WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
XS4ALL Internet B.V. v. Safwan Ramadhan, Company
Case No. D2016-1044
1. The Parties
The Complainant is XS4ALL Internet B.V. of Amsterdam, the Netherlands, represented by Koninklijke KPN N.V., the Netherlands.
The Respondent is Safwan Ramadhan, Company of Grubbenvorst, the Netherlands.
2. The Domain Name and Registrar
The disputed domain name <xs4all.xyz> (the "Domain Name") is registered with Hostinger, UAB (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 25, 2016. On May 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 27, 2016, the Registrar 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 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 21, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 22, 2016.
The Respondent sent email communications to the Center on June 25, 2016 and on June 28, 2016.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on June 27, 2016. 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.
In an email communication to the Center of June 25, 2016 – four days after the deadline for filing a Response – the Respondent stated:
"I get compensation of 100euro, I don't give the domain for 10euro, sorry".
In a further communication of June 28, 2016 the Respondent stated:
"I don't understand Engelish [sic]"
The Registrar has responded to the Center's request for verification that the English language was used for the registration agreement for the Domain Name. In accordance with paragraph 11, UDRP Rules, the language of this proceeding is English.
4. Factual Background
The company "XS4ALL", which is part of the Complainant's group of companies, was founded in 1993.
The Complainant is the owner of various trademark registrations, including inter alia:
- the Benelux trademark registration No. BX 0617399 for the word mark XS4ALL, filed on and registered as of November 24, 1997, which was renewed on November 24, 2007;
- the European Union trademark registration No. EU 000413732 for the word mark XS4ALL, filed on September 5, 1997 and registered on May 24, 2000;
hereafter together referred to as the "Trade Marks".
The Respondent registered the Domain Name on February 9, 2016.
According to the Parties' pre-complaint communications correspondence in Dutch submitted by the Complainant, on March 25, 2016 the Complainant wrote the Respondent that the Domain Name infringed its trade mark rights in the name XS4ALL and requested the Respondent to transfer the Domain Name to Koninklijke KPN N.V., the Complainant's parent company, for an amount of EUR 10. The Respondent did not accept this proposal and requested the Complainant to pay EUR 150 for the transfer, adding: "You may initiate proceedings if you wish". The documented registration costs are EUR 0.92.
5. Parties' Contentions
The Complainant submits that the Domain Name is identical or confusingly similar to the Trade Marks, since the first part of the domain name xs4all.xyz, consists solely of a complete reproduction of the Trade Marks.
Regarding the generic Top-Level Domain ("gTLD") ".xyz", the Complainant submits that it is well established that gTLDs may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the Domain Name, since:
- the Complainant has not approved the Respondent's registration of the name XS4ALL as part of the Domain Name;
- there is no indication of the Respondent's use of, or demonstrable preparations to use the name XS4ALL or any similar name in connection with the bona fide offering of goods or services;
- the Respondent is not commonly known (not as a person, not as a business, not as an organization) under the name XS4ALL or a similar name;
- the Respondent should have been, and probably was, aware of the existence of the Trade Marks at the time of registration of the Domain Name, due to the fact that the brand XS4ALL is (very)
well-known in the Netherlands.
The Complainant states that the Domain Name was registered and is being used in bad faith. According to the Complainant, the Respondent was clearly aware of the Complainant since, prior to the Respondent's Domain Name registration, the Parties had negotiated as to another ".xyz" domain name registered by the Respondent incorporating a trademark of the Complainant's related company. Further, the Respondent, when approached by the Complainant to hand over the Domain Name because it infringed the Trade Marks, demanded payment of EUR 150. As this, according to the Complainant, is in excess of the out-of-pocket expense of registration of the Domain Name (EUR 0.92) as indicated on the Registrar's website, the Complainant submits that the Domain Name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Trade Marks consist of the element "XS4ALL" which is incorporated in its entirety in the Domain Name. The generic Top-Level Domain ("gTLD") ".xyz" is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2).
Therefore, the Panel finds that the Domain Name is identical or confusingly similar to the Trade Marks.
B. Rights or Legitimate Interests
The Complainant has to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name (WIPO Overview 2.0, paragraph 2.1). Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant's consent to use the Trade Marks as part of the Domain Name, is not commonly known by the Domain Name and has not acquired trademark rights in the Domain Name.
In view of the above, the Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Based on the information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain Name the Respondent was or should have been aware of the Trade Marks.
First, the oldest registration of the Trade Marks predates the Domain Name's registration by 18 years.
Secondly, the Complainant's XS4ALL mark which is incorporated in its entirety in the Domain Name, has been in use by the Complainant since 1997 and is not a generic name or a name of which it is likely that a potential domain name registrant would accidentally think of.
Lastly, a simple trade mark register search, or even a Google search, prior to the registration of the Domain Name would have informed the Respondent of the existence of the Trade Marks.
Under these circumstances, the Panel concludes that the Domain Name has been registered in bad faith.
The fact that the Domain Name at this stage does not appear to resolve to an active web site does not imply a lack of bad faith. As set out in the WIPO Overview 2.0, paragraph 3.2, the consensus view is that the apparent lack of so-called active use (e.g., to resolve to a website) of a domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and recently HUGO BOSS Trade Mark Management GmbH & Co. KG, HUGO BOSS AG v. Dzianis Zakharenka, WIPO Case No. D2015-0640). In accordance with this UDRP jurisprudence, a UDRP panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith.
In this case, the Panel finds that the following circumstances together are found to be indicative of bad faith use of the Domain Name:
- the reputation of the Trade Marks and the likelihood that the Respondent was aware or should have been aware of the Complainants' rights in the Trade Marks;
- the lack of a formal Response of the Respondent;
- the Respondent's demand of payment of EUR 150 for handing over the Domain Name, which in this case is well in excess of the documented out-of-pocket registration costs of the Domain Name.
Therefore, the Panel concludes that the Domain Name has been registered and is being used in bad faith.
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 <xs4all.xyz> be transferred to the Complainant.
Wolter Wefers Bettink
Date: July 11, 2016