WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hyves B.V. v. Private registrations co ltd.
Case No. DNL2012-0058
1. The Parties
The Complainant is Hyves B.V. of Amsterdam, the Netherlands, represented by Klos Morel Vos & Schaap, the Netherlands.
The Respondent is Private registrations co ltd. of Bangkok, Thailand.
2. The Domain Name and Registrar
The disputed domain name <sexhyve.nl> (the “Domain Name”) is registered with SIDN through NameWeb.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2012. On September 14, 2012, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On September 17, 2012, SIDN 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 Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 24, 2012. In accordance with the Regulations, article 7.1, the due date for the Response was October 14, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 15, 2012.
On October 31, 2012, the Center appointed Richard C.K. van Oerle as the panelist in this matter. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.
4. Factual Background
The Panel will proceed on the facts as stated by the Complainant and not contested by the Respondent. Furthermore, the Panel will take account of the information provided by the Center and by SIDN.
The Complainant holds, amongst others, the following trademark registrations for the wordmark HYVES:
- Community trademark, registered January 22, 2009, registration number 006450571, for goods and or services in classes 9, 35, 38, 41, 42 & 45 (including “(online) dating services”);
- Benelux trademark HYVES, registered May 10, 2005, registration number 0766469, for services in classes 35, 38 & 42.
Both registrations are still valid. These registrations will jointly be referred to (in singular) as the “Trademark”.
The Domain Name was first registered on August 26, 2009. The date of the current registration by the Respondent is August 10, 2012, by change of registrant.
The Domain Name redirects to “www.seks-book.nl”, a sex dating site.
5. Parties’ Contentions
The Complainant is the owner of the well-known social network site “www.hyves.nl”. At this moment Hyves has more than 9,7 million accounts and over 4,4 million users log on to their accounts each month. Hyves is so well known in the Netherlands that the verb “hyven” (to “hyve”) is included in the Dutch dictionary.
As a consequence of the lengthy, large-scale and intensive use of the wordmark HYVES, the trademark is a “well known trademark” within the meaning of articles 2.20 paragraph 1 sub c Benelux Convention on Intellectual Property and 9 paragraph 1 sub c of the Community Trademark Regulation.
The Domain Name is confusingly similar to the trademarks of the Complainant. It is established case law under the Regulations that when comparing a mark to a domain name, the Top-Level Domain (.nl) is left out. This means that the Domain Name is nearly identical or at least highly similar to the trademarks of the Complainant. The difference between the element “hyve” and the trademark HYVES of the Complainant is so insignificant that it will escape the attention of the average consumer. The prefix “sex” added by the Respondent is obviously descriptive, especially considering the pornographic content of the website connected to the Domain Name. Therefore, the added element “sex” cannot take away any likelihood of confusion by the public. Considering the similarity between the registered trademarks of the Complainant on the one hand and the Domain Name on the other, there is a high risk that the public will think that the Complainant is, either directly or indirectly, involved in the website “www.sexhyve.nl”.
The Domain Name is directed to a so-called sex dating website, which shows explicit erotic material and is detrimental to the distinctiveness and the reputation of the Complainant.
The Respondent has no rights or legitimate interests in the Domain Name. The Respondent does not appear in the Benelux Trademark Register and the Complainant has not licensed or otherwise permitted the Respondent to register the Domain Name.
It is clear that the Domain Name is not held by the Respondent for a bona fide offering of goods or services. The word “hyve” has been included in the Domain Name for its public recognition and distinctiveness. Obviously, the only purpose of this inclusion was to increase the likelihood that Internet users will make use of the services offered by the Respondent, by exploiting the confusion of the public.
Therefore, the Domain Name has been registered and is being used in bad faith. Considering the fact that the trademarks of the Complainant were already well known in the Netherlands at the moment of registration the Respondent knew, or should have known, that the registration and the use of the Domain Name would constitute bad faith.
The Respondent only registered the Domain Name to take unfair advantage of the reputation of the trademarks of the Complainant.
Not only the registration, but also the use of the Domain Name constitutes bad faith. The Respondent is using the Domain Name for commercial gain by attracting Internet users to the Respondent’s website, while making use of the likelihood of confusion between the services offered by the Respondent and the
well-known trademarks of the Complainant. In that respect, it is hard to imagine any legitimate reason for the Respondent’s current use of the website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The fact that the Respondent did not file a response, does not mean that the requested remedy should automatically be awarded. The Panel will have to determine whether the Complainant’s case prima facie meets the requirements of article 2.1 of the Regulations (Taylor Made Golf Company, Inc. v. Lotom Group S.A., WIPO Case No. DNL2010-0067; Société Air France v. Helo Holdings LTD, WIPO Case No. DNL2010-0082; and Nutri-Akt b.v. v. Edoco LTD., WIPO Case No. DNL2011-0003).
Based on article 2.1 of the Regulations, a claim to transfer a domain name must meet three cumulative requirements:
a. the domain name is identical or confusingly similar to a trademark, or trade name, protected under Dutch law in which the complainant has rights, or other name mentioned in article 2.1(a) sub II of the Regulations; and
b. the registrant has no rights to or legitimate interests in the domain name; and
c. the domain name has been registered or is being used in bad faith.
Considering these requirements, the Panel rules as follows:
A. Identical or Confusingly Similar
The Complainant has established that it is the owner of the Trademark.
The disputed domain name is <sexhyve.nl>. The Domain Name contains the Complainant’s trademark HYVES nearly in its entirety. Only the last character of the last syllable is missing; the syllable which, if one pronounces “hyves”, is not emphasized.
It is established case law under the Regulations that the suffix “.nl” may be disregarded when comparing a domain name to a complainant’s mark. The issue therefore is whether the addition of the suffix “sex” immediately before “hyve” is sufficient to prevent confusing similarity between the Domain Name and the Trademark.
The addition of similar generic words to distinctive marks in domain names is not a new phenomenon, and similar cases have been considered on numerous occasions by UDRP panels.1 The following extract from
Orange Personal Communications Services Limited v. Petr Fomenkov, WIPO Case No. D2008-1769 (quoted in Miss Universe L.P., LLLP v. Sheeler LLC. / WhoisGuard Protected, WIPO Case No. D2010-1653) would appear to summarize the approach taken in these types of cases:
“The Panel is satisfied that the Disputed Domain Name is confusingly similar to the ORANGE mark. Previous Panels have decided that the addition of a generic term such as the word “porno” to a trade mark is likely to result in confusion. See Microsoft Corporation v. S.L. Mediaweb, WIPO Case No. D2003-0538, (decided that <msnporno.com> is confusingly similar to the mark MICROSOFT); Academy of Motion Picture Arts and Sciences v. Chego Nado, WIPO Case No. D2003-0541, (decided that <porno-oscar.com> is confusingly similar to the mark OSCAR); Caesars World v. Alaiksei Yahorau, WIPO Case No. D2004-0513, (decided that <porncaesar.com> is confusingly similar to the mark CAESARS); Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102, (decided that <nokiagirls.com> is confusingly similar to the mark NOKIA). The Panel therefore finds that the Disputed Domain Name is confusingly similar to the Complainant’s mark.”
Taking all of the above into account, and following the approach adopted in the above-referenced UDRP decisions, the Panel finds that, for the purpose of article 2.1(a) of the Regulations, the Domain Name is confusingly similar to the Trademark in which the Complainant has rights.
Therefore the first requirement is met.
B. Rights or Legitimate Interests
The Complainant must further demonstrate that the Respondent has no rights to or legitimate interests in the Domain Name. This condition is met if the Complainant makes a prima facie case that the Respondent has no rights or legitimate interests, and the Respondent fails to rebut this (see: Technische Unie B.V. and Otra Information Services v. Technology Services Ltd., WIPO Case No. DNL2008-0002).
Article 3.1 of the Regulations contains a non-exhaustive list of circumstances that may be raised by the Respondent, which, if found established by the Panel, may demonstrate that the Respondent does indeed have rights or legitimate interests in the Domain Name. Thus, if the Respondent can show that it has made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services prior to the dispute, or that it has been commonly known by the Domain Name, or that it is making legitimate noncommercial or fair use of the Domain Name without intent to divert consumers or to tarnish the trademark, then the Respondent may well be able to satisfy the Panel that it has rights or legitimate interests in the Domain Name for purposes of the Regulations.
In this case, the Complainant has made out a prima facie case that the Respondent lacks any rights or legitimate interests in the Domain Name. The Respondent is not known by the Domain Name, and the Complainant has not authorised the Respondent to use its mark, whether in the Domain Name or otherwise. The Respondent has failed to file a Response to the Complaint and has thus offered no justification for its choice and use of the Domain Name.
More specifically, given the manner in which the Domain Name, registered in the Dutch domain name space, is used and the content of the website to which the Domain Name resolves, there can be little doubt that the Respondent knew of the Trademark prior to registration of the Domain Name. Further, it is obvious to the Panel that the Respondent deliberately chose the Domain Name for the purposes of attracting traffic to a sex-related website. Under these circumstances, where a respondent has deliberately chosen a domain name confusingly similar to a well-known mark, and where no explanations have been forthcoming from a respondent, a panel is entitled to conclude that there is no bona fide (or fair) use of a domain name and that, therefore, the respondent lacks rights or legitimate interests.
The Panel therefore finds that the Respondent does not have any rights or legitimate interests in the Domain Name within the meaning of article 2.1(b) of the Regulations.
Therefore the second requirement is met.
C. Registered or Used in Bad Faith
As noted, the Panel finds it highly unlikely that the Respondent registered the Domain Name, which differs from the Trademark only by the addition of the suffix “sex” and the omission of the last character of the syllable of the Trademark, without specific knowledge of the Trademark.
The Panel further finds that the Respondent is using the Domain Name in bad faith, by attracting Internet users to a sex-related website, through the likelihood of confusion with the Trademark as to the source, sponsorship, affiliation or endorsement of the website. Also, as referred to above, the Panel notes that the Domain Name, which resolves to a (commercial) sex dating website, is being used for commercial gain.
The Panel therefore finds that the requirement of registration or use in bad faith of the Domain Name pursuant to article 2.1(c) of the Regulations has been met.
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name <sexhyve.nl> be transferred to the Complainant.
Richard van Oerle
Dated: November 7, 2012
1 The mechanism of the Regulations is comparable to the Uniform Domain Name Dispute Resolution Policy (UDRP), see Technische Unie B.V. and Otra Information Services v. Technology Services Ltd., WIPO Case No. DNL2008-0002.