WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rob Havenga v. Privacy Protect.org/ James Tari Moduma
Case No. D2014-0101
1. The Parties
The Complainant is Rob Havenga of Amsterdam, the Netherlands, represented by Houthoff Buruma, the Netherlands.
The Respondent is Privacy Protect.org of Nobby Beach, Australia / James Tari Moduma of Valencia, Spain.
2. The Domain Name and Registrar
The disputed domain name <robhavengalaw.com> (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2014. On January 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 23, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 3, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 7, 2014.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 4, 2014.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on March 10, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a Dutch citizen, and is currently a partner at the Netherlands based law firm, Houthoff Buruma, which has 250 lawyers worldwide. The Complainant commenced his career at KPMG in Amsterdam in 1989. He then became a partner in the tax department of Houthoff Buruma in 1999, and is currently the head of the tax department within the firm. The Complainant is also ranked as a leading tax lawyer in the 2013 edition of Chambers Global, and is a member of various associations and groups. The Complainant has been operating and providing tax and legal services under his name, Rob Havenga, both inside and outside of the Netherlands. The Complainant also holds the Benelux trade mark registration for ROB HAVENGA, which was registered on January 13, 2014.
The Respondent registered the Disputed Domain Name on September 16, 2013. The Disputed Domain Name currently resolves to a website that allegedly provides legal services under the name Rob (R.F.) Havenga.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
(a) The Disputed Domain Name is confusingly similar to the Complainant’s registered ROB HAVENGA trade mark. The addition of the word “law” in the Disputed Domain Name is merely descriptive of the services allegedly offered on the website to which the Disputed Domain Name resolves, and is insufficient to avoid a finding of confusing similarity.
(b) The Respondent’s name does not correspond with the Disputed Domain Name. A LinkedIn search for law professionals yielded no positive results, save for the Complainant himself. The Respondent is not known by the Disputed Domain Name, and the Complainant has not authorized anyone to use the ROB HAVENGA mark.
(c) The Disputed Domain Name resolves to a website (the “Website”) that allegedly provides legal services, but is actually being used for fraudulent reasons. The Website is allegedly the website for a law firm called “Rob (R.F.) Havenga”, and the Website provides contact addresses in the Netherlands. However, there is no such law firm – the Commercial Register kept by the Chamber of Commerce and Industry in the Netherlands has no record of a company with the name “Rob (R.F.) Havenga”, and no such law firm is recorded with the Netherlands Bar Association. The Website shows three Netherlands addresses for a fictitious law firm, all of which are either current or former addresses of Houthoff Buruma (the law firm that the Complainant is a partner of).
(d) The Respondent sends out messages under the name of “Rob (R.F.) Havenga”, which include references to the Website, as part of a “419 scam”, i.e. asking individuals to transfer large sums of money, in return for receiving much larger sums in the near future. The use of the Complainant's name and ROB HAVENGA mark by the Respondent in the Disputed Domain Name and Website are intended to mislead and defraud the public and make an illegal and fraudulent financial gain.
(e) Based on the above, there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, or is using the Disputed Domain Name to offer any bona fide goods or services.
(f) The Complainant has used his name, Rob Havenga, as a service mark since at least 1990 in relation to the provision of legal and tax services. The Complainant is also listed as a member of the Dutch Association of Tax Advisors, the International Fiscal Association, the Dutch Association for Tax Science, the American Bar Association and the Tax Group of the International Bar Association. He is also ranked as a leading tax lawyer in the 2013 edition of Chambers Global, and is a regular lecturer on international tax and a frequent speaker at the American Bar Association and the Tax Group of the International Bar Association. It is therefore highly likely that the Respondent knew of the Complainant when he registered the Disputed Domain Name on September 16, 2013. The surname "Havenga" is also not a common surname in the Netherlands – according to the Dutch Central Bureau of Genealogy only 126 people in 2007 were registered with the surname “Havenga” in the Netherlands out of a total population of 16,357,992. The Respondent also uses the Complainant's initials (“R.F.”) on the Website, which shows that the Respondent deliberately targeted the Complainant.
(g) The Respondent’s use of the Disputed Domain Name damages the Complainant’s reputation and goodwill attached to his name and his ROB HAVENGA service mark.
(h) The Respondent has also registered the domain name <briankinglaw.com>, which has the same layout and content as the Website, and is also likely being used for fraudulent purposes. This evidences a pattern of fraudulent activity being carried out by the Respondent, in which names of existing lawyers are used to create a false impression that a website or domain name is legitimate.
(i) The Respondent has also been trying to conceal his identity by registering the Disputed Domain Name via a proxy service provider and providing a false telephone number.
The Respondent did not reply to the Complainant’s contentions. Although failure to file a Response will not automatically result in a decision in favor of the Complainant, it may result in the Panel drawing appropriate inferences from such default. The Panel is also entitled to accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
It is well established that common law or unregistered trade mark rights can be found to exist in a personal name, where the personal name has been used in trade or commerce (see Dr. Michael Crichton v. In Stealth Mode, WIPO Case No. D2002-0874). As stated in Arthur Golden v. Galileo Asesores S.L., WIPO Case No. D2006-1215, the factors that a panel might consider when determining whether a complainant can claim common law or unregistered trade mark rights in his/her personal name include "(a) whether the name is common (which reduces the possibility of acquiring secondary meaning) - see Gordon Sumner, p/k/a Sting v. Michael Urvan, WIPO Case No. D2000-0596; (b) whether the name was used in connection with goods or services in a commercial context; and (c) the time period over which the name was so used." The Panel accepts that prior to the registration of the Complainant’s ROB HAVENGA trade mark in January 2014 (and even without such a registration), the Complainant had unregistered trade mark rights in his personal name (Rob Havenga) for the purposes of the Policy as: (a) based on the evidence provided by the Complainant, "Havenga" is not a common name in the Netherlands; (b) the Complainant has been using his name in connection with the provision of legal and tax services since 1989; and (c) the fact that the Complainant is a member of various associations, that he was named as a leading tax lawyer in the 2013 edition of Chambers Global, and that he acts as a regular lecturer and speaker in various conferences, show that the Complainant has taken steps to market himself as a legal service provider and is likely well-known in his industry, in particular in the Netherlands.
The Disputed Domain Name incorporates the Complainant’s ROB HAVENGA mark in its entirety, the only difference being the word “law”. Where the distinctive and prominent element of a disputed domain name is the complainant’s mark, and the only addition is a generic term that adds no distinctive quality, it is well established that such a generic term does not negate the confusing similarity between the disputed domain name and the mark (see Goyard St-Honoré v. Ye Shi, WIPO Case No. D2012-1178; Monsoon Acccesorize Limited v. Zhang Qianqian, Fundacion Private Whois, WIPO Case No. D2012-1689; Diageo Ireland v. Guinnessclaim, WIPO Case No. D2009-0679; The Coca-Cola Company v. Whois Privacy Service, WIPO Case No. D2010-0088). In fact, the Panel finds that the use of the generic word “law” in the Disputed Domain Name actually increases the confusing similarity between the Disputed Domain Name and the Complainant's ROB HAVENGA mark, since the Complainant is involved in the provision of legal services.
It is also a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic Top-Level Domain extension, in this case ".com", may typically be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd., WIPO Case No. D2006-0762).
The Panel therefore finds that the Disputed Domain Name is confusingly similar to the Complainant’s mark, and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant must establish a prima facie case in respect of the lack of rights or legitimate interests of the Respondent in the Disputed Domain Name. Once established, the Respondent then bears the burden of proving otherwise, failing which, paragraph 4(a)(ii) of the Policy shall be deemed to have been satisfied (see paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; and Accor v. Eren Atesmen, WIPO Case No. D2009-0701).
The Panel accepts that the Complainant has not authorised or granted any right to the Respondent by which the Respondent could own or legitimately use the Complainant’s name and/or the Complainant’s ROB HAVENGA mark. The Panel further accepts that the Respondent’s name is in no way associated with the Disputed Domain Name, and that he has provided no evidence to demonstrate a registration of a trade mark anywhere in the world that corresponds with the Disputed Domain Name, or any evidence that he has become commonly known by the Disputed Domain Name. Accordingly, the Panel is of the view that a prima facie case has been established by the Complainant, and it is for the Respondent to prove that he has rights or legitimate interests in the Disputed Domain Name. However, as no Response was filed by the Respondent, the Panel will determine whether or not the Respondent has any rights or legitimate interests in the Disputed Domain Name based on the inferences that can be reasonably drawn from the Complainant's evidence and the Website.
Based on the evidence provided by the Complainant, it appears that the Respondent is not using the Disputed Domain Name to offer bona fide goods or services. In particular, the message sent in the name of “Rob (R.F.) Havenga”, annexed to the Complaint, which contains a reference to the Website, appears to be trying to solicit money from individuals via fraudulent means. Further, “Rob (R.F.) Havenga” (the alleged law firm that the Website is promoting) is not registered with the Chamber of Commerce and Industry in the Netherlands or with the Netherlands Bar Association. The Respondent therefore appears to be using the Disputed Domain Name and Website for commercial gain in order to mislead users into believing that the Respondent is a legitimate legal service provider and is somehow connected to the Complainant, and that the messages issued by the Respondent under the name “Rob (R.F.) Havenga” are genuine and not part of a fraudulent scheme. Such use cannot attribute any rights or legitimate interests in the Disputed Domain Name to the Respondent.
The Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Name.
C. Registered and Used in Bad Faith
From the evidence provided by the Complainant, the Panel is satisfied that the Respondent may be engaged in fraudulent activities by sending out messages under the name of “Rob (R.F.) Havenga”, which include references to the Website, as part of a scheme to get individuals to transfer large sums of money to the Respondent. The Respondent’s registration of the domain name <briankinglaw.com>, which resolves to a website that contains a layout and content substantially similar to the Website, is also potentially indicative of a pattern of bad faith behavior on the part of the Respondent.
The Panel concludes that the Respondent was aware of the Complainant at the time he registered the Disputed Domain Name, and purposefully registered the Disputed Domain Name in bad faith to take advantage of the Complainant’s reputation, i.e. by falsely conveying an association with the Complainant. The Panel’s conclusion is based on the following facts, derived from the evidence provided by the Complainant and the Panel’s review of the Website and of Houthoff Buruma's website (“www.houthoff.com”):
(a) the contact address on the Website is the same as the contact address for Houthoff Buruma in the Netherlands, the law firm where the Complainant is a partner;
(b) the Website contains a profile of a Rob (R.F.) Havenga who is the alleged founding partner of the firm, and this profile replicates verbatim, part of the Complainant’s profile found on the website of Houthoff Buruma (“www.houthoff.com”), i.e. "Rob Havenga specialises in advising international clients on tax matters relating to funds, fund structuring, private equity, international tax law and tax planning. Rob is a member of the Dutch Association of Tax Advisors, the International Fiscal Association (IFA), the Dutch Tax Scholar Association, and the Tax Group of the International Bar Association"; and
(c) the name “Havenga” is an uncommon name, and it cannot be mere coincidence that the Respondent decided to register a Disputed Domain Name that is confusingly similar to the Complainant’s name, and which resolves to a Website that allegedly offers legal services from the Netherlands, which is the same industry and location as the Complainant.
Based on the above, the Panel finds that the Respondent registered and is using the Disputed Domain Name to take advantage of the Complainant’s name and reputation in the legal industry, particularly in the Netherlands, for the purposes of misleading users into believing that the Disputed Domain Name and Website are somehow associated with the Complainant, and that any messages sent by the Respondent are therefore genuine and not part of a fraudulent scheme.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy is satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <robhavengalaw.com> be transferred to the Complainant.
Date: March 13, 2014