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Bart van den Bergh Merk-Echt BV v. Kentech Company Ltd [2005] GENDND 222 (24 March 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bart van den Bergh Merk-Echt BV v. Kentech Company Ltd

Case No. D2005-0127

1. The Parties

The Complainant is Bart van den Bergh Merk-Echt BV, Breda, Netherlands, represented by John C. Polling, Netherlands.

The Respondent is Kentech Company Ltd, Eldoret, Kenya.

2. The Domain Name and Registrar

The disputed domain name <deponeren.net> is registered with Intercosmos Media Group d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2005. On February 8, 2005, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On February 9, 2005, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 11, 2005. The Center 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 February 14, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 6, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 7, 2005.

The Center appointed Geert Glas as the Sole Panelist in this matter on March 10, 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

Since the Respondent has failed to Reply to the Complainant’s contentions, the Panel accepts as true, the facts as set out by the Complainant.

The Complainant is a Netherlands-based company, which offers services to its clients for researching and investigating trademarks and service marks.

On November 1, 2001, the Complainant registered the disputed domain name. From that time on, the Complainant actively offered its services using this domain name. At the end of the registration period, due to an accidental oversight, the Complainant failed to renew the disputed domain name, so that it became free for third parties to register.

On January 18, 2005, the Respondent registered the disputed domain name. The disputed domain name currently resolves to a web page which includes links to other websites (relating to travel, music, etc.). At the top right hand corner of this web page the visitor can click on a button “Buy this domain”. After clicking on this button, the visitor is transferred to the Respondent’s website “kenyatech.com” and invited to make an offer to purchase the disputed domain name.

On January 25, 2005, the Complainant made an offer to purchase the disputed domain name for 250 United States dollars. The Complainant received a reply message from the Respondent rejecting the price offered.

5. Parties’ Contentions

A. Complainant

By its Complaint of February 4, 2005, and its amended Complaint of February 11, 2005, the Complainant asserts that:

(i) The disputed domain name is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights. In particular, the Complainant asserts that it has trademark (application) rights on the sign "deponeren.net": the annexes to the Complaint amendment of February 11, 2005, include an e-mail from the Benelux Trademark Office acknowledging receipt of the application for a figurative trademark on the “www.deponeren.net” sign (accompanied by a logo).

(ii) The Respondent does not have any rights or legitimate interests in the disputed domain name.

(iii) The Respondent has registered and uses the disputed domain name in bad faith, in view of:

- the Respondent’s registration of a domain name previously owned by the Complainant,

- the Respondent’s cybersquatting: the Complainant asserts that the Respondent operates a business of “domain name brokerage”. On its website “kenyatech.com”, the Respondent offers for sale 144,000 domain names. The Complainant offered to purchase the disputed domain name from the Respondent for 250 United States dollars. The Respondent’s refusal of this offer denotes its intent to sell the disputed domain name at a cost substantially higher than its out-of-pocket costs directly related to the domain name, and

- the Respondent’s provision of false contact details to the WHOIS information: the Complainant asserts that it has attempted to contact the Respondent on various occasions via phone and email, and that the Respondent could not be contacted in any of these attempts.

B. Respondent

The Respondent failed to reply to the Complainant’s contentions.

6. Discussion and Findings

Article 4.a of the Policy states that the Complainant must prove each of the three following elements:

(i) the Respondent’s domain name is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in the domain name;

(iii) the Respondent’s domain name has been registered and is being used in bad faith.

A. The disputed domain name is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights

The Complainant claims to have trademark rights in the sign "deponeren.net". The Complainant annexes to its Complaint amendment, a letter from the Benelux Trademark Office acknowledging the receipt of its trademark application of February 11, 2005, for the sign <deponeren.net> (accompanied by a logo).

It is irrelevant that the trademark application postdates the domain name registration. See among others, Digital Vision, Ltd v. Advanced Chemill Systems (WIPO D2001-0827), Madrid 2012, S.A. v. Scott Martin-MadridMan Websites (WIPO D2003-0598), Iogen Corporation v. Iogen (WIPO D2003-0544) and AB Svenska Spel v. Andrey Zacharov (WIPO D2003-0527).

Pending trademark applications have been regarded as trademark rights for the application of the Policy, in cases where the signs corresponding to such trademark applications have been used. See among others, La Française des Jeux v. L Welsr (WIPO D2002-0305), Bennett Coleman & Co Ltd v. Steven S. Lalwani/Bennett Coleman & Co Ltd v. Long Distance Telephone Company (WIPO D2000-0014) and The David J. Joseph Company v. Richard F. Barry (WIPO D2000-1418).

It appears from the annexes to the Complaint that the Complainant has been using the sign <deponeren.net> in connection with the offering of its services.

The Panel therefore finds that the Complainant has trademark rights in the sign <deponeren.net>.

Having established the Complainant’s rights above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark (the only difference being the addition to the trademark application of a logo).

Consequently, the Panel holds that the first condition of article 4.a of the Policy has been satisfied.

B. The Respondent does not have any rights or legitimate interests in the disputed domain name

Since the Complainant can never fully prove the negative, i.e. that the Respondent lacks any right or legitimate interest in the disputed domain name, it is accepted that when a Complainant shows prima facie evidence of the absence of a right or legitimate interest by the Respondent, the burden of proof shifts to the Respondent. See among others, De Agostini S.p.A. v. Marco Cialone (WIPO DTV2002-0005) and Croatia Airlines d.d. v. Modern Empire Internet Ltd. (WIPO D2003-0455).

It does indeed not appear from the Respondent’s website or the correspondence between the parties that the Respondent would have any right or legitimate interest in the disputed domain name.

The Respondent does not contradict the Complainant’s assertion that the Respondent lacks any right or legitimate interest in the disputed domain name.

Consequently, the Panel holds that the second condition of article 4.a of the Policy has been satisfied.

C. The Respondent has registered and uses the disputed domain name in bad faith

The following elements are relevant to the Panel’s assessment of the bad faith requirement:

(i) the Respondent’s registration of a domain name previously owned by the Complainant: “deponeren” is a Dutch language word (it means “to file” or “to register”) which does not seem to have any meaning or connotation outside the Dutch language area. It is therefore fair to assume that the registration of the disputed domain name by the Respondent, a Kenyan company, was not a coincidence but was prompted by the Complainant’s failure to timely renew the domain name.

(ii) the Respondent’s management of a business of “domain name brokerage” (the Respondent offers for sale 144,000 domain names).

(iii) the Respondent’s rejection of the Complainant’s offer to purchase the disputed domain name for 250 United States dollars.

(iv) the Respondent’s provision of false contact details in the WHOIS information: the Respondent could not be reached by the Complainant on the phone number and e-mail address mentioned in the WHOIS information.

Whereas each of the above elements might not in itself constitute sufficient evidence of bad faith, the Panel holds that the combination of the above elements can be relied upon to conclude that the Respondent has registered and has been using the disputed domain name in bad faith.

Moreover, as the Respondent has not submitted a Reply, the Respondent has opted not to provide any explanation or argument which could shed a different light on these elements and failed to invoke any circumstance which could indicate the good faith nature of his registration and use of the disputed domain name.

For the above reasons, the Panel holds that the third condition of article 4.a of the Policy has been satisfied.

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 domain name <deponeren.net> be transferred to the Complainant.

Geert Glas
Sole Panelist

Dated: March 24, 2005