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
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.
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.
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
Date: December 3, 2013