About Intellectual Property IP Training IP Outreach IP for… IP and... IP in... Patent & Technology Information Trademark Information Industrial Design Information Geographical Indication Information Plant Variety Information (UPOV) IP Laws, Treaties & Judgements IP Resources IP Reports Patent Protection Trademark Protection Industrial Design Protection Geographical Indication Protection Plant Variety Protection (UPOV) IP Dispute Resolution IP Office Business Solutions Paying for IP Services Negotiation & Decision-Making Development Cooperation Innovation Support Public-Private Partnerships The Organization Working with WIPO Accountability Patents Trademarks Industrial Designs Geographical Indications Copyright Trade Secrets WIPO Academy Workshops & Seminars World IP Day WIPO Magazine Raising Awareness Case Studies & Success Stories IP News WIPO Awards Business Universities Indigenous Peoples Judiciaries Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions Economics Gender Equality Global Health Climate Change Competition Policy Sustainable Development Goals Enforcement Frontier Technologies Mobile Applications Sports Tourism PATENTSCOPE Patent Analytics International Patent Classification ARDI – Research for Innovation ASPI – Specialized Patent Information Global Brand Database Madrid Monitor Article 6ter Express Database Nice Classification Vienna Classification Global Design Database International Designs Bulletin Hague Express Database Locarno Classification Lisbon Express Database Global Brand Database for GIs PLUTO Plant Variety Database GENIE Database WIPO-Administered Treaties WIPO Lex - IP Laws, Treaties & Judgments WIPO Standards IP Statistics WIPO Pearl (Terminology) WIPO Publications Country IP Profiles WIPO Knowledge Center WIPO Technology Trends Global Innovation Index World Intellectual Property Report PCT – The International Patent System ePCT Budapest – The International Microorganism Deposit System Madrid – The International Trademark System eMadrid Article 6ter (armorial bearings, flags, state emblems) Hague – The International Design System eHague Lisbon – The International System of Appellations of Origin and Geographical Indications eLisbon UPOV PRISMA Mediation Arbitration Expert Determination Domain Name Disputes Centralized Access to Search and Examination (CASE) Digital Access Service (DAS) WIPO Pay Current Account at WIPO WIPO Assemblies Standing Committees Calendar of Meetings WIPO Official Documents Development Agenda Technical Assistance IP Training Institutions COVID-19 Support National IP Strategies Policy & Legislative Advice Cooperation Hub Technology and Innovation Support Centers (TISC) Technology Transfer Inventor Assistance Program WIPO GREEN WIPO's Pat-INFORMED Accessible Books Consortium WIPO for Creators WIPO ALERT Member States Observers Director General Activities by Unit External Offices Job Vacancies Procurement Results & Budget Financial Reporting Oversight

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Juha Koski - Marcandi Ltd. v. GlobalStars N.V.

Case No. DNL2013-0041

1. The Parties

Complainant is Juha Koski - Marcandi Ltd. of London, United Kingdom of Great Britain and Northern Ireland, internally represented.

Respondent is GlobalStars N.V., Curacao, Kingdom of the Netherlands.

2. The Domain Name and Registrar

The disputed domain name <madbid.nl> (hereafter: the “Domain Name”) is registered with SIDN through TransIP BV.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2013. On September 6, 2013, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On September 9, 2013, SIDN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on September 25, 2013. The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on September 27, 2013. In accordance with the Regulations, article 7.1, the due date for Response was October 17, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 18, 2013.

The Center appointed Dinant T.L. Oosterbaan as the panelist in this matter on November 27, 2013. 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

According to the information submitted by Complainant, Complainant holds a Community trademark for MADBID with number 007061989 and a registration date of July 15, 2008. The trademark has been issued prior to the registration of the Domain Name by Respondent. Complainant operates its main website under “www.madbid.com”, where the trademark MADBID is being used by Complainant for certain auction services.

The Domain Name <madbid.nl> was registered on March 25, 2012. The Domain Name does not appear to resolve to an active website.

5. Parties’ Contentions

A. Complainant

Complainant submits that the Domain Name is identical to the MADBID trademark as it contains the MADBID trademark in its entirety.

According to Complainant, in view of Complainant’s trademark, Respondent has no rights to or legitimate interests in respect of the Domain Name. According to the evidence submitted by Complainant, Respondent claimed to have reserved the Domain Name for an erotic/auction website. Complainant contends that Respondent registered the Domain Name without permission from Complainant for commercial gain and with the purpose of benefiting from the reputation of the trademark of Complainant. Complainant submits that Respondent has registered the Domain Name in bad faith as Respondent intended to sell the Domain Name to a third party or to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Based on article 2.1 of the Regulations, a claim to transfer a domain name must meet three cumulative conditions:

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) under II of the Regulations; and

b. the respondent 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.

A. Identical or Confusingly Similar

Pursuant to article 2.1(a) of the Regulations, Complainant must establish that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights.

Complainant has established that it is the owner of a Community trademark registration for MADBID. The Domain Name <madbid.nl> incorporates the entirety of the MADBID trademark. The top level domain “.nl” may be disregarded for purposes of article 2.1(a) of the Regulations.

The Panel finds that the Domain Name is identical to Complainant’s MADBID trademark.

B. Rights or Legitimate Interests

In the Panel’s opinion, Complainant has made a prima facie case that Respondent lacks rights to or legitimate interests in the Domain Name. There is no evidence that Respondent is making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark of Complainant, or that Respondent uses, or made demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. Furthermore, the Panel could not find any indication in the record that Respondent is commonly known by the Domain Name or that it has acquired trademark rights corresponding to the Domain Name.

Under these circumstances the Panel finds that Respondent has no rights to or legitimate interests in the Domain Name.

C. Registered or Used in Bad Faith

The Panel finds that the Domain Name has been registered in bad faith. The MADBID trademark of Complainant was first registered on July 15, 2008. This date is well before the registration date of the Domain Name by Respondent. Considering also the distinctiveness of Complainant’s mark and the fact that Respondent also appears to be an operator of auction and gambling websites, the Panel finds it highly likely that Respondent was aware of Complainant’s trademark when it registered the Domain Name.

Furthermore, the Panel accepts Complainant’s submission that bad faith registration of the Domain Name is established by the fact that Respondent offered the Domain Name for sale to Complainant indicating that Respondent had already invested more than EUR 25,000 in the Domain Name and stating that it would sell the Domain name to a third party unless Complainant made an attractive offer. On this basis, the Panel finds that the Domain Name has been registered primarily for the purpose of selling it to Complainant or to a competitor of Complainant for valuable consideration in excess of the cost of registration, which constitutes registration in bad faith pursuant to article 3.2(a) of the Regulations.

Accordingly, the Panel finds that Complainant has established the third criterion of article 2.1 of the Regulations.

7. Decision

For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name <madbid.nl> be transferred to Complainant.

Dinant T.L. Oosterbaan
Panelist
Date: December 3, 2013

https://www3.wipo.int/contact/en/area.jsp?area=arbitration https://www.wipo.int/pressroom/en/ https://www.wipo.int/tools/en/disclaim.html https://www.wipo.int/en/web/privacy-policy/ https://www.wipo.int/en/web/accessibility/ https://www.wipo.int/tools/en/sitemap.html https://www3.wipo.int/newsletters/en/ https://www.wipo.int/podcasts/en/ https://www.wipo.int/news/en/