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Stichting Gilde Opleidingen v. 544Domain 544Administrator [2005] GENDND 1488 (1 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Stichting Gilde Opleidingen v. 544Domain 544Administrator

Case No. D2005-0577

1. The Parties

The Complainant is Stichting Gilde Opleidingen, Roermond, Netherlands, represented by Van Boven & Van der Bruggen Advocaten, Netherlands.

The Respondent is 544Domain 544Administrator, United States of America.

2. The Domain Name and Registrar

The disputed domain name <gildeopleidingen.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2005. As the Respondents were stated eNom, Inc, Bellevue, Unites States and Unknown entity, Zywiec, Poland.

On June 3, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On June 4, 2005, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and provided a source for where the current contact information for the disputed domain name could be found.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 10, 2005. In this amendment the Respondent was, as the Registrant and user, altered to the present.

The Center then verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 17, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 7, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 8, 2005.

The Center appointed Anders Janson as the Sole Panelist in this matter on July 19, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant asserted, and provided evidence in support of, the following facts, which the Panel finds established:

The Complainant, Stichting Gilde Opleidingen, is a Dutch foundation running a school for technical and vocational training for teenagers, 16-18 years old, as well as adult education.

The Complainant is the owner of the trade name “Gilde Opleidingen” which was registered at the Dutch Chamber of Commerce October 31, 1996. The Complainant also owns the registered domain name “gildeopleidingen.nl” of which the registration date was March 6, 2000. The word “gilde” in Dutch is equivalent with the English word “guild” and the word “opleidingen” in Dutch is equivalent with the English word “education”.

The Panel notes that the registration date of both the trade name “GILDE OPLEIDINGEN” and the domain name <gildeopleidingen.nl> predates the date of registration of the disputed domain name by the Respondent, which was on January 20, 2005.

The Panel finds it established that “GILDE OPLEIDINGEN” is a well-recognized trade name that deserves the same protection as a trademark according to article 8 of the Paris Convention Treaty (Paris Convention For The Protection of Industrial Property of March 20, 1883). The trade name “GILDE OPLEIDINGEN” is both distinctive, famous and in use of commerce.

The Respondent is 544Domain 544Administrator, with a stated address in the United States of America. The website “www.gildeopleidingen.com” contains hyperlinks to other sites containing sexually explicit material.

The Respondent is in default, and accordingly, has not challenged the conclusions of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- The disputed domain name is identical and confusingly similar to trademarks or service marks in which the Complainant has rights;

- The Respondent has no rights or legitimate interests in respect of the domain name;

- The domain name has been registered and is being used in bad faith; and

- The domain name <gildeopleidingen.com> should be transferred to the Complainant

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The domain name at issue is <gildeopleidingen.com>. The Complainant is the holder of the registered trade name “GILDE OPLEIDINGEN” as well as the domain name <gildeopleidingen.nl>. The trade name “GILDE OPLEIDINGEN” is in use of commerce.

The disputed domain name contains the Complainant’s trade name “GILDE OPLEIDINGEN” in its entirety, with the generic and functional top level domain name “.com”. When determining whether a domain name and a trademark are identical or confusingly similar, the gTLD shall be disregarded.

In previous decisions, the Panelists have found that the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusingly similarity for the purpose of the Policy.

The domain name must therefore be considered confusingly similar to the trade name “Gilde opleidingen”. The Panel holds that the Complainant has established element (i) of the Policy’s paragraph 4(a).

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent has chosen the domain name only because it is similar to the well known Dutch educational organization in the purpose of generating traffic and attracting Internet users who are looking for <gildeopleidingen.nl> for their own commercial gain. The Complainant furthermore asserts that the Respondent uses the domain name to market a product with no relation to the “GILDE OPLEIDINGEN” trade name, thus not making a bona fide offering of goods and services pursuant to paragraph 4(c)(i) of the Policy. The Respondent has made no lawful use of the domain name. In conclusion, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the domain name.

The Respondent has not filed a Response in accordance with the Rules, paragraph 5. In those circumstances, when the Respondent does not have an obvious connection with the disputed domain name, the mere assertion from the Complainant that the Respondent has no rights or legitimate interests is enough to shift the burden of proof to the Respondent to demonstrate that such rights and legitimate interests exist.

The Respondent has not demonstrated or argued that he used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services or that any other rights or legitimate interests exist. Registration of a domain name in itself does not establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.

In conclusion, the Respondent has not presented any evidence of rights or legitimate interests in using the disputed domain name and has no obvious connection to it. The Panel therefore holds that the Complainant has established element (ii) of the Policy’s paragraph 4(a).

C. Registered and Used in Bad Faith

Finally the Panel has to consider the question of the disputed domain name having been registered and used in “bad faith”.

Paragraph 4(b) states four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the domain name. Paragraph 4(b)(iv) states that a circumstance indicating bad faith is using a domain to intentionally attempt to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of your website or location or of a product or service on your website or location.

An Internet user searching for products provided by the Complainant is likely to visit the Respondent’s site. The Panel has established that the trade name mark “GILDE OPLEIDNINGEN” is recognizable and famous. The Panel considers it highly unlikely that the Respondent, by coincidence, has registered the disputed domain name, which, apart from the gTLD, is identical with the Complainant’s trade name.

Furthermore, the Respondent has not presented any reasons, evidence or arguments of legitimate interests in using the disputed domain name. There are no obvious reasons for the Respondent to have a legitimate use of the domain name. As has been established above, the only use of the domain name seems to be to market and offer products with no association to the Complainant.

The Panel therefore concludes that the Complainant has proven that the Respondent was acting in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <gildeopleidingen.com>, be transferred to the Complainant.

Anders Janson
Sole Panelist

Dated: August 1, 2005