WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Koninklijke Boskalis Westminster N.V. v. Privacy Administrator, Anonymize, Inc. / P. Trevor Zhen

Case No. D2019-3033

1. The Parties

Complainant is Koninklijke Boskalis Westminster N.V., the Netherlands, represented by AKD N.V., the Netherlands.

Respondent is Privacy Administrator, Anonymize, Inc., United States of America (“United States”) / P. Trevor Zhen, Nicaragua, self-represented. ¹

2. The Domain Name and Registrar

The disputed domain name <royalboskalis.com> is registered with Epik, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2019. On December 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 2, 2020, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on January 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2020. The Response was filed with the Center on January 26, 2020.

The Center appointed Stephanie G. Hartung as the sole panelist in this matter on February 5, 2020. 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

Complainant is a company organized under the laws of the Netherlands that is active in the dredging and maritime services industry.

Complainant has provided evidence that it is the registered owner of the following trademark relating to Complainant’s company name and brand “Boskalis”:

- Word mark BOSKALIS, European Union Intellectual Property Office (“EUIPO”), registration number: 002290237, registration date: August 20, 2002; status: active.

Furthermore, Complainant has demonstrated that it owns the domain name <boskalis.com> which resolves to Complainant’s official website at “www.boskalis.com”, used to promote Complainant’s business and related services in the dredging and maritime services industry.

Respondent, according to the WhoIs information for the disputed domain name, is a resident of Nicaragua who registered the disputed domain name on October 15, 2017. At the time of the rendering of this decision, the disputed domain name resolves to a website at “www.royalboskalis.com”, proclaiming that Complainant has previously been investigated for bribery and inviting Internet users to get in contact about allegations of Complainant’s wrongdoing. Complainant, however, has evidenced that at some point before the filing of the Complaint, the disputed domain name resolved to random and frequently changing content on the Internet, inter alia, promoting “Cheap Auto Insurance”, making reference to a law firm in Nicaragua and/or indicating that the domain name “may be for sale”.

Complainant requests that the disputed domain name be transferred to Complainant. Respondent, in turn, requests that the Complaint be denied.

5. Parties’ Contentions

A. Complainant

Complainant contends to have been established back in 1910, today owning one of the world’s largest dredging fleets with more than 10,000 employees and more than 700 vessels and floating equipment, operating in 90 countries. Since Complainant is active worldwide, it is often referred to as “Royal Boskalis”, which is the English translation of Complainant’s Dutch company name.

Complainant submits that the disputed domain name is confusingly similar to Complainant’s BOSKALIS trademark, as it incorporates the latter in its entirety and also comprises the term “royal” which coincides with Complainant’s company name. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Respondent has not been authorized by Complainant to apply for or use any domain names relating to Complainant’s BOSKALIS trademark, neither as reseller, distributor, licensee nor in any other way, (2) Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain, and (3) with more than hundred years of experience, Complainant has not heard of any organization, product or the like identified as “Royal Boskalis” other than Complainant’s own initiative. Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since (1) the term “Boskalis” is an invented word combining the family name “Bos” and “Kalis”, (2) Respondent registered the disputed domain name in a clear attempt to appear somehow related with Complainant, (3) the disputed domain name appears to be impersonating Complainant and may be used for incidents related to Complainant’s field of work, including the unlawful receipt of sensitive information or the spreading of false information, and (4) Respondent’s intention in registering the disputed domain name obviously was to profit in some fashion from or otherwise exploit Complainant’s BOSKALIS trademark.

B. Respondent

Respondent contends to have registered the disputed domain name in 2017 in order to manage emails received via the disputed domain name and, thus, to communicate with persons such as whistleblowers and/or Complainant’s former and current employees with knowledge of bribery allegations made against Complainant; through this method, Respondent received eight informational tips, either intended to be turned over to the relevant authorities, to compile them for public disclosure, or to refer whistleblowers to the relevant legal authorities or attorneys. Also, Respondent never attempted to impersonate Complainant, never inquired Complainant into buying the disputed domain name and never offered it for sale to anyone. Finally, Respondent did not pay for or request any privacy service, but the latter was installed by default to comply, e.g., with Nicaraguan law; in addition, the display of random content under the disputed domain name was only due to a misconfiguration by the DNS service to rotate random pages and Complainant took advantage of this by repeatedly entering the relevant URL into their browser in order to achieve different results.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel concludes that the disputed domain name <royalboskalis.com> is confusingly similar to the BOSKALIS trademark in which Complainant has rights.

The disputed domain name incorporates Complainant’s BOSKALIS trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see, e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among UDRP panels (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8), that the addition of another term (whether, e.g., descriptive or meaningless) to a trademark in a domain name would not prevent a finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the word “royal” (which even refers to Complainant’s company name) does not dispel the confusing similarity arising from the incorporation of Complainant’s BOSKALIS trademark in the disputed domain name.

Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Panel is further convinced on the basis of both Parties’ contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.

Respondent obviously has not been authorized to use Complainant’s BOSKALIS trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the term “Boskalis” – which undisputedly is an invented word combining the family name “Bos” and “Kalis” – of his own. Moreover, it is also undisputed between the Parties that the disputed domain name at least temporarily resolved to various changing content on the Internet, inter alia, to a website promoting “Cheap Auto Insurance” – and still so did when the Complaint was filed. Such making use of the disputed domain name obviously neither qualifies as a bona fide offering of goods or services by Respondent nor as legitimate noncommercial or fair within the meaning of paragraph 4(c) of the Policy.

Accordingly, Complainant has established a so-called prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1).

In this context, Respondent emphasizes that he has set up content under the disputed domain name and that he receives emails thereunder in order to communicate with persons such as whistleblowers and/or Complainant’s former and current employees with knowledge of bribery allegations made against Complainant; Respondent, therefore, claims to exercise its right to freedom of speech in using the disputed domain name. In fact, there are numerous decisions which have been rendered under the UDRP as to the application of its second requirement in relation to the use of a domain name for a website providing genuine criticism relating to a complainant. Panels, however, find that even a general right to legitimate criticism does not necessarily extent to registering or using a domain name identical to a trademark; even where such a domain is used in relation to genuine noncommercial free speech, UDRP panelists tend to adopt the view (especially in cases which do not involve exclusively United States parties or the selection of a United States mutual jurisdiction), that this creates an impermissible risk of user confusion through impersonation (see WIPO Overview 3.0, section 2.6.2). In the case at hand, the Panel has considerable doubts whether Respondent truly uses the disputed domain name in order to exercise genuine noncommercial free speech. This is mostly because the website content under the disputed domain name proclaiming that Complainant has previously been investigated for bribery and inviting Internet users to get in contact about allegations of Complainant’s wrongdoing obviously was only set up after Respondent learned of the Complaint; in turn, Respondent did not comment at all on this specific timing and except for claiming a misconfiguration in its DNS settings did not explain as to why the disputed domain name at some point before the filing of the Complaint promoted, e.g., the acquisition of “Cheap Auto Insurance”, a subject which obviously has nothing to do with Complainant’s business and any bribery accusations brought against it. But even if Respondent’s making use of the disputed domain name qualified as genuine free speech exercise, still Respondent need not do so under a domain name that simply comprises of Complainant’s BOSKALIS trademark together with the term “royal” which directly refers to Complainant’s trading/company name, thus bearing a considerable risk to confuse Internet user through impersonation of Complainant, especially since the disputed domain name, on top, may be used to send and receive emails, e.g., under “[...]@royalboskalis.com”, an email address which is likely to be perceived as deriving from Complainant instead of from Respondent.

Taking into account these considerations, the Panel concludes that Respondent’s use of the disputed domain name is not such as to confer rights or legitimate interests in the disputed domain name and that, therefore, Complainant has also satisfied paragraph 4 (a)(ii) and, thus, the second element of the Policy.

C. Registered and Used in Bad Faith

The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith. The notion of “bad faith” under the UDRP is hereby broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark (see WIPO Overview 3.0, section 3.1).

The circumstances to this case leave no doubt that Respondent was clearly aware of Complainant’s rights in the BOSKALIS trademark and its related business when registering the disputed domain name and that the latter clearly is directed to Complainant’s BOSKALIS trademark. Moreover, it is apparent from the case file that the website content under the disputed domain name proclaiming that Complainant has previously been investigated for bribery and inviting Internet users to get in contact about allegations of Complainant’s wrongdoing obviously was only set up after Respondent learned of the Complaint, and Respondent did not comment at all on this specific timing and did not provide, e.g., for a traceable explanation as to why the alleged misconfiguration by the DNS service to rotate random pages, such as the promotion of the acquisition of “Cheap Auto Insurance” and/or the indication that the domain name “may be for sale”, could only be set aside and be replaced by content about allegations of Complainant’s wrongdoing the very moment that Respondent was notified of the Complaint. Finally, Respondent created the very specific disputed domain name not only to include Complainant’s entire BOSKALIS trademark, but a direct translation into the English language of Complainant’s Dutch company name with no additional terms which points to an intention to target the Complainant and possibly wishing to collect information using the disputed domain name on Complainant’s alleged wrongdoing. Against this background, it is rather likely than not that Respondent has registered and is making use of the disputed domain name in way to somehow profit from or to take unjustified and, thus, unfair advantage of Complainant’s BOSKALIS trademark, which may not be qualified other than that Respondent has registered and is making use of the disputed domain name in bad faith within the larger meaning of paragraph 4(b) of the Policy.

Therefore, the Panel finds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).

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 <royalboskalis.com> be transferred to Complainant.

Stephanie G. Hartung
Sole Panelist
Date: February 17, 2020

¹ It is evident from the case file that Privacy Administrator, Anonymize, Inc., United States, is a privacy protection service and that P. Trevor Zhen, Nicaragua, is the underlying registrant of the disputed domain name. Therefore, unless otherwise indicated, the term “Respondent” is used by the Panel in the case at hand to refer to the latter underlying registrant only.