WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Koninklijke KPN N.V. v. Protected Privacy, Privacy Protected by Hostnet / Network Operations Hostnet bv / Sagar Sitaram

Case No. D2019-3040

1. The Parties

The Complainant is Koninklijke KPN N.V., Netherlands, represented by KPN., Netherlands.

The Respondent is Protected Privacy, Privacy Protected by Hostnet / Network Operations Hostnet bv / Sagar Sitaram, Netherlands.

2. The Domain Name and Registrar

The disputed domain name <telfort.app> (the “Domain Name”) is registered with Key-Systems GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2019. On December 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 12, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 13, 2019, 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 amended Complaint on December 18, 2019.

The Center verified that the Complaint together with the amended 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 December 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 8, 2020. The Respondent did not submit any response.

The Respondent sent a couple of informal emails to the Center in Dutch on December 13, 2019, and December 16, 2019, the Center notified the Commencement of Panel Appointment on January 9, 2020.

The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on January 15, 2020. 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 offers fixed-line and wireless telephony services, broadband access and television services to consumers and B2B telecommunications and ICT services to business customers across Western Europe.

The Complainant holds, inter alia, the following trade marks (the “Trade Marks”):

- Benelux word mark TELFORT registered under No. 0603567, registered as of August 20, 1996
- Benelux word mark TELFORT registered under No. 1390782 as of February 20, 2019
- European Union word mark TELFORT registered under No. 004516597 as of April 10, 2007.

The Complainant uses the Trade Marks for a number of its services.

The Domain Name was registered on August 2, 2018.

On April 17, 2019, the Complainant sent an email to the Respondent, informing it that in its opinion the Domain Name infringed its trade mark rights and requesting transfer of the Domain Name in return for reimbursement of the registration, administration and transfer costs. In response the Respondent by email of April 23, 2019, wrote in Dutch: “Ik kan niet constateren dat ik enige inbreuk pleeg op Telfort.
Tevens zijn er meerdere belangen, waardoor ik niet akkoord kan gaan op uw voorstel. Ik stel voor dat u zelf met een beter voorstel komt.” (I cannot establish that I am infringing Telfort. In addition, there are other interests causing me not to agree to your proposal. I suggest that you come up with a better proposal).

5. Parties’ Contentions

A. Complainant

According to the Complainant, the Domain Name is identical to the Trade Marks as it consists of the element TELFORT” of which the Trade Marks consist and the generic Top Level Domain (“gTLD”) “.app”.

The Complainant submits that the gTLD “.app”, although typically disregarded in the confusing similarity test, may add to the confusing similarity between the Trade Marks and the Domain Name, as the Complainant also offers its services through apps which can be downloaded from e.g. the Google Play store.

The Complainant states that the Respondent has no rights or legitimate interests in respect of the Domain Name, since it did not receive approval from the Complainant to register and/or use the Domain Name or any of the Trade Marks, while there is no indication of the Respondent’s use of, or demonstrable preparations to use the Domain Name, or any similar name in connection with a bona fide offering of goods and services. Furthermore, the Complainant contends that the Respondent is not commonly known (not as a person, not as a business, nor as an organization) by the name TELFORT or a similar name.

According to the Complainant the Domain Name has been registered in bad faith since the Respondent is well aware of the Trade Marks, as TELFORT is a well-established brand in the Netherlands while it is likely that the Respondent resides in the Netherlands or, at least, is familiar with the Dutch market, as it communicates in Dutch and has appointed a Dutch lawyer. The Complainant further points out that the Respondent rejected the Complainant’s proposal to reimburse the Respondent for the costs reasonably made in relation to the registration, administration and transfer of the Domain Name, while suggesting that the Complainant make a new (higher) proposal, which in the Complainant’s view is a clear indication that the Respondent registered the Domain Name primarily for the purpose of selling the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name and therefore that the Domain Name was registered in bad faith.

The Complainant adds that, although the Domain Name does not resolve to an active website, there is bad faith use of the Domain Name in view of the following circumstances:

(i) the Trade Marks have a strong reputation and are widely known;

(ii) the Respondent has provided no evidence of any actual or contemplated good faith use by it of the Domain Name;

(iii) the Respondent has hidden its identity through a privacy shield.

In addition, in the opinion of the Complainant, taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate.

B. Respondent

The Respondent did not submit a formal Response to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has shown that it has registered rights in the Trade Marks. The Domain Name is confusingly similar to the Trade Marks as it incorporates TELFORT, of which the Trade Marks consist, in its entirety. The gTLD “.app” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11).

Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Marks in which the Complainant has rights.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, the second element a complainant has to prove is that a respondent lacks rights or legitimate interests in a domain name. This may result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge or control of the respondent. In order to satisfy the second element, the Complainant has to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name. If the Complainant succeeds in doing so, the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Domain Name. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element (see WIPO Overview 3.0, section 2.1).

Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant’s consent to use the Trade Marks as part of the Domain Name, is not commonly known by the Domain Name and has not acquired trade mark rights in the Domain Name. As the Domain Name does not resolve to an active website, there is no evidence that the Domain Name is used for a bona fide offering of goods or services, or a legitimate noncommercial or fair use.

In view of the above, the Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Based on the information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain Name the Respondent was or should have been aware of the Trade Marks, since:

- the Respondent’s registration of the Domain Name occurred twenty-two years after the registration of the earliest of the Trade Marks;

- the trade mark TELFORT for telecommunication services is well-known in the Netherlands, where the Respondent is based;

- a simple trade mark register search, or even an Internet search, prior to registration of the Domain Name in its name would have informed the Respondent of the existence of the Trade Marks.

With regard to bad faith use, the fact that the Domain Name at this stage does not appear to resolve to an active website does not imply a lack of bad faith. As set out in WIPO Overview 3.0, section 3.2, the consensus view is that the apparent lack of so-called active use (e.g., to resolve to a website) of a domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and HUGO BOSS Trade Mark Management GmbH & Co. KG, HUGO BOSS AG v. Dzianis Zakharenka, WIPO Case No. D2015-0640). In accordance with this UDRP jurisprudence, a UDRP panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith.

In this case, the Panel finds that the following circumstances together are found to be indicative of bad faith use of the Domain Name:

- the probability that the Respondent was aware or should have been aware of the Complainant’s rights in the Trade Marks;

- the non-dictionary nature of the mark TELFORT incorporated in the Domain Name, such that the Respondent cannot claim to have accidentally registered a domain name that happens to correspond to the Trade Marks;

- the lack of a formal Response of the Respondent;

- the response of the Respondent to the cease-and-desist letters sent by the Complainant, denying the infringement, declining the proposal to transfer the Domain Name in return for a cost reimbursement and the suggestion that the Complainant make ‘a better proposal’;

- the hiding by the Respondent of its identity through the use of a proxy domain registrar.

Therefore, the Panel concludes that the Domain Name has been registered and is being used in bad faith.

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 <telfort.app> be transferred to the Complainant.

Wolter Wefers Bettink
Sole Panelist
Date: January 29, 2020