WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Spido B.V. v. Privacy Services Inc.

Case No. DNL2021-0053

1. The Parties

The Complainant is Spido B.V., Netherlands, represented by Windt Le Grand Leeuwenburgh, Netherlands.

The Respondent is Privacy Services Inc., Belize.

2. The Domain Name and Registrar

The disputed domain name <spidorotterdam.nl> (the “Disputed Domain Name”) is registered with SIDN through Sombrero.de GmbH.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2021. On the same day, the Center transmitted by email to SIDN a request for registrar verification in connection with the Disputed Domain Name. On October 8, 2021, 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 satisfies 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 October 15, 2021. In accordance with the Regulations, article 7.1, the due date for Response was November 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 17, 2021.

The Center appointed Thijs van Aerde as the panelist in this matter on December 8, 2021. 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 Complainant is a Rotterdam-based provider of harbor sightseeing tours and cruises, which according to Complainant was established in 1919 and now is a well-known tourist boat operator, listed on the official tourist website of the Netherlands for providing “iconic” sightseeing tours in and around Rotterdam. The Complainant makes use of the domain name <spido.nl>, which it has registered since March 4, 1997.

The Complainant is a licensee of SPIDO trademarks. By way of evidence, the Complainant has submitted a license agreement dated June 29, 2020, between the Complainant and 4KB Investments B.V. as the licensor (the “License Agreement”). According to article 2.1 of the License Agreement, as translated from its Dutch text, the Complainant is inter alia granted the right “[…] to use the Spido Trademarks for the goods and services for which the marks are registered and the right to enforce the marks in full in and out of court against Third Parties in the event of any (possible) infringement thereof including by bringing actions on behalf of the Licensor, in and out of court against (possible) infringers to stop the trademark infringement […]”.

The Complainant bases its complaint on the following trademark registrations:

- Benelux trademark SPIDO, filed on May 2, 2001, registered on April 1, 2002, registration no. 699620; and

- International trademark SPIDO (designating the Benelux), registered on March 29, 2016, registration no. 1298901;

hereinafter jointly referred to as the “Trademarks”.

The Complainant also has rights in the trade names “Spido” and “Spido Rotterdam”, and the Panel’s considerations shall be based mutatis mutandis on such trade name rights.

According to the information received from SIDN, the Respondent registered the Disputed Domain Name on February 2, 2018. The Disputed Domain Name dynamically redirects Internet users to a seemingly arbitrary wide range of third-party websites, including a website offering for sale large portable tents.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Disputed Domain Name is confusingly similar to the Trademarks in which the Complainant has rights by virtue of the License Agreement. According to the Complainant, it has actively used the Trademarks for its services, among others, the organization of daily passenger trips through the port of Rotterdam and surroundings. The Complainant emphasizes that the mere addition of the term “Rotterdam” to the Trademarks does not detract from the confusing similarity of the Disputed Domain Name to the Trademarks.

The Complainant also applies this reasoning to its trade name “Spido”, and further notes that the Disputed Domain Name is identical to its trade name “Spido Rotterdam”.

The Complainant asserts that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Respondent is not generally known as an individual, company, or organization under the Disputed Domain Name, nor does the Respondent hold any trademark, trade name, or other right relating to the terms “Spido” or “Spido Rotterdam”.

The Complainant asserts that the facts and circumstances of this case compel no other conclusion than that the Disputed Domain Name has been registered primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant for a price greater than the registration fee and/or to disrupt the Complainant’s business by (i) preventing the Complainant from using a domain name identical to the trademark rights it is licensed to use and to its trade names and (ii) unfairly riding on the reputation of the trademark rights, trade names, services and undertaking of the Complainant.

B. Respondent

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 Disputed 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 or legitimate interests in the Disputed Domain Name; and,

c. the Disputed 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(I) of the Regulations, the Complainant must establish rights in a trademark or trade name protected under Dutch law. While the Complainant is not the holder of the Trademarks on which it bases the Complaint, the Panel finds that the Complainant has provided sufficient evidence that it is a licensee of the Trademarks and is authorized by the holder to bring the Complaint. Following the rights conveyed in the License Agreement, the Panel is of the opinion that the Complainant has established sufficient rights for the purposes of these proceedings, in accordance with article 2.1(I) of the Regulations and section 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).¹

The Disputed Domain Name is confusingly similar to the Trademarks as it incorporates the Trademarks entirely in addition to the geographical term “rotterdam”. The Panel finds that the Trademarks are sufficiently recognizable within the Disputed Domain Name, see section 1.8 WIPO Overview 3.0.

The country code Top-Level Domain “.nl” may be disregarded when assessing the confusing similarity between the domain name on the one hand, and the relevant trademark on the other hand, see Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008.

The Panel finds that the Complainant has established the first element of article 2.1 of the Regulations.

B. Rights or Legitimate Interests

The onus of establishing the Respondent’s lack of rights to or legitimate interests in the Disputed Domain Name falls on the Complainant, see article 2.1(b) of the Regulations. Given the difficulties for a complainant in proving a negative as relevant information concerning (lack of) rights to or legitimate interests is in the possession of a respondent, it is generally sufficient for a complainant to raise a prima facie case against the respondent under this element. Once a prima facie case has been made, it is well established under the Regulations that the burden of production to rebut the Complainant’s case shifts to the Respondent. See, Auto 5 v. E. Shiripour, WIPO Case No. DNL2008-0027, and WIPO Overview 3.0, section 2.1.

The Respondent has not replied to the Complainant’s contentions, and there is no evidence on record or reason to suggest that the Respondent is commonly known by the Disputed Domain Name as meant in article 3.1(b) of the Regulations. Further, there is no indication before the Panel that the Respondent possesses any trademark, trade name, or other right relating to the terms “Spido” or “Spido Rotterdam”.

This is further substantiated by the use of the Disputed Domain Name. The Disputed Domain Name randomly redirects Internet users to various third-party websites under a process known as dynamic redirection. This use cannot be considered a legitimate noncommercial use of the Disputed Domain Name under article 3.1(c) of the Regulations, nor does it amount to a bona fide offering of goods and services under article 3.1(a) of the Regulations. To the contrary, the use of the Disputed Domain Name by the Respondent misleads and diverts Internet users seeking the Complainant’s services.

The Panel finds that the Respondent does not have rights to or legitimate interests in the Disputed Domain Name. The Complainant has thus satisfied the second limb of article 2.1 of the Regulations.

C. Registered or Used in Bad Faith

As set out in 6B above, the use of the Disputed Domain Name demonstrates the Respondent’s intention to confuse Internet users seeking the Complainant’s services, essentially disrupting the Complainant’s activities (see, article 3.2(c) of the Regulations). This is further supported by the Respondent’s reference in the Disputed Domain Name to the Dutch city of Rotterdam, the Complainant’s primary place of business.

The Complainant has been using the identifier “Spido” for over 20 years and has been in operation for much longer still. Given the Respondent’s reference to the city of Rotterdam in the Disputed Domain Name, combined with the Complainant’s particular renown in that city and indeed the Netherlands, the Panel considers it highly likely that the Respondent was aware of the Complainant and the Trademarks when it registered the Disputed Domain Name.

Consequently, the Panel finds that the Respondent registered and used the Disputed Domain Name in bad faith. The requirement of article 2.1(c) of the Regulations has thus been met.

7. Decision

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

Thijs van Aerde
Panelist
Date: December 22, 2021

¹ In view of the fact that the Regulations are substantially similar to the Uniform Domain Name Dispute Resolution Policy (“UDRP”), it is well established that both cases decided under the Regulations and cases decided under the UDRP, and therefore WIPO Overview 3.0, may be relevant to the determination of this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V., WIPO Case No. DNL2008-0050).