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Keesing Capital International N.V v. Locatech NV-SA [2005] GENDND 550 (26 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Keesing Capital International N.V v. Locatech NV-SA

Case No. D2005-0575

1. The Parties

Complainant is Keesing Capital International N.V., with its principle place of business at Deurne, Belgium, represented by Mrs. A.C. van der Schaaf, company lawyer of Keesing International Publishers B.V., Amsterdam, The Netherlands.

Respondent is Locatech NV-SA, Aalter, Belgium.

2. The Domain Names and Registrar

The disputed domain names (“Domain Names”) are <sportcerebral.com> and <sport-cerebral.com> registered with Register.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2005, via e-mail and received via hard copy by the Center on June 6, 2005. On June 2, 2005, the Center transmitted a request for verification by email to Register.com, Inc. On June 3, 2005, Register.com, Inc. 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. The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on June 14, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 4, 2005. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 5, 2005

The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on July 12, 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

As the following facts and circumstances have been alleged and satisfactorily evidenced by Complainant, and have not been contested by Respondent’s default, they are being held as true by the Panel.

Complainant is the owner of 28 active International and Benelux trademarks, each comprising the words “sport cerebral”. For the purpose of these proceedings Complainant presented an enumeration of these trademarks and submitted copies of the two most relevant trademark registrations, namely:

a. Word mark “Sport Cerebral” registered by Complainant’s legal predecessor at the Benelux Trademark Office on July 10, 1971, under number 29181 (word mark in use since 1955);

b. Device mark “Sport Cerebral” registered by Complainant’s legal predecessor at the Benelux Trademark Office on July 10, 1981, under number 374816.

The Respondent has acted as an intermediary for registering Internet domain names on behalf of the Complainant for an unspecified period prior to his registration of the contested Domain Names. After Complainant ended this contractual relationship, Respondent registered the disputed domain names for itself in October 2002 without having received instructions, permission or license to that effect from the Complainant.

According to independent Internet research of the Panel, “Sport Cerebral” is the title of a puzzle/crossword magazine published in the group of companies to which the Complainant belongs for the French market.

5. Parties’ Contentions

A. Complainant

According to the Complainant, the registration of the disputed Domain Names by Respondent in its own name was without the Complainant’s permission. The Domain Names are identical and/or similar to Complainant’s trademarks comprising the words “sport cerabral”. Respondent has no rights or legitimate interests in the Domain Names <sportcerebral.com> and <sport-cerebral.com> and has registered the Domain Names in contradiction with his assignment as an intermediary and/or prevents Complainant from using the domain names on the Internet.

Additionally, the Complainant asserts that the use of the trademarks “Sport Cerebral” is the exclusive right of itself and of its licensees. The Respondent has not obtained a proper license nor has he, at any time, received Complainant’s permission to register or use the trademarks in his own name for a domain name.

The Complainant further declares that the Respondent is infringing its trademark rights in “Sport Cerebral” by registering the domain names <sport-cerebral.com> and <sportcerebral.com>. Furthermore, the Complainant states that the registration and use of the Domain Names by the Respondent prevents the Complainant from activating its own website under the top-level domain “.com”.

In addition, the Complainant feels that the Respondent is misleading the general public and is trying to profit from the good reputation and standing of Complainant and of its trademarks.

According to the Complainant, the Respondent fails to have rights or legitimate interests in the Domain Names. The Respondent is merely holding the Domain Names passively. Even though Complainant has invited the Respondent to transfer the Domain Names and has made several requests to settle this matter amicably the Respondent still failed to react to these offers.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

As stated in Tarjeta Naranja S.A. v. MrDominio.com and Alejandro San Jorge, WIPO Case No. D2001-0295 and in Ermenegildo Zegna Corporation, Lanificio Ermenegildo Zegna & Figli S.p.A., Consitex S.A. and Ermenegildo Zegna España S.A v. Ocxon Media S.A., WIPO Case No. D2001-0128, according to the Rules, in case of failure of the Respondent to provide a response to the allegations of the Complainant, the Panel is directed to decide the administrative proceeding on the basis of the Complaint (Paragraph 14(a)), and “shall draw such inferences therefrom as it considers appropriate” (Paragraph 14(b)).

A. Identical or Confusingly Similar

The Domain Names registered by the Respondent are <sport-cerebral.com> and <sportcerebral.com>. From 1971 onwards, the Complainant registered various marks, to which the components “sport” and “cerebral” are essential and which pre-date the registration of the Domain Names by far. Therefore the Panel finds that the Domain Names registered by Respondent are identical or at least confusingly similar to a trademark in which Complainant has rights (see Policy Paragraph 4(a)(i)).

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent did not receive the permission nor did it acquire a license to use the above mentioned trademarks in the Domain Names. The defaulting Respondent has not contended to have any rights to or legitimate interests in the Domain Names. The Respondent is not using and has not shown any efforts to use the Domain Names in connection with a bona fide offering of goods or services. Moreover, the Respondent is neither making a legitimate non-commercial or fair use of the Domain Names nor is it generally known under the Domain Names. Therefore Respondent fails the tests set out in Paragraph 4(c) of the Policy and cannot claim rights or legitimate interests in either of the disputed Domain Names thereunder. Hence, Policy Paragraph 4(a)(ii) is fulfilled.

C. Registered and Used in Bad Faith

By registering the Domain Names <sportcerebral.com> and <sport-cerebral.com> the Respondent prevents the Complainant from creating an adequate web presence for the puzzle magazines titled by its registered trademarks. The Respondent refused to negotiate about the use of the Domain Names and hence impeded Complainant from presenting its mark in the Internet. As the Respondent registered two almost identical Domain Names without any apparent need as justification and failed to react to Complainant’s resolution efforts, it revealed a conduct of systematic manner. Furthermore, it remains uncontested, that the Respondent positively knew of the Complainant from an earlier contractual relationship regarding Internet servicing. It may be inferred that the Respondent also knew of the Complainant’s commercial activities under these trademarks. Thus, it may accordingly be assumed that the Respondent’s motivation to register the Domain Names mainly resulted from disappointment from the termination of the contractual relationship or the need to satisfy its desire for retribution due to the termination of the contractual relationship. Such practice constitutes registration and use in bad faith according to the Policy (see METRO BILBAO, S.A. v. Ignacio Allende Fernández, WIPO Case No. D2000-0467 at section 6.5 (c)).

It may be concluded from these facts that Respondent has registered the domain names in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name and has engaged in a pattern of such conduct (Policy Paragraphs 4(a)(iii), 4(b)(ii)).

Furthermore Respondent’s behavior, the passive use of the Domain Names plus the former business relationship between the parties strongly indicate that Respondent has registered the Domain Names primarily for the purpose of disrupting Complainant’s business (Policy Paragraphs 4(a)(iii), 4(b)(iii)).

Therefore Respondent’s Domain Names have been registered and are being used in bad faith (Policy Paragraph 4(a)(iii)).

Hence, Complainant has proven that each of the mandatory administrative proceeding’s elements are present.

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 Names <sport-cerebral.com> and <sportcerebral.com> be transferred to Complainant

Andrea Jaeger-Lenz
Sole Panelist

Date: July 26, 2005