WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Koninklijke KPN N.V. v. Privacy Services Inc.

Case No. DNL2021-0064

1. The Parties

The Complainant is Koninklijke KPN N.V., Netherlands, internally represented.

The Respondent is Privacy Services Inc., Belize.

2. The Domain Name and Registrar

The disputed domain names <mijkpn.nl> and <telfirt.nl> (together the “Disputed Domain Names”) are registered with SIDN through Sombrero.de GmbH.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2021. On November 26, 2021, the Center transmitted by email to SIDN a request for registrar verification in connection with the Disputed Domain Names. On November 29, 2021, SIDN transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 3, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. On December 3, 2021, the Center transmitted an email to the Parties regarding the language of the proceedings. The Complainant filed an amended Complaint on December 3, 2021. The Center verified that the Complaint as amended 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 December 6, 2021. In accordance with the Regulations, article 7.1, the due date for Response was December 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2022.

The Center appointed Moïra Truijens as the panelist in this matter on January 27, 2022. 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 one of the largest telecom and ICT service providers in the Netherlands and has been providing these services since 1989 under the name KPN.

Millions of Dutch people (in 2020, the Complainant had a customer base of over 5 million people) receive telecom services from KPN, including in the form of Internet and fiber optics, television, mobile telephony, fixed telephony, telecom accessories, IT workplace services, and the like. All of its customers, both private and business, have access to their subscription data via “MijnKPN” (which can be translated as “MyKPN”).

Telfort is a subsidiary of KPN and had an independent telephony network until 2019. Since 2019 for consumers and 2020 for businesses, Telfort no longer operates independently, but under the flag of its parent company KPN. After migration to the KPN platform, many existing Telfort customers – both consumers and businesses – still use email addresses that include “@telfort.nl”.

The Complainant is the owner of trademark registrations for KPN (the “KPN Marks”) in various jurisdictions, including the following:

- Benelux word mark KPN, registered under number 0529431, registered on November 1, 1993, covering goods in classes 9, 12, 16, 35, and 36;

- European Union word mark KPN, registered under number 005310099, registered on May 29, 2008, covering goods in classes 9, 35, 37, 38, 41, and 42;

- Benelux figurative mark KPN and logo, registered under number 0798741, registered on June 7, 2006, covering goods in classes 9, 35, 38, 41, and 42;

- International figurative mark KPN and logo, registered under number 911242, registered on September 11, 2009, covering goods in classes 9, 35, 38, 41, and 42, and designating various jurisdictions including the European Union.

In addition, the Complainant is the holder of the domain name <mijnkpn.nl>, registered since June 25, 2004.

The Complainant further is the owner of trademark registrations for TELFORT (the “TELFORT Marks”) in various jurisdictions including the following registrations:

- Benelux word mark TELFORT, registered under number 603567, registered on September 1, 1997, covering goods in classes 9, 37, 38, and 42;

- Benelux word mark TELFORT, registered under number 1390782, registered on May 11, 2019, covering goods in classes 9, 35, 37, 38, and 42;

- Benelux figurative mark for TELFORT and logo, registered under number 1390783, registered on May 11, 2019, covering goods in classes 9, 35, 37, 38, and 42;

- European Union word mark TELFORT, registered under number 004516597, registered on April 10, 2007, covering goods in classes 9, 35, 37, 38, and 42.

The Complainant also is the holder of the domain name <telfort.nl>, registered since September 25, 1996.

The KNP Marks and the TELFORT Marks will together be referred to as the “Trademarks”.

SIDN informed the Center that <telfirt.nl> was first registered on July 27, 2010, and the date of its current registration was July 30, 2018, by change of registrant; and that <mijkpn.nl> was first registered on August 27, 2010, and that the date of its current registration is July 30, 2018, by change of registrant.

At the time the Complaint was filed, the Disputed Domain Names were apparently dynamically redirecting to various third-party websites, as well as showing error messages. At the time of the decision, the website to which the Disputed Domain Name <mijkpn.nl> resolved, showed a menu for customer services and offers of mobile telephone subscriptions with high discounts, and the website to which the Disputed Domain Name <telfirt.nl> resolved showed a page with links to “Unlocked Cell Phones, Cell Phone Accessories, Buy Cell Phones, Blackberry Phones, 10 Best Android Phones, 3g Phones, Phone Systems”.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions may be summarized as follows.

The Complainant asserts that the Disputed Domain Names are confusingly similar to the Trademarks.

The Disputed Domain Name <mijkpn.nl> consists of the KPN Marks in their entirety, plus the prefix “mij”, (which in Dutch means “me”) and ending with the country code Top-Level Domain (“ccTLD”) “.nl” that is relevant for the Netherlands. The prefix “mij” is descriptive and adds nothing further to the KPN Marks. The chances that the average consumer will be confused are therefore high, especially since it is a “.nl” domain name and KPN is well-known in the Netherlands. The average consumer will think of KPN when coming across the Disputed Domain Name <mijkpn.nl>.

In addition, the difference between <mijkpn.nl> and the official domain name of the Complainant <mijnkpn.nl> is negligible. The existence of a domain name like <mijkpn.nl> will result in persons looking for “MijnKPN” but making a typing error end up in the wrong location. This is misleading and therefore harmful to the Complainant and its brands.

The Disputed Domain Name <telfirt.nl> consists of the term “telfirt”, which but for one letter is identical to the TELFORT Marks, in combination with the ccTLD “.nl” that is relevant for the Netherlands. The likelihood that an average consumer will become confused is therefore high, especially since it concerns a “.nl” domain name and the TELFORT Marks are well-known in the Netherlands. An average consumer will think of the TELFORT Marks when coming across the Disputed Domain Name <telfirt.nl>. Here again, the difference between <telfirt.nl> and the domain name <telfort.nl>, which is linked to the Complainant’s official website, is negligible. The existence of a domain name like <telfirt.nl> (just like with <mijkpn.nl>) will result in persons looking for TELFORT but making a typing error end up in the wrong location. This is misleading and therefore harmful to the Complainant and its brands.

The Complainant also asserts that the Respondent has no rights to or legitimate interests in respect of the Disputed Domain Names as it is neither affiliated with the Complainant in any way nor has been authorized by the Complainant to seek registration of any domain name incorporating the Trademarks.

The Complainant further considers the registration of the Disputed Domain Names in bad faith as it is unlikely that the Respondent was unaware of the Complainant when it registered the Disputed Domain Names as the Complainant and its Trademarks are well-known in the Netherlands. Furthermore, the choice of the misspellings in the Disputed Domain Names demonstrates that the Respondent seeks to profit from typing mistakes.

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 to or legitimate interests in the Disputed Domain Name; and

c. the Disputed Domain Name has been registered or is being used in bad faith.

In accordance with article 10.3 of the Regulations, the Panel shall determine the admissibility, relevance and weight of the evidence submitted; if no response has been submitted, the Panel shall rule on the basis of the complaint; and the Complaint shall in that event be granted, unless the Panel considers it to be without basis in law or fact.

A. Preliminary Matter – Language of Proceedings

According to article 17.2 of the Regulations proceedings shall be conducted in the English language whenever the complainant or the respondent neither resides nor is registered in the Netherlands. In exceptional cases the Center (subject to the determination of the Panel) may decide that the complainant or the respondent may make submissions in Dutch.

In its email (in the English language) of December 3, 2021, the Center informed the Parties that, while the formal language of proceedings is English, the Parties may make submissions in Dutch, subject to the panelist’s determination. The Panel concurs with this determination and has accepted the Complaint, as amended, submitted in Dutch, in view of the fact that Respondent has not filed a response or indicated an objection to the Center’s communication of December 3, 2021, furthermore taking into account the expedited nature of these proceedings.

B. Identical or Confusingly Similar

The Complainant has submitted copies of the registrations of the Trademarks. Consequently, the Panel finds that the Complainant has proven that it has rights in the Trademarks.

The Disputed Domain Name <mijkpn.nl> incorporates KPN in its entirety, making the KPN Marks clearly recognizable in the Disputed Domain Name (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7).¹

The Disputed Domain Name <telfirt.nl> incorporates TELFORT almost in its entirety, except for the letter “o” that is an “i” in the Disputed Domain Name. A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark (see WIPO Overview 3.0, section 1.9). Here, the TELFORT Marks are sufficiently recognizable in the Disputed Domain Name <telfirt.nl>.

For both Disputed Domain Names the ccTLD “.nl” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 3.0, section 1.11).

The Panel finds that the Disputed Domain Names are confusingly similar to the Trademarks and that the Complainant has thus established the first element of article 2.1(a) of the Regulations.

C. Rights or Legitimate Interests

A complainant bears the burden of prima facie showing that the respondent has no rights or legitimate interests in the domain name. If a complainant succeeds in making a prima facie case, the burden of production shifts to the respondent, which will then have to come forward with appropriate allegations and evidence demonstrating a right or legitimate interest in the domain name (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Article 3.1 of the Regulations provides circumstances to which the respondent may demonstrate such rights or legitimate interests. These circumstances include i) use of the domain name in connection with a bona fide offering of goods or services; ii) being commonly known by the domain name; and iii) making legitimate noncommercial or fair use of the domain name.

According to the evidence and the undisputed submissions of the Complainant, the Panel notes that the Respondent has not received the Complainant’s consent to use the Trademarks as part of the Disputed Domain Names, nor has it otherwise been authorized to use the Trademarks, and the Respondent is not commonly known by the Disputed Domain Names, has no connection or affiliation with the Complainant, and has not acquired trademark rights in relation to the Disputed Domain Names. Both of the Disputed Domain Names (at the time of the decision) resolve to telecom-related websites with offers of high discounts, unlocking cellphones, and further advertisements. Such use of the Disputed Domain Names cannot constitute a bona fide offering of goods or services. Finally, the Respondent does not make legitimate noncommercial or fair use of the Disputed Domain Names.

The Panel further finds that, since the Disputed Domain Name <mijkpn.nl> incorporates the KPN Marks in their entirety and is nearly identical to a domain name operated by the Complainant, it carries a risk of implied affiliation (WIPO Overview 3.0, section 2.5.1).

The Panel concludes that the Complainant has established an unrebutted prima facie case that the Respondent has no rights to or legitimate interests in the Disputed Domain Names.

The Panel concludes that the Complainant has met the second requirement of article 2.1(b) of the Regulations.

D. Registered or Used in Bad Faith

In accordance with article 3.2 of the Regulations, the Complainant must show that the Disputed Domain Names were registered or are being used in bad faith. Several circumstances put forward by the Complainant make that the Panel finds that this is so.

When the Respondent registered the Disputed Domain Names, the Complainant already had trademark rights for its products and services. The Panel finds it highly unlikely that the Respondent did not know of the Complainant’s Trademark rights when registering the Disputed Domain Names. The oldest of the Trademarks has been in use since 1993, and the Complainant is one of the largest telecom and ICT companies in the Netherlands. The Respondent does not deny that it knew of the Trademarks. Noting the broader circumstances of this case, including the undisputed reputation of the Trademarks and the confusing similarity of the Disputed Domain Names with the Trademarks (as well as the near identity to the domain names operated by the Complainant), it is clear that the Disputed Domain Names have been registered and used in bad faith, namely to gain commercial advantage by directing Internet users to websites of the Respondent or other online locations, or otherwise take unfair advantage of the Trademarks. By using the Trademarks, in typosquatted form, in the Disputed Domain Names, there is a risk that Internet users will assume a commercial connection between the Respondent and the Trademarks (and products or services) of the Complainant that does not exist.

The Panel concludes that the requirement of article 2.1(c) of the Regulations has also been met.

7. Decision

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

Moïra Truijens
Panelist
Date: February 10, 2022

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).