WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Thuisbezorgd.nl B.V. and Takeaway.com B.V. v. WhoisGuard Protected, WhoisGuard, Inc. / MK, M. Khelifi
Case No. D2015-0431
1. The Parties
The Complainants are Thuisbezorgd.nl B.V. and Takeaway.com B.V. of Utrecht, the Netherlands, represented by Merkenbureau Knijff & Partners B.V., the Netherlands.1
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / MK, M. Khelifi of Capelle aan de IJssel, the Netherlands.
2. The Domain Name and Registrar
The disputed domain name <thuisbezorgd.pizza> (the “Domain Name”) is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2015. On March 11, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 12, 2015, 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 March 16, 2015 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 March 19, 2015.
The Center verified that the Complaint together with the amended Complaint satisfies 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 March 20, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 10, 2015.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on April 14, 2015. 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
Takeaway.com B.V. is the owner of three trademark registrations (the “Trademark”):
- Benelux registration No. 877664 word mark THUISBEZORGD.NL, registered on March 8, 2010, for services in classes 35, 39, 42;
- Benelux registration No. 811741 combined word/device mark THUISBEZORGD.NL, registered on January 19, 2007, for services in classes 35, 42;
- Benelux registration No. 815830 combined word/device mark THUISBEZORGD.NL, registered on November 16, 2006, for services in classes 35, 39, 43.
The word mark is registered inter alia for intermediary services in relation to reservations and deliveries of take-away restaurants.
The Complainant has contended that Thuisbezorgd.nl B.V. owns the trade name Thuisbezorgd.nl. In this regard the Complainant has submitted an extract from the Dutch commercial register which appears to be in the name of Takeaway.com B.V. and lists Thuisbezorgd.nl as one of almost 20 different trade names, inter alia for ordering and delivery services.
The Domain Name was registered by the Respondent on December 10, 2014.
The Panel notes that the Dutch word “thuisbezorgd” may be translated in English as “home-delivered”.
5. Parties’ Contentions
A. The Complainant
The Complainant has submitted a very brief Complaint. The Complainant contends only the following:
“A. The domain name[s] [is/are] identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1))
Takeaway.com B.V. is the owner of the trademark THUISBEZORGD.NL. Please find attached copies of the following registrations (Annex 3):
[See above for the particulars of the Trademark]
Thuisbezorgd.nl B.V. is the owner of the tradename Thuisbezorgd.nl.
An extract from the Chamber of Commerce is enclosed (Annex 4).
B. The Respondent has no rights or legitimate interests in respect of the domain name[s];
(Policy, paras. 4(a)(ii), 4(c), Rules, para. 3(b)(ix)(2))
The respondent has no rights or legitimate interests in respect of the domain name that is subject of the Complaint, since the respondent has no company name or trademark rights to the denomination [thuisbezorgd.pizza]. Complainants have not given a license to the use of their trademark rights. Moreover the Complainants have not given consent to the registration nor to use the trademark or domain name [thuisbezorgd.pizza].
C. The domain name[s] [was/were] registered and [is/are] being used in bad faith.
(Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3))
The registration of Thuisbezorgd.pizza is an act of bad faith. The registrations for THUISBEZORGD.NL, as well as the tradename Thuisbezorgd.nl B.V. pre-date the date of registration of the disputed domain name.
The Respondent is familiar or should have been familiar with the trademarks and tradename of Complainants.
Furthermore, after having received a summons in the name of Complainants, the Respondent offered the domain name for sale to Complainants.”
B. The Respondent
The Respondent has not replied to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant must demonstrate that it has rights in a trademark and that the Domain Name is identical or confusingly similar to such trademark.
The Complainant has proven ownership of the Trademark, but has not argued how the Domain Name is identical or confusingly similar to the Trademark. Nor has it substantiated that it has rights in the trade name Thuisbezorgd.nl in a manner that could provide a basis for establishing unregistered trademark rights under the Policy.
The comparison is between Thuisbezorgd.nl (as Trademark) and Thuisbezorgd.pizza (as Domain Name). The “.nl” element forms part of Thuisbezorgd.nl (Trademark) and without any further substantiation on the part of the Complainant, the Panel, taking into account the inherent descriptiveness of the word “thuisbezorgd” (without .nl), has some doubts whether Thuisbezorgd.nl (Trademark) is confusingly similar to <thuisbezorgd.pizza> (Domain Name) in the context of the Policy.
The Complaint thus fails the requirement of paragraph 3(b)(ix)(1) of the Rules which obliges the Complainant to describe “the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights”.
The Panel finds that the Complainant’s pleadings insufficiently demonstrate that the Domain Name is confusingly similar to the Trademark.
Therefore, the first element of the Policy is not met. Nonetheless, the Panel will discuss the other elements of this case.
B. Rights or Legitimate Interests
The Respondent has not replied to the Complainant’s contentions. The Panel has taken careful note of the factual assertions that have been made by the Complainant.
While the overall burden of proof rests with the Complainant, 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. The Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name (see paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
The Panel is satisfied that the Complainant made out a prima facie case in this matter, although the substantiation is limited. The Complainant has stated that the Respondent has no trade name or trademark rights in respect of the Domain Name. The Complainant has furthermore stated that it has not given a license or that it has given consent to register or use the Trademark or Domain Name.
In the absence of a response, the Panel is satisfied that the second element of the Policy is met.
C. Registered and Used in Bad Faith
The Complainant has the obligation to describe why the Domain Name should be considered as having been registered and being used in bad faith (paragraph 3(b)(ix)(3) of the Rules). This description should discuss any aspects of paragraph 4(b) of the Policy.
Addressing the registrant, this paragraph states that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
As noted, the Complainant contends that the Respondent’s registration of the Domain Name is an act of bad faith. The Trademark pre-dates the registration date of the Domain Name. The Complainant also contends that the Respondent is or should have been familiar with the Trademark of the Complainant. Furthermore, the Complainant contends that after having received a summons in the name of the Complainant, the Respondent offered the Domain Name for sale to the Complainant. A copy of such summons has not been submitted.
The Complainant has not substantiated, let alone evidenced, the registration and use in bad faith.
The fact that the trademark registrations pre-date the registration of the Domain Name is by itself insufficient.
It is well conceivable that the Respondent was or should have been familiar with the Trademark. However, given also the dictionary meaning of the term “thuisbezorgd”, the Complainant could have been expected to submit evidence of the extent of the Trademark’s acquired distinctiveness, for example in terms of turnover, marketing, investment or consumer recognition.
Likewise, the Complainant has failed to submit evidence that the Domain Name was offered for sale.
To conclude, the Panel finds that the Complainant failed to establish that the Respondent registered and used the Domain Name in bad faith. Therefore, the third element of the Policy is also not met.
The burden is on the Complainant to establish the elements specified in paragraph 4(a) of the Policy. The Complaint does not meet this burden. Paragraph 12 of the Rules provides the Panel with the discretionary right to request further statements or documents from either of the Parties, but such right is not intended to supplement pleadings that are substantially lacking in information and argument. See Technische Unie B.V. and Otra Information Services v. Technology Services Ltd, WIPO Case No. DNL2008-0002, Blandy & Blandy LLP v. Mr. Daniel Beach, WIPO Case No. D2012-0972 (citing Tufco Technologies, Inc., Tufco LP, Hamco Manufacturing and Distributing LLC v. Hamco Alabama, LLC, WIPO Case No. D2011-1451 and Ticket Software, LLC v. Domains By Proxy, LLC / Stephen Troy, WIPO Case No. D2013-0215.
The Panel finally notes that it is aware that the Complainant has recently prevailed in a different case, invoking the Trademark under the .nl Regulations. That case differs from the present case in at least two material respects: both the Trademark and the domain name contain the term “.nl”, and the domain name consists of a typo-squatted version of the trademark.
For the foregoing reasons, the Complaint in the present case is denied.
Willem J. H. Leppink
Date: May 7, 2015
1 Where there is no useful or relevant purpose in distinguishing between the Complainants, the Panel will in this decision refer to the Complainants as the “Complainant”.