WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Audatex (Schweiz) GmbH v. Plant Holding GmbH
Case No. DNL2016-0007
1. The Parties
The Complainant is Audatex (Schweiz) GmbH of Zurich, Switzerland, internally represented.
The Respondent is Plant Holding GmbH of Zurich, Switzerland, internally represented.
2. The Domain Name and Registrar
The disputed domain name <audatex.nl> (the "Domain Name") is registered with SIDN through Eli Domains.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 8, 2016. On March 8, 2016, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On March 9, 2016, 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 March 15, 2016. In accordance with the Regulations, article 7.1, the due date for Response was April 4, 2016. The Response was filed with the Center on April 5, 2016.
On April 12, 2016 SIDN commenced the mediation process. On May 5, 2016, SIDN informed parties that the dispute had not been solved in the mediation process.
On May 11, 2016, the Complainant submitted a Supplemental Filing, copied to the Respondent, to which the Respondent did not reply.
The Center appointed Willem Hoorneman as the panelist in this matter on May 23, 2016. 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
Audatex Luxembourg S.à.r.l., a subsidiary of the Complainant, is the owner of numerous AUDATEX trademark registrations, covering a variety of goods and services related to the insurance claim market, that are valid in (inter alia) the Netherlands (the "AUDATEX trademarks"). A number of these trademarks, INT451965, BLX154555 and BLX519202, predate the Domain Name.
The Complainant has registered a large number of domain names containing the trademark AUDATEX. A number of these domain names, inter alia <audatex.com>, have been used and registered by the Complainant before registration of the Domain Name.
The first date of the registration of the Domain Name is July 3, 1998. The Domain Name was registered by the Respondent on August 19, 2013. The Domain Name resolves to a "parking page" containing automatically generated links to third-party websites.
5. Parties' Contentions
The Complainant contends that the Domain Name, being (virtually) identical to the AUDATEX trademarks, is confusingly similar to the AUDATEX trademarks. The Complainant also refers to its prior use of the AUDATEX name through registration and use of various domain names, including <audatex.com>.
Furthermore, the Complainant states that the Respondent has no rights or legitimate interests in the Domain Name. The Respondent has no relation to the Complainant or its group, nor has the Respondent been otherwise allowed by the Complainant to make any use of the AUDATEX trademarks. The offer for sale of the Domain Name by the Respondent does not qualify as legitimate noncommercial or fair use.
The Complainant contends that the Respondent has registered and is using the Domain Name in bad faith as (1) the Respondent must have known of the existence of the Complainant as well as the AUDATEX trademarks when registering the Domain Name and (2) the Respondent uses a parking page and offers the Domain Name for sale and (3) there is no legitimate offer of goods and services by the Respondent.
The Complainant's later Supplemental Filing addressed the Respondent's contention stated in the third paragraph below in Section 5.B.
The Respondent argues that it did not register the Domain Name in bad faith, as it was unaware of the Complainant and the Domain Name was assigned to it by a former Plant entity, which had registered the Domain Name in 1998 for one of its clients.
The sales price requested by the Respondent for the Domain Name is a fair amount as it is based on the administrative fees incurred by the Respondent to date.
Furthermore, the Respondent contends that there is no bad faith registration because the Complainant cannot invoke valid older rights, as any existing prior rights are registered by other companies and/or have never been used in the Netherlands. The Respondent did therefore have no malicious intent when registering or holding the Domain Name.
Finally, the Respondent alleges that there is a case for Reverse Domain Name Hijacking.
6. Discussion and Findings
Pursuant to article 2.1 of the Regulations, the Complainant's request to transfer the 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 by means of 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.
The Respondent may demonstrate such rights or legitimate interests on its part, inter alia, through the circumstances mentioned in article 3.1 of the Regulations. The Complainant may provide evidence that the Domain Name has been registered or is being used in bad faith, inter alia, through the circumstances mentioned in article 3.2 of the Regulations.
As far as the Supplemental Filing of the Complainant is concerned, the following applies. The Complainant will be aware there is no absolute right under the Regulations to file supplemental filings. For the consensus view of UDRP panels on supplemental filings, the Panel refers to paragraph 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")1. In The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447, this Panel summarized the position regarding supplemental filings in the following terms:
"Under the Policy and the Rules, parties have no right to submit additional arguments or evidence. However, the Panel may, in its sole discretion, request further statements or documents from the parties under paragraph 10 of the Rules; and a party's request may be regarded as an invitation to the Panel to exercise this discretion. The principles which should be applied in exercising this discretion have been considered in numerous cases decided under the Policy and Rules […]. The principles adopted and confirmed in these decisions are that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimise prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself".
The Supplemental Filing submitted by the Complainant contains evidence regarding the use of the AUDATEX trademarks in the Netherlands as a response to the representations of the Respondent as to non-use of these trademarks in the Netherlands. Although non-use may be a ground for seeking formal invalidation of a trademark, absent such a finding of invalidity the Panel appointed under the Regulations must assume the validity of the trademark of which the registration has been evidenced. The Panel therefore need not consider evidence of use submitted by the Complainant in its Supplemental Filing.
A. Identical or Confusingly Similar
Pursuant to article 2.1(a) of the Regulations, the Complainant must first establish rights in a trademark or (trade) name protected under Dutch law and secondly establish that the Domain Name is identical or confusingly similar to such trademark or tradename in which the Complainant has rights.
As a preliminary matter, although the AUDATEX trademarks are owned by a subsidiary of the Complainant, the Panel finds – in accordance with the WIPO Overview 2.0 paragraph 1.8 – that the Complainant has rights in these trademarks for the purpose of filing the Complaint under the Regulations.
It results from the evidence provided that a subsidiary of the Complainant owns various trademark registrations containing the textual element "audatex" in isolation or combined with other elements. Reference is made, for instance, to International Trademark registration No. 451965 for AUDATEX (word mark), registered on April 24, 1980 with the Benelux as designated jurisdiction, the Benelux Trade Mark registration No. 154555 for AUDATEX (word mark), registered on May 1, 1988 and the Benelux Trade Mark registration No. 519202 for AUDATEX (word mark), registered on March 1, 1993.
It is established case law that the country code Top-Level Domain ("ccTLD") ".nl" may be disregarded in assessing the similarity between the domain name on the one hand, and the relevant trademark on the other hand (see: Taylor Made Golf Company, Inc. v. Lotom Group S.A., WIPO Case No. DNL2010-0067; Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).
The Domain Name is confusingly similar to the Complainant's AUDATEX trademarks, because the Domain Name incorporates the AUDATEX trademarks in its entirety.
Therefore, the Panel finds that the Domain Name is confusingly similar to the Complainant's trademark within the meaning of the Regulations. The Complainant has thus established the first element of article 2.1 of the Regulations.
B. Rights or Legitimate Interests
While the overall burden of proof rests with the complainant, previous panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied the second element of article 2.1 of the Regulations.
The Panel notes the following circumstances in relation to rights or legitimate interests of the Respondent in the Domain Name: (i) there is no evidence that the Respondent has any proprietary or contractual rights in any registered trademark or tradename corresponding to the Domain Name; (ii) the Respondent is not authorized or licensed by the Complainant to use the AUDATEX trademarks or to register and use the Domain Name; (iii) the Respondent has not been commonly known by the Domain Name or AUDATEX name.
Furthermore, there is no evidence that before any notice of the dispute to the Respondent, the Respondent was using the Domain Name for a legitimate offer of goods and services. According to the documents submitted by the Complainant the Domain Name linked, at the time of filing of the Complaint, to a website used as a "parking page", containing (probably automatically generated) links to third-party websites – pay-per-click links. Revenue is likely earned as a result of this arrangement. The website also indicates that the Domain Name is available for sale with a starting bid of EUR 1,250.
By using the Domain Name for hosting a website with a parking page containing links that are based on trademark value and by offering the Domain Name for sale, the Panel finds that the Respondent is not making a legitimate noncommercial use of the Domain Name.
Based on the foregoing, the Panel is of the opinion that the Respondent has no rights to or legitimate interests in the Domain Name under the Regulations.
C. Registered or Used in Bad Faith
Article 3.2 of the Regulations provides that the following circumstances are deemed to be evidence that a respondent has registered and is using a domain name in bad faith:
(a) the domain name has been registered or acquired primarily for the purpose of selling, renting or transferring it to the complainant or to the complainant's competitors for valuable consideration in excess of the cost of registration;
(b) the domain name has been registered in order to prevent the complainant from using it;
(c) the domain name has been registered primarily for the purpose of disrupting the complainant's activities;
(d) the domain name has been or is being used for commercial gain, by attracting Internet users to a website of the registrant or other online location through the likelihood of confusion which may arise with the trademark, trade name, personal name, name of a Dutch public legal entity or name of an association or foundation registered in the Netherlands as to, for example, the source, sponsorship, affiliation or endorsement of the website of the registrant or other online location(s) or of products or services on the domain registrant's website or another online location.
The AUDATEX trademarks mentioned above under Section 6.A, significantly predate the date of the current registration of the Domain Name by the Respondent. These trademark registrations even predate the first date of registration of the Domain Name (by a third party). Furthermore, as mentioned above, the Complainant has registered and used a number of domain names containing the trademark AUDATEX, inter alia <audatex.com>; which also predate the Domain Name. The Respondent is therefore most likely to have known of the Complainant, its products, the AUDATEX trademarks and/or the mentioned AUDATEX domain names prior to registering the Domain Name.
Furthermore, the Domain Name was registered and used for a website containing a parking page, such use of a third party's trademark reputation constitutes bad faith. It appears that the Respondent has not conducted any legitimate business activity under a trademark or tradename corresponding to the Domain Name. Moreover, the Domain Name is explicitly offered for sale by the Respondent the website.
Based on the record, the Panel finds on balance that the Respondent must have known the Complainant's AUDATEX brand and that the Complainant presented evidence that the Respondent is in violation of article 3.2(a) and (d) of the Regulations. These findings, together with the finding that the Respondent has no rights to or legitimate interests in the Domain Name, lead the Panel to the conclusion that the Domain Name was registered and is being used by the Respondent in bad faith.
7. Reverse Domain Name Hijacking
The Respondent has asked the Panel to make a finding of Reverse Domain Name Hijacking by the Complainant. On this matter the Panel refers to Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489, which states:
"Rule 1 defines reverse domain name hijacking as 'using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.' See also Rule 15(e). To prevail on such a claim, a Respondent must show that the Complainant knew of the Respondent's unassailable right or legitimate interest in the Disputed Domain Name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith. See, e.g., Sydney Opera House Trust v. Trilynx Pty. Ltd. ( WIPO Case No. D2000-1224) and Goldline International, Inc. v. Gold Line ( WIPO Case No. D2000-1151)."
In light of the Panel's findings above, the request for a finding of Reverse Domain Name Hijacking is denied.
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name, <audatex.nl>, be transferred to the Complainant.
Date: June 15, 2016
1 While the Complaint is brought under the Regulations, and not the Uniform Domain Name Dispute Resolution Policy ("UDRP), given the similarities between the two, the Panel, consistent with earlier .nl findings, considers UDRP precedent relevant to the current proceedings, and will refer to it and the WIPO Overview 2.0 where applicable.