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.

In addition, as set out in section 4.8 of the WIPO Overview 3.0, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.

In this context, the Panel notes that the Complainant has not submitted any evidence of its statements relating to (i) its rights to the Trade Marks (other than their specific trademark registration numbers); (ii) its use of the trade names “123inkt” and “123inkt.nl”since 2000; (iii) the alleged reputation of the Trade Marks and the trade name; (iv) the awards the web shop of the Complainant has received; or (v) the media coverage of these awards.

A. Identical or Confusingly Similar

The Complainant has not provided documentary evidence of its rights in the Trade Marks. However, a simple search of the register of the Benelux Office of Intellectual Property’s register, carried out by the Panelist, has confirmed that the Complainant is the owner of the rights in the Trade Marks.

The Trade Marks consist of or contain the name “123inkt”, which is incorporated in its entirety in the Domain Name with a misspelling. As set out in section 1.9 of the WIPO Overview 3.0, a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered to be confusingly similar to the relevant mark for purposes of the first element. This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark.

The country code Top-Level Domain (“ccTLD”) “.nl” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).

Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Marks.

B. Rights or Legitimate Interests

While the overall burden of proof in proceedings under the Regulations is on the complainant, previous panels have found that it is generally difficult, if not often impossible, to prove a negative (i.e., that the Respondent lacks any rights to or legitimate interests in the Domain Name), especially where the Respondent, rather than the Complainant, would be best placed to have specific knowledge of rights to or interests in the Domain Name. It follows that the Complainant has to make out a prima facie case that the Respondent lacks rights to or legitimate interests in the Domain Name (see, e.g., Lego Juris A/S v. Moensch, WIPO Case No. DNL2009-0052; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). If the Complainant meets this requirement and the Respondent fails to rebut this, the required evidence is deemed to have been provided (see, e.g., Accor v. Eren Atesmen, WIPO Case No. D2009-0701).

The Complainant thus must make a prima facie case that the Respondent does not have a trade mark or other right corresponding to the Domain Name, was not authorized by the Complainant to use or register a domain name containing the Trade Marks and did not (i) use or prepare to use the Domain Name in connection with a bona fide offering of goods or services before it was notified of the dispute; nor (ii) as an individual, business, or other organization has been commonly known by the Domain Name; nor (iii) is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Trade Marks.

For this purpose the Complainant has put forward that the Respondent had no permission for the registration and use of the Domain Name, does not appear to have a right of its own in the Domain Name, and is not known under the Domain Name or the name “123inkt”. The Complainant has submitted a print out of the first results page of a Google search for the Domain Name, which shows links to the Complainant’s web shop, but not to the Respondent.

The Panel concludes that the Complainant on balance with these statements has made out the prima facie case that the Respondent has no rights or legitimate interests in the Domain Name.

As no response has been filed, these statements and the evidence have remained uncontested.

On the basis of all of the above the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered or Used in Bad Faith

Under the Regulations, it is sufficient for the Complainant to show that the Domain Name either was registered or is being used in bad faith. Evidence of bad faith registration may be found if the Complainant shows that at the time of the registration of the Domain Name the Respondent knew or should have been aware of the Complainant’s rights in the Trade Marks (see also WIPO Overview 3.0, section 3.2.2).

In this context, the Panel notes that SIDN has informed the Center that the Domain Name was initially registered on October 22, 2014. The trademark 123INKT, on the other hand, has been registered on April 10, 2012 and therefore predates the Domain Name by more than two years.

In this context, it is also important to note that the Complainant’s statement that its web shop at <123inkt.nl> has for the past 10 years been chosen “Best web shop” by consumers in the category computer, hardware, and software at the “Nationale Thuiswinkel Awards” is confirmed by a simple Google search. A search for “123inkt.nl best webshop” shows that every year since 2008 “123inkt.nl” was chosen “Best web shop”. A search of the domain name <123inkt.nl> with the Wayback Machine (<archive.org>), which has documented web pages since the 1990s, shows the web shop’s homepage from various dates in 2008 with “123inkt.nl” in large lettering at the top of the page, in addition to the company name of the Complainant. In later years, the device trade mark 123INKT.NL is shown at the top of the homepage, while the trade mark 123INKT is used throughout that page.

The Panel further notes that (i) 123INKT, which is the distinctive element of the Trade Marks, is not a dictionary word or general expression; (ii) the Domain Name contains a misspelling ofthe distinctive element 123INKT; and (iii) the Domain Name was registered after the Complainant was chosen “Best web shop” for the seventh time in 2014.

Under these circumstances, the Panel deems it likely that at the time of the registration of the Domain Name the Respondent was or should have been aware of the Complainant, the trademark 123INKT and the Trade Name.

Furthermore, a simple Google search prior to its registration of the Domain Name would have informed the Respondent of the existence of the Complainant, the trademark 123INKT and the Trade Name.

In addition, the Panel notes that evidence submitted by the Complainant shows that each the Domain Name resolved to an web page which contained sponsored hyperlinks to, inter alia, “Printer cartridges” and “Inkt printer”. This shows that the Respondent uses the Domain Name to seek to benefit from the repute of the Trade Marks and from confusion with the Trade Marks among Internet users searching for information in relation to publications under the Trade Marks. Even if these sponsored links are served automatically by a third party, as a text on the website to which the Domain Name resolves claims, their being displayed on that website remains the responsibility of the Respondent which allows the hyperlinks to be or to remain placed on the website (see also WIPO Overview 3.0, section 3.5).

Under these circumstances, and taking into account that the Respondent has not filed a response to rebut the submissions of the Complainant, the Panel on balance concludes 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 <124inkt.nl> be transferred to the Complainant.

Wolter Wefers Bettink
Panelist
Date: October 31, 2018

¹ While the Complaint is brought under the Regulations, and not the Uniform Domain Name Dispute Resolution Policy (“UDRP”), given the similarities between the two, where applicable the Panel considers UDRP precedent relevant to the current proceedings, and will refer to it throughout the decision.