WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bol.com B.V. v. WhoisGuard Protected, WhoisGuard, Inc. / namecheap301984 namecheap301984
Case No. D2020-1490
1. The Parties
The Complainant is Bol.com B.V., the Netherlands, represented by Novagraaf Nederland B.V., the Netherlands.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / namecheap301984 namecheap301984, the Netherlands.
2. The Domain Name and Registrar
The disputed domain name <bol-com.com> (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 June 9, 2020. On June 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, 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 June 11, 2020, 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 June 12, 2020.
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 June 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 17, 2020.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on August 18, 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
The Complainant is active in the Benelux since 1999 in the online sale of books, dvd’s, music, toys, games, and various other goods. The Complainant holds various trade mark registrations, inter alia:
- Benelux registration no. 0834133 BOL.COM, registered on February 7, 2008;
- International registration No. 1118880 device mark BOL.COM, registered on December 29, 2011, for -Czech Republic, Denmark, Finland, Hungary, Norway, Poland, Slovakia, Slovenia, Spain and Sweden;
hereafter together referred to as the “Trade Marks”.
The Domain Name was registered on December 4, 2019, and redirects to the website of the Complainant under <bol.com>.
On March 17, 2020, the Complainant sent a letter of summons to the Registrar requesting the Respondent to take down the Domain Name by March 31, 2020. By email of March 25, 2020, the Registrar confirmed that the letter had been forwarded to the Respondent. By email of April 14, 2020, the Complainant summoned the Respondent to voluntarily transfer the Domain Name to the Complainant within seven days. The Respondent did not respond to either of these communications.
5. Parties’ Contentions
According to the Complainant, the Domain Name is phonetically, visually and conceptually identical to the Trade Marks, since it consists of the terms ‘bol’ and ‘com’ which are identical and combined in identical order to the Trade Marks, while the addition of the hyphen does not cause the Trade Marks and the Domain Name to be sufficiently dissimilar.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name, since the Complainant did not consent to the Respondent’s use of the Trade Marks or the trade name BOL.COM in its Domain Name nor for any other purpose, while to the knowledge of the Complainant, the Respondent does not own any rights in BOL.COM. Furthermore, the Complainant contends, the Respondent is not using the Domain Name for a legitimate and noncommercial purpose, as it redirects to a starting page leading to the Complainant’s website under <bol.com>. The Complainant states that the redirecting may be used for phishing activities and should be seen as an indication that the Domain Name was registered for commercial gain. In addition, the Complainant puts forward that, since there is no commercial or other link between the Complainant and the Respondent, this use of the Domain Name tarnishes the Trade Marks and is therefore unlawful against the Complainant.
According to the Complainant, given the reputation of the Trade Marks and the fact that the Respondent redirected the Domain Name to the Complainant’s website, it is inconceivable that the Respondent was not aware of the Complainant at the time of registration of the Domain Name. The Complainant also submits that the Respondent registered the Domain Name for the purpose of disrupting the business of the Complainant by illegal activities such as phishing, as it redirects to the Complainant’s website. In the view of the Complainant, this should be seen as an indication that the Domain Name was registered for commercial gain and thus in bad faith. Furthermore, the Complainant contends that the Respondent has registered the Domain Name using a privacy service which is also an indication that the Domain Name has been registered in bad faith. Finally, the Respondent did not respond to the letters of summons sent by the Complainant.
Based on the above, the Complainant concludes that the Domain Name has been registered and is being used in bad faith by the 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 Marks. The Domain Name is confusingly similar to the Trade Marks as it incorporates the element BOL.COM, of which the Trade Marks consist, in its entirety. The replacement of the dot between “bol” and “com” by a hyphen amounts to a misspelling of the Trade Marks, which 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 1.9). The generic Top-Level Domain “.com” 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. As the Domain Name contains a misspelling of the Trade Marks and redirects Internet users to the Complainant’s website under <bol.com>, without the consent of the Complainant, the Respondent is not making a legitimate noncommercial or fair use of the Domain Name (paragraph 4(c)(iii) of the Policy), nor can such use be considered to be in connection with a bona fide offering of goods or services, in accordance with paragraph 4(c)(i) of the Policy.
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 the Respondent registered the Domain Name in bad faith, since at the time of registration it was or should have been aware of and indeed specifically targeted, the Complainant and the Trade Marks. In particular, such knowledge and intent is derived from the following facts: (i) the Respondent’s registration of the Domain Name occurred 12 years after the registration of the earliest of the Trade Marks; (ii) the use of the Domain Name to redirect Internet users to the Complainant’s website under <bol.com>; (iii) a simple trade mark register search, or even an Internet search, prior to registration of the Domain Names in its name would have informed the Respondent of the existence of the Trade Marks.
The Panel also finds that the Respondent is using the Domain Name in bad faith, in particular since (i) the Domain Name contains a misspelling of the Trade Marks and redirects Internet users to the Complainant’s website under <bol.com>, without the consent of the Complainant (ii) the Respondent tried to hide its identity through the use of a privacy service, (iii) the Respondent did not respond to the letters of summons and (iv) the Respondent did not file a Response.
Based on these circumstances, the Panel concludes that the Complainant has established that the Respondent has registered and is using the Domain Name 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 <bol-com.com> be transferred to the Complainant.
Wolter Wefers Bettink
Date: September 1, 2020