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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Stichting Samenwerkende Publieke Omroepen Midden Nederland v. Erwin Beck

Case No. D2018-1729

1. The Parties

The Complainant is Stichting Samenwerkende Publieke Omroepen Midden Nederland of Utrecht, the Netherlands, represented by Novagraaf Nederland B.V., the Netherlands.

The Respondent is Erwin Beck of Utrecht, the Netherlands.

2. The Domain Name and Registrar

The disputed domain name <rtvutrecht.app> (the “Domain Name”) is registered with Key-Systems GmbH dba domaindiscount24.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2018. On July 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 1, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. In reply to a Complaint Deficiency Notification sent on August 3, 2018, the Complainant filed an amended Complaint on August 7, 2018. The Complainant filed a second amended Complaint on August 9, 2018.

The Complaint was filed in English and the Language of the Registration Agreement is Dutch. On August 10, 2018, the Center sent a communication to the Parties, in English and Dutch, regarding the language of the proceeding. On August 13, 2018, the Complainant filed a third amended Complaint requesting that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

The Center verified that the Complaint together with the three amended Complaints 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 August 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 11, 2018.

The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on September 24, 2018. 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 operates an independent regional media channel in the Netherlands under the name RTV Utrecht.

The Complainant is the owner of the Benelux trade mark RTV UTRECHT (device mark), registered under no. 0728632 on October 25, 2002 (the “Trade Mark”), and has been using the trade name “RTV Utrecht” in the Netherlands since 2000.

The Domain Name was registered on May 8, 2018, and resolves to a parking page.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the Domain Name is confusingly similar to the Trademark of Complainant, as it is phonetically, visually and conceptually identical to the Trade Mark. The Domain Name contains the element “RTV Utrecht” which is identical to the Trade Mark. The addition of the generic Top-Level Domain (“gTLD”) “.app” does not cause the Trade Mark and the Domain Name to be sufficiently dissimilar, the Complainant contends, since the gTLD “.app” will be interpreted as being the relevant website relating to the apps the Complainant offers for users of iPhone and Android software.

According to the Complainant, the Respondent has no rights or legitimate interests in respect of the Domain Name, as, to the knowledge of the Complainant, the Respondent does not own any rights to a trade mark or trade name including the element “RTV Utrecht”. The Complainant states that it did not give its consent to the Respondent to use and/or refer to the Trade Mark in the Domain Name nor for any other purpose.

The Complainant further submits that, since there is no content on the web page to which the Domain Name resolves, the Respondent is not using the Domain Name for a legitimate and noncommercial purpose.

Furthermore, the Complainant contends, Internet users will easily assume that the Respondent’s website under the Domain Name is affiliated to the Complainant, which may tarnish the Trade Mark and the independent status of the Complainant as a media channel and is therefore unlawful.

According to the Complainant, the Domain Name was registered and is being used in bad faith. Given the well-known reputation of the Complainant’s news channel and the Trade Mark, the Complainant submits, it is inconceivable that the Respondent was not aware of the Trade Mark at the time of registration of the Domain Name. In addition, the Complainant submits, by the creation of the Domain Name the Respondent causes initial interest confusion and consequent diversion of Internet traffic. The Complainant notes that there are no noticeable preparations that indicate that the Respondent intends to use the Domain Name in a legitimate way for a bona fide offering of goods and services. Therefore, the Complainant assumes that the Respondent has claimed the Domain Name for its own enrichment, by offering the Domain Name for sale to the Complainant, as the only legal owner of the trade mark RTV UTRECHT in the Netherlands, or for launching an affiliated app which will tarnish the Trade Mark. This will disrupt the business and independent reputation of the Complainant as a reliable news channel in the Netherlands, since the Complainant is prevented to register and use the Domain Name and a related app itself, the Complainant contends.

Finally, the Complainant states that despite a thorough attempt it was not able to find the actual contact details of the Respondent.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has shown that it has registered rights in the Trade Mark. The Domain Name is identical to the Trade Mark as it incorporates the Trade Mark in its entirety. The gTLD “.app” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see also WIPO Overview of WIPO Panel views on selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11).

Therefore, the Panel finds that the Domain Name is identical to the Trade Mark in which the Complainant has rights.

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 3.0, section 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 Mark as part of the Domain Name, is not commonly known by the Domain Name and has not acquired trade mark rights in the Domain Name. As the Domain Name is at present resolving to a parking page and is apparently not being actively used for any other purpose, this (non-) use in the present case does not amount to a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.

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 Mark, since:

- the Respondent’s registration of the Domain Name occurred more than 15 years after the registration of the Trade Mark;

- the Trade Mark, which is incorporated in its entirety in the Domain Name, does not appear to be a dictionary word, nor a name of which it is likely that a registrant would spontaneously or accidentally think of;

- a simple trade mark register search, or even an Internet search, prior to registration of the Domain Name in its name would have informed the Respondent of the existence of the Trade Mark.

Under these circumstances, the Panel concludes that the Domain Name has been registered in bad faith.

With regard to bad faith use, the fact that the Domain Name at this stage resolves to a parking page and is apparently not being actively used does not imply a lack of bad faith. As set out in the WIPO Overview 3.0, section 3.3, the consensus view is that the apparent lack of so-called active use of a domain name without any active attempt to sell or to contact the trade mark holder, does not as such prevent a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and 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 a 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 probability that the Respondent was aware or should have been aware of the Complainant’s rights in the Trade Mark;

- the non-dictionary nature of the Trade Mark incorporated in the Domain Name, such that the Respondent cannot claim to have “accidentally” registered a domain name that happens to correspond to the Trade Mark;

- the lack of a formal Response of the Respondent.

Therefore, the Panel concludes that the Domain Name has been registered and is being used in bad faith.

7. Decision

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 <rtvutrecht.app> be transferred to the Complainant.

Wolter Wefers Bettink
Sole Panelist
Date: October 9, 2018

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