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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nederlandse Omroep Stichting v. WhoisGuard Inc. / James Downton

Case No. D2018-0772

1. The Parties

The Complainant is Nederlandse Omroep Stichting of Hilversum, Netherlands, represented by Le Poole Bekema, Netherlands.

The Respondent is WhoisGuard Inc. of Panama, Panama / James Downton of Launceston, Cornwall, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), self-represented.

2. The Domain Name and Registrar

The disputed domain name <nosrant.com> (the "Disputed Domain Name") is registered with NameCheap, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 5, 2018. On April 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 7, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 11, 2018 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 11 and 12, 2018.

The Center verified that the Complaint together with the amendments to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 3, 2018. The Response was filed with the Center on May 3, 2018.

In its Response of May 3, 2018, the Respondent declared to consent to the remedy requested by the Complainant.

The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on May 17, 2018. 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, Nederlandse Omroep Stichting (N.O.S.), is a Dutch public broadcasting organization established in 1969 with its public remit enshrined in the Dutch Media Act. The Complainant is one of the largest broadcasters in the Dutch media landscape and has a legal responsibility to perform several radio, television, journalistic and Internet duties in the Netherlands.

The Complainant is the holder of trademarks consisting of NOS, registered in the Benelux and used in connection to its broadcasting and journalism services. The Complainant's trademark portfolio includes, inter alia, the following trade and service mark registrations:

- NOS, word mark registered with the Benelux Office for Intellectual Property ("BOIP") under No. 0153224 on December 1, 1987 in classes 35, 37, 38, 39, 40 and 41, and with a year of first use in 1969.

- NOS, figurative mark registered with the BOIP under No. 0863764 on August 10, 2009 in classes 9, 16, 18, 25, 38 and 41.

The Disputed Domain Name <nosrant.com> was registered by the Respondent on March 7, 2018 using a proxy service. The Disputed Domain Name currently does not resolve to an active webpage. At the time of filing the Complaint, the Disputed Domain Name appears to have been used to resolve to a website which is an almost exact copy of the Complainant's actual website, bearing the Complainant's NOS trademarks and displaying identical or adapted news articles and illustrations originally found on the Complainant's website. The adapted news articles appear to have been used for fraudulent activities, such as the promotion of dubious bitcoin schemes, phishing and malware.

5. Parties' Contentions

A. Complainant

The Complainant considers the Disputed Domain Name to be confusingly similar to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use as the website previously connected to the Disputed Domain Name displayed the Complainant's copyrighted logo, texts and images, and was used to engage in fraudulent activities. Also, according to the Complainant, the Respondent has not been commonly known by the Disputed Domain Name and is in no way affiliated with or authorized by the Complainant. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. The Complainant contends that, apart from infringing the Complainant's copyright, the Respondent has used the Disputed Domain Name for phishing, malware and promoting dubious bitcoin schemes.

B. Respondent

The Respondent contests the arguments of the Complainant without providing any further substantiation. The Respondent denies having infringed any copyrights and having acted in bad faith. The Respondent contends to have registered and used the Disputed Domain Name in connection to its dictionary meaning of "sweeping" in Lithuanian. However, the Respondent declares to consent to the remedy requested by the Complainant in order to end the dispute as soon as possible and that he has already taken down the website connected to the Disputed Domain Name.

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

The Panel notes that past UDRP panels have found that when a respondent gives its consent on the record to the remedy requested by the complainant, it is sufficient to order the requested remedy on the basis of such consent. In some cases though a panel may in its discretion still find it appropriate to proceed to a substantive decision on the merits, such as where the panel finds a broader interest in recording such decision on the merits (see section 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")). Noting the Respondent's actions of promoting fraudulent activities the Panel considers it appropriate to proceed to a decision on the merits.

The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities.

Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

The Panel will therefore deal with each of these requirements.

A. Identical or Confusingly Similar

To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there is a trademark in which the Complainant has rights. The Complainant's NOS mark has been registered and used in connection to its broadcasting and journalism services.

The Disputed Domain Name incorporates the Complainant's NOS trademark in its entirety, merely adding the non-distinctive suffix "rant".

The Panel is of the opinion that the mere addition of non-distinctive text to a complainant's trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see Karen Millen Fashions Limited v. Akili Heidi, WIPO Case No. D2012-1395, where the domain name
<karenmillenoutlet-australia.com> was held to be confusingly similar to the KAREN MILLEN trademark; Belstaff S.R.L. v. Jason Lau, Sharing, WIPO Case No. D2012-0783, where the domain name <belstaffjacken-outlet.info> was held to be confusingly similar to the BELSTAFF trademark; Lime Wire LLC v. David Da Silva / Contactprivacy.com, WIPO Case No. D2007-1168, where the domain name <download-limewire-now.com> was held to be confusingly similar to the LIME WIRE trademark, especially with addition of the word "download" because users typically download complainant's software). The term "rant" does not add to the distinctiveness of the Disputed Domain Name as it is a common English verb meaning "to talk loudly and angrily about something".

Additionally, it is well established that the generic Top-Level Domain ".com" may be disregarded when considering whether the Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights.

Accordingly, the Complainant has made out the first of the three elements of the Policy that it must establish.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

The Panel notes that the Respondent has not apparently been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights. The Respondent's use and registration of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent existed.

Moreover, the Panel is of the opinion that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. While the Disputed Domain Name currently does not resolve to an active webpage, it used to refer to a website bearing the Complainant's trademarks, copyrighted texts, images and news articles. The evidence of the case shows that the Respondent previously used the website connected to the Disputed Domain Name to mislead Internet users into believing that fraudulent news articles posted on the website were genuine and either the product of, or endorsed by, the Complainant.

UDRP panels have categorically held that the use of a domain name for illegal activity (e.g., phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on the Respondent (see section 2.13 of the WIPO Overview 3.0). The fraudulent news articles essentially copied headlines, text and images of news articles found on the Complainant's actual website and incorporated information and links referring to websites connected to various fraudulent activities, such as bitcoin schemes, malware and phishing. Evidently, such use cannot be considered a legitimate noncommercial or fair use of the Disputed Domain Name.

The Respondent had the opportunity to assert and explain his purported rights or legitimate interests but did not do so. The Respondent simply contends to deny the allegations set out in the Complaint and that the Disputed Domain Name was registered and used in connection to its dictionary meaning of "sweeping" in Lithuanian. The Panel finds this argument inconceivable, especially considering the use of the Complainant's trademarks and copyrighted content on the website previously connected to the Disputed Domain Name.

Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).

Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

In the present case, it is inconceivable that the Respondent was unaware of the Complainant and its trademark rights when it registered the Disputed Domain Name. The Disputed Domain Name includes the Complainant's distinctive trademark in its entirety with the addition of the descriptive term "rant". Additionally, the website previously connected to the Disputed Domain Name was an almost exact copy of the Complainant's actual website, bearing the Complainant's NOS trademarks and displaying identical or similar news articles and illustrations originally found on the Complainant's website. As a result, it is undisputable that the Respondent had the Complainant in mind when registering the Disputed Domain Name. The Panel therefore finds that the Respondent's awareness of the Complainant's trademark rights at the time of registration suggests bad faith.

By copying the Complainant's website and by linking to websites connected to various fraudulent activities, the Respondent intentionally aimed to attract Internet users to visit his website for commercial gain, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location and of the products advertised on the website (see Simyo GmbH v. Domain Privacy Service FBO Registrant / Ramazan Kayan, WIPO Case No. D2014-2227). The fact that the Disputed Domain Name currently does not resolve to an active webpage does not preclude the fact that the Respondent can at any time resume the previous bad faith use of the Disputed Domain Name.

Additionally, by using a proxy registration service, the Respondent has taken active steps to conceal its identity (see Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696, where it was held that the use of a proxy registration service to avoid disclosing the identity of the real party in interest is also consistent with an inference of bad faith when combined with other evidence of evasive and irresponsible conduct).

Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last element of the Policy.

7. Decision

For 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 <nosrant.com> be transferred to the Complainant.

Flip Jan Claude Petillion
Sole Panelist
Date: May 30, 2018

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