WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Koninklijke KPN N.V. v. Anton Bouwman
Case No. D2019-1111
1. The Parties
The Complainant is Koninklijke KPN N.V., Netherlands, internally represented.
The Respondent is Anton Bouwman, Netherlands.
2. The Domain Name and Registrar
The disputed domain name <kpn-webshop.website> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2019. On May 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 16, 2019, 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. The Center sent an email communication to the Complainant on May 19, 2019, 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 May 20, 2019.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 12, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 13, 2019.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on June 21, 2019. 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 telecommunications and ICT service provider in the Netherlands, providing telecommunication services to the Dutch public (business and consumer) under the brand KPN.
The Complainant holds, inter alia, the following trade marks (the “Trade Marks”):
- the Benelux word mark KPN registered under No. 0529431 registered as of November 1,1993
- the European Union word mark KPN registered under No. 005310099 as of May 29, 2008.
In the Benelux, the Complainant has a customer base of millions of users, both mobile, broadband and (interactive) TV customers. KPN is in the top ten of the most valuable brands in the Netherlands.
The Domain Name has been registered on December 26, 2018, and does not resolve to a website.
On March 6, 2019, the Complainant by email sent a cease-and-desist notice to the Respondent c/o the Registrar, who confirmed that it forwarded the email to the holder of the Domain Name.1 The Respondent did not respond to the notice.
5. Parties’ Contentions
According to the Complainant, the Domain Name infringes its rights in the Trade Marks since the first part of the Domain Name is identical to the Trade Marks, while the addition “webshop”, is a descriptive term referring to a business selling goods or services through a website, which may refer to the webshop of the Complainant. In the view of the Complainant, the addition of the generic Top-Level Domain (“gTLD”) “.website” adds to the confusing similarity between the Trade Marks and the Domain Name, as it refers to the website that may be hosted under the Domain Name.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name, as it has not received permission from the Complainant to register and/or use the Domain Name or any of the Trade Marks. In addition, the Complainant contends, there is no indication of the Respondent’s use of, or demonstrable preparations to use the mark KPN or any similar name in connection with a bona fide offering of goods and services. Furthermore, the Complainant states, the Respondent is not commonly known by the mark KPN or a similar name.
According to the Complainant, while the Respondent could have easily known by briefly searching the Internet - and probably knew - that KPN is a well-known trade mark, the Respondent still chose to register the Domain Name, that contains the Trade Marks, without a good reason. This demonstrates a clear intention to take advantage of the Trade Marks, which cannot be considered to be good faith conduct. Although the Domain Name is currently not in use, the Respondent submits that there is a significant chance that the Respondent will use the Domain Name for phishing activities or otherwise with the intention of using the Trade Marks unfairly to draw Internet users to the Respondent’s (future) website.
According to the Complainant, the Domain Name is being used in bad faith since:
(i) the Trade Marks have a strong reputation and are widely known;
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the Domain Name;
(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name; and
(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement.
In the view of the Complainant, taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trade mark law.
The Complainant also points out that it tried to contact the Respondent by email to find an amicable settlement, but the Respondent did not reply.
In light of the circumstances set out above, the Complainant contends that it should be concluded that the Respondent uses the Domain Name in bad faith.
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 Marks. The Domain Name is confusingly similar to the Trade Marks as it incorporates KPN, of which the Trade Marks consist, in its entirety. The addition of the descriptive term “webshop” does not avoid a finding of confusing similarity between the Domain Name and the Trade Marks (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8; see also, inter alia, TPI Holdings, Inc. v. Carmen Armengol, WIPO Case No. D2009-0361, and F. Hoffmann-La Roche AG v. John Mercier, WIPO Case No. D2018-0980). The gTLD “.website” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 3.0, section 1.11). Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Marks in which the Complainant has rights.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, the second element a complainant has to prove is that a respondent lacks rights or legitimate interests in a domain name. This may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. In order to satisfy the second element, the Complainant has to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name. If the Complainant succeeds in doing so, the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Domain Name. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element (See 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 Marks 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. Since the Respondent does not use the Domain Name for a website or otherwise, there is no case of 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 Marks, since:
- the Respondent’s registration of the Domain Name occurred twenty-five years after the registration of the earliest of the Trade Marks;
- the trade mark KPN has since 1993 been registered in the Netherlands, where the Respondent is located;
- the Complainant has millions of mobile, broadband and (interactive) TV customers in the Benelux;
- KPN is in the top ten of the most valuable brands in the Netherlands.
- 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 Marks.
With regard to bad faith use (noting the Domain Name does not resolve to an active website), the Panel finds that the following circumstances taken together warrant a finding 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 Marks;
- the use of a privacy shield upon the initial registration of the Domain Name;
- the lack of a response to the cease-and-desist letters;
- 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.
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 <kpn-webshop.website> be transferred to the Complainant.
Wolter Wefers Bettink
Date: July 5, 2019
1 Prior to the filing of the present dispute, the Complainant requested to receive the contact details of the Respondent from the concerned Registrar, but the concerned Registrar stated “[…] the Whois contact information assigned to the reported domain name is protected by the WhoisGuard service […]”.