Stichting Hoger Onderwijs Nederland
Den Haag
The Netherlands

(Plaintiff)

and

Technology Services Ltd
Paris
France

(Defendant)

Arbitration Tribunal
Remco M.R. van Leeuwen

This arbitration award is rendered by me as arbitrator under the Regulations for Arbitration on .nl Domain Names (the “Regulations”) of the Stichting Internet Domeinregistratie Nederland (“SIDN”), in a dispute between Stichting Hoger Onderwijs Nederland (the Plaintiff) and Technology Services Ltd (the Defendant) concerning the domain name <inholand.nl>.

1. The Parties

The Plaintiff, Stichting Hoger Onderwijs Nederland, is a foundation incorporated under the laws of the Netherlands, with registered office in The Hague, The Netherlands, represented by Bird & Bird, The Hague, The Netherlands.

The Defendant, Technology Services Ltd, is a limited liability company incorporated under the laws of France and has its office in Paris, France. The Defendant did not appoint a representative.

2. The Domain Name and Participant

The domain name in dispute is <inholand.nl> (the “Domain Name”). The participant is EuroDNS S.A. with its registered office in Leudelange, Luxembourg.

3. Procedural History

The Complaint was received by the WIPO Arbitration and Mediation Center (the “Center”) by e-mail on February 26, 2008 and in hardcopy on February 28, 2008.

On February 27, 2008, the Center acknowledged receipt of the Complaint and requested Registry Verification. On March 4 and 6, 2008 the Registry (SIDN) confirmed that the Defendant is the current registrant of the Domain Name. Furthermore, the SIDN confirmed that the Regulations apply to the Domain Name and that the Domain Name is locked and remains locked during the pending arbitration proceedings in accordance with Article 8 of the Regulations.

The Center has verified that the Complaint was filed in accordance with the Regulations. On March 6, 2008, the Defendant was notified of the Complaint and the arbitration proceedings that had commenced against him, in accordance with Articles 5.5, 7.1 and 7.3 of the Regulations. The Tribunal agrees with the Center’s assessment regarding the Complaint’s compliance with the formal requirements of the Regulations. The formal date of the commencement of the arbitration proceedings is March 6, 2008.

The Center did not receive a Statement of Defence from the Defendant. Accordingly, the Center notified the Defendant of its default on March 31, 2008.

On April 15, 2008, the Center appointed Remco M.R. van Leeuwen as sole arbitrator, in accordance with Article 10.11 of the Regulations. The Tribunal has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Regulations to ensure compliance with Article 10.9 of the Regulations.

4. Factual Background

Trademark

The Plaintiff is the owner of the registered Benelux (word) trademark INHOLLAND, which was filed on February 25, 2003, (registration number 0748522). This trademark is registered in classes:

- 16 (Paper, books, magazines and other printed matters);

- 35 (Business organizational and economical advice for the benefit of governmental organizations, recruitment of staff, positioning staff, advice on staff matters, administration especially staff and salary administration, advertisement, services of advertising agency, market research and market analysis);

- 36 (Financial affairs, insurance, mortgage, monetary affairs);

- 41 (Education, providing training including post graduate education, refresher courses, seminars, courses, written education and organization of educational and sporting activities); and

- 42 (Scientific and technological services and research and design relating hereto).

Domain Name

According to the verification provided by and the Whois of SIDN, the Defendant’s domain name <inholand.nl> was first registered on October 6, 2004.

The Defendant uses the Domain Name as a commercial (search) portal in relation to inter alia education.

5. Parties’ Contentions

Plaintiff

The Plaintiff contends that the trademark INHOLLAND is used inter alia for offering education to more than 33.000 students on different locations in the Netherlands. Students can consult the website “www.inholland.nl” to receive information about the services offered by and through the Plaintiff.

The Plaintiff contends that Defendant’s registration and use of the Domain Name infringes Plaintiff’s trademark INHOLLAND under Articles 2.20 paragraph 1 under a, b, c and d of the Benelux Convention on Intellectual Property (“BCIP”).

The Plaintiff claims that the Domain Name is nearly identical to the Plaintiff’s trademark INHOLLAND. The Plaintiff furthermore argues that the Domain Name is substantially similar to the trademark INHOLLAND and is used in connection with identical or substantially similar goods. According to the Plaintiff, Defendant’s use of the Domain Name creates consumer confusion relating to source, sponsorship and/or association. The Plaintiff has not given permission to the Defendant to use his trademark.

Moreover, the Plaintiff argues that the Defendant, by using the Domain Name, takes unfair advantage of the reputation of the Plaintiff, since the relevant public will establish a link between the sign <inholand.nl> and the well-known trademark INHOLLAND.

The Plaintiff therefore requests the Tribunal to find that:

1. the Plaintiff shall become the holder of the Domain Name instead of the Defendant and that the award shall replace the form required by SIDN for the Change of Domain Name Holder;

2. the Defendant be prohibited from registering domain names similar to the contested Domain Name in the future, liable to a penalty of EUR 5.000,--, increased by a penalty of EUR 1.000,-- for each day that the Defendant refuses to transfer the domain names to the Plaintiff;

3. the Defendant shall pay the costs of the procedure, including the Plaintiff’s costs of legal assistance which at the time of filing of this Complaint amount to approximately EUR 2.265,--;

4. the award, in accordance with Article 23.5 of the Regulations, be declared enforceable regardless of whether an appeal against the award is lodged.

Defendant

The Defendant did not submit a Statement of Defence.

6. Discussion and Findings

Jurisdiction and Applicable Law

The Domain Name was first registered October 6, 2004 and was registered on January 14, 2008 by the Defendant through a change of ownership. Pursuant to Article 21.2 of the Regulations, the Defendant thereby submitted itself to these arbitration proceedings. SIDN has submitted records confirming the applicability of these arbitration proceedings to the Domain Name. The Plaintiff’s submission of the Complaint thus constitutes an arbitration agreement between the parties.

This arbitration agreement cannot be deemed to lead to the determination of legal consequences which are not at the free disposal of the parties in the sense of Article 1020.3 Dutch Code of Civil Procedure and therefore forms a valid basis for this arbitration. Considering this, as well as the legal basis of the Complaint under inter alia Benelux trademark law, the Tribunal has jurisdiction to render an arbitration award under Article 11.2 of the Regulations.

In accordance with Article 17.2 of the Regulations, the language of the proceedings is English. In accordance with Article 17.4 of the Regulations, the place of arbitration is Amsterdam, the Netherlands. The domicile of the Tribunal is Amsterdam, the Netherlands.

Defendant Default

As stated in paragraphs 3 and 5 of this award, the Defendant failed to file a Statement of Defence. Article 9.4 of the Regulations provides that, should the Defendant fail to submit a Statement of Defence, the case shall nevertheless proceed and the Tribunal shall rule on the basis of the Complaint. It also follows from Article 9.4 that the award to be rendered shall grant the remedy except if the Tribunal considers the Complaint to be baseless, i.e. in case the Complaint is apparently ill-founded or plainly inadmissible.

Findings

Upon review of the case file, the Tribunal is of the opinion that the Plaintiff has sufficiently demonstrated its rights in the Benelux trademark INHOLLAND. According to Article 2 of the Regulations, the Tribunal shall decide whether the Domain Name, by its registration and/or use, infringes the Plaintiff’s trademark rights. The Tribunal is satisfied that the Defendant’s use of the trademark meets the requirements of this provision and thereby infringes upon the Plaintiff’s trademark rights, for the reasons set out below.

According to Article 2.20(1)(a) BCIP, the holder of a trademark can invoke protection against use of an identical sign for identical goods/services. According to Article 2.20(1)(b) BCIP, the holder of a trademark can also invoke protection against the use of an identical and/or similar sign for similar goods/services where there exists a likelihood of confusion on the part of the public.

The Domain Name is almost identical to the Plaintiff’s trademark INHOLLAND. It is well established that the top level domain “.nl” is irrelevant for the assessment of similarity or identity between the trademark and the Domain Name (see inter alia Ouders Online, District Court of Amsterdam, September 20, 1996, IER 1996, p. 44; Cisco-Linksys LLC v. Paintlife B.V., WIPO2004NL3 (<linksys.nl>), Just Eat A/S v. Roberto da Silva, WIPO2007NL1 (<just-eat.nl>); Betafence Holding N.V. en Betafence N.V. v. S. Wichers, WIPO2007NL4 (<betafence.nl> and <bekafor.nl>)). The only difference between the Domain Name and the trademark INHOLLAND is a letter “l” absent from the Domain Name. Moreover, the Defendant uses the Domain Name as a commercial (search) portal inter alia in relation to education while the Plaintiff’s trademark has been registered for, inter alia, education. The Domain Name is therefore being used for services which are identical, or at least (substantially) similar, to those for which the trademark has been registered. The Tribunal has not been presented with any evidence indicating the consent of the Plaintiff to the use of its trademark by the Defendant. With the Plaintiff, the Tribunal is of the opinion that Defendant’s conduct can be regarded as “typosquatting”.

The Tribunal finds that Defendant, by registering and using the almost identical Domain Name for identical and/or similar services, causes a likelihood of confusion amongst the relevant public and that the Defendant infringes upon the trademark rights of the Plaintiff as set out in Article 2.20(1)(a) and/or (b) BCIP.

Since the Plaintiff’s case already succeeds on these grounds, possible other grounds do not need further discussion. Therefore, the Tribunal shall award the requested remedy and order that the Plaintiff shall become holder of the Domain Name instead of the Defendant and that this award shall replace the form required by SIDN on the basis of Article 24.3 of the Regulations for the change of the domain name holder.

With respect to the remaining remedies requested by the Plaintiff, the Tribunal interprets Article 9.4 of the Regulations as not obliging the Tribunal to grant in full each and every one of the remedies sought by the Plaintiff.

The Plaintiff has requested that the Defendant shall be prohibited from registering domain names similar to the contested Domain Name in the future, liable to a penalty of EUR 5.000,--, increased by a penalty of EUR 1.000,-- for each day that the Defendant refuses to transfer the domain names to the Plaintiff. It has been well established in previous “.nl” awards that a general order to prohibit a Defendant from registering domain names similar to the contested domain name is not admissible. The Tribunal, therefore, holds this claim to be insufficiently precise and, within its discretion under Article 9.4 of the Regulations, declines to issue such prohibition. However, the Tribunal understands that the Plaintiff seeks a remedy that such future domain names shall not infringe the Benelux trademark INHOLLAND, which claim shall be granted. The Tribunal sets the penalty at a lesser amount and subject to a maximum.

Since the claim of Plaintiff is substantially awarded, the Tribunal shall award the procedural costs, including the costs of legal assistance in the amount of EUR 2.265,--, which the Plaintiff has demanded, on the basis of Article 28.8 of the Regulations. The Tribunal considers this amount appropriate in light of the above considerations and circumstances and the effort needed to draft a Complaint that covers all aspects of the infringement at hand.

The Plaintiff has also requested that the Tribunal declares the award enforceable regardless of whether an appeal against the award is lodged. Considering the default nature of this case and taking into account the absence of specific arguments for this request in the Complaint, the Tribunal, within its discretion under Article 9.4 of the Regulations, declines to issue such declaration.

7. Decision

With reference to Article 3 of the Regulations and the facts and findings set out above, the Tribunal decides as follows:

1. The Plaintiff shall become the holder of the Domain Name <inholand.nl> instead of the Defendant;

2. This award shall replace the form required by SIDN for the change of the domain name holder;

3. The Defendant shall be prohibited from registering domain names which infringe the Plaintiff’s Benelux trademark INHOLLAND in the future, subject to a penalty of EUR 5.000,-- for each domain name registered in violation of this prohibition, with a maximum of EUR 50.000,--;

4. The Defendant is ordered to pay the Plaintiff a total amount of EUR 4.515,--, which includes EUR 2.250,-- for the administration costs of these proceedings and the Tribunal’s fees, and EUR 2.265,-- for legal assistance;

5. All other claims are rejected.

Remco M.R. van Leeuwen
Single Arbitrator
Amsterdam

Dated: April 23, 2008