WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Avtex Limited v. Vadac b.v.
Case No. DNL2017-0030
1. The Parties
The Complainant is Avtex Limited of Cardiff, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Hoogenraad & Haak, advertising + IP advocaten, the Netherlands.
The Respondent is Vadac b.v. of Deventer, the Netherlands.
2. The Domain Name and Registrar
The disputed domain name <avtex.nl> (the “Domain Name”) is registered with SIDN through Tiscom Hosting B.V.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2017. On May 22, 2017, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On May 23, 2017, SIDN 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on May 26, 2017. The Center verified that the Complaint 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 the Respondent of the Complaint, and the proceedings commenced on May 29, 2017. In accordance with the Regulations, article 7.1, the due date for Response was June 18, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 19, 2017.
The Center appointed Willem J.H. Leppink as the panelist in this matter on June 23, 2017. 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 following facts are undisputed:
The Complainant is a company based in the United Kingdom manufacturing electronic and associated products aimed at the so-called mobile leisure market, e.g. for motorhomes and caravans. It has been selling its products all over Europe, including the Netherlands, for more than 25 years.
The Complainant uses the AVTEX brand throughout the European Union, including the Netherlands, as the prime branding for its products. It is the owner of inter alia the following trademark registration with relevance for the Netherlands: European Union (“EU”) Trademark AVTEX (word mark), registration number 010154433, applied for on July 27, 2011 and registered on December 26, 2011 for goods in classes 9, 16 and 20 (the “Trademark”).
The Domain Name was registered on June 27, 2013. The Domain Name resolves to the Respondent’s own website: “www.vadac.com”, where it offers for sale products in the same field as the Complainant’s, inter alia motorhomes, caravans and accessories such as aerial satellite antennas (the “Website”).
5. Parties’ Contentions
Insofar as relevant, the Complainant contends the following.
The Domain Name includes the Trademark in its entirety. For the purpose of the Regulations the Domain Name is identical to the Trademark.
The Complainant has exclusive rights in the Trademark. It is undisputed that the Complainant has not granted any license or otherwise authorized the Respondent to use the Trademark or to obtain any domain name incorporating the Trademark. The Respondent does not own any trademark rights in the mark AVTEX. The Respondent is not commonly known by the Domain Name, but under the trade name “Vadac” and is not connected to the Complainant’s business. The Respondent is a supplier of technical accessories for caravans, motorhomes and boats. The Domain Name is only being used to direct the Internet user to the Website. As a result, the Respondent is making commercial use of the Domain Name with the intent for commercial gain to misleadingly divert consumers.
None of the criteria of article 3.1 of the Regulations have been met in order for the Respondent to demonstrate that it has a right to or legitimate interests in the Domain Name. The Respondent apparently had no other reason for registering the Domain Name than deliberately suggesting a connection with the Complainant.
The Respondent engages in the same activities as the Complainant, namely offering products in the same category, i.e., supplying technical accessories for the mobile leisure market relating to motorhomes and caravans. At the time of registration of the Domain Name, the Complainant was already selling its products in Europe for over 25 years, including in the Netherlands. The AVTEX brand is well-known internationally and registered also in relation to the Netherlands, the home country of the Respondent. That fact, combined with the Respondent’s identical use of the Trademark in its entirety suggests that the Respondent likely knew of the Trademark when it registered the Domain Name. This suggests bad faith.
That the Domain Name was registered in bad faith is even more evident from the fact that the Respondent has put the Domain Name up for sale on the host website “www.sedo.com” for EUR 2,500.
Not only has the Respondent registered the Domain Name in bad faith, but its use must be considered in bad faith as well. The Domain Name is being used to gain commercial advantage by attracting Internet users to the Website through the likelihood of confusion which arises with the Trademark. An Internet user typing <avtex.nl>, is directed to the Website, which offers products in the same category as those offered by the Complainant. Since the Respondent offers similar products as the Complainant, Internet users will assume there is a connection between both companies. The Domain Name is obviously being used to attract Internet users who are looking for (information about) the Complainant and its products. The Domain Name, which is identical to the Trademark, is being used to generate traffic to the Website. Considering the abovementioned facts, the Respondent uses the Domain Name in bad faith.
The Complainant has also filed a complaint against the Respondent regarding a “.be” domain name. The facts of that complaint are identical to those of the present Complaint.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to article 2.1 of the Regulations the Complainant must prove each of the following three elements:
a. the Domain Name is identical or confusingly similar to:
I) a trademark or trade name protected under Dutch law in which the Complainant has rights; or
II) a personal name registered in the General Municipal Register (Gemeentelijke Basisadministratie) of a municipality in the Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in the Netherlands under which the Complainant undertakes public activities on a permanent basis; 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.
As the Respondent has not filed a response, the Panel shall rule on the basis of the Complaint. In accordance with article 10.3 of the Regulations, the Complaint shall in that event be granted, unless the Panel considers it to be without basis in law or in fact.
A. Identical or Confusingly Similar
Pursuant to article 2.1(a) under I of the Regulations, the Complainant must establish that the Domain Name is identical or confusingly similar to a trademark or trade name in which the Complainant has rights.
The Complainant has shown that it has rights in the Trademark.
The Domain Name incorporates the Trademark in its entirety. Previous panels have found that a domain name is confusingly similar to a complainant’s trademark where the domain name incorporates the trademark in its entirety. It is standard .nl jurisprudence that the country code 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 the Trademark for purposes of the Regulations.
The Complainant has established the first element of article 2.1 of the Regulations.
B. Rights or Legitimate Interests
Consistent with .nl jurisprudence, the Complainant must demonstrate prima facie that the Respondent has no rights to or legitimate interests in the Domain Name. If the Complainant succeeds in making out this prima facie case, the burden of production shifts to the Respondent, who will then have to come forward with appropriate allegations or evidence demonstrating a right or legitimate interest in the Domain Name. The Respondent may demonstrate such rights or legitimate interests on its part inter alia through the following circumstances listed in article 3.1 of the Regulations:
a. before having any notice of the dispute, the [Respondent] made demonstrable preparations to use the Domain Name (or a name corresponding to the domain name) in connection with a bona fide offering of goods or services;
b. the [Respondent] as an individual, business or other organization is commonly known by the Domain Name;
c. the [Respondent] is making a legitimate noncommercial use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish or otherwise damage the relevant trademark, trade name, personal name, name of a Dutch public legal entity or name of an association or foundation located in the Netherlands.
The Complainant alleges that the Respondent has no rights to or legitimate interests in the Domain Name for the reasons listed above under Section 5.A. The Panel is satisfied that the Complainant has made out a prima facie case that the Respondent lacks rights to or legitimate interests in the Domain Name, and the burden of production therefore shifts to the Respondent.
The Panel notes that the Respondent does not own any trademark rights in the AVTEX mark and merely uses the Domain Name to misleadingly divert Internet users to its own website; the Respondent redirects potential consumers looking for Complainant’s products to a website on which the Respondent in fact offers competing products. Using a competitor’s trademark for the redirection of Internet traffic to sell competing products, does not constitute a right or a legitimate interest under the Regulations. 1
Furthermore, consumer confusion is all the more likely as the Domain Name solely and entirely includes the Trademark. There is no suggestion that the Respondent has ever been known by the Domain Name. The Respondent has chosen not to respond to the Complainant or to take any steps to counter the prima facie case established by the Complainant.
The Panel finds that the Respondent lacks rights to or legitimate interests in the Domain Name.
The Complainant has thus established the second element of article 2.1 of the Regulations.
C. Registered or Used in Bad Faith
In light of its considerations under Section 6.B, the Panel finds that the Domain Name has been registered and used in bad faith. The Respondent has used the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its Website, by creating a likelihood of confusion which may arise with the Trademark as to the source, sponsorship and endorsement of the Website. This constitutes evidence of bad faith registration or use in accordance with article 3.2(d) of the Regulations.
The Panel finds that the Complainant has also established the third element 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 <avtex.nl> is transferred to the Complainant.
Willem J.H. Leppink
Date: June 26, 2017
1 If and to the extent the Respondent could be viewed as a genuine reseller, the Panel notes that the Respondent fails to meet a number of the so-called Oki Data requirements. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.