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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hesalite Ltd v. Netsmedia, Jonathan Petit

Case No. D2020-0383

1. The Parties

The Complainant is Hesalite Ltd, Cyprus, represented by WEBLEGAL, Italy.

The Respondent is Netsmedia, Jonathan Petit, France.

2. The Domain Name and Registrar

The disputed domain name <nexkeys.com> is registered with OVH (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2020. On February 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 20, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center sent an email communication to the parties in English and French on March 2, 2020 regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain name is French. The Complainant submitted a request for English to be the language of the proceeding on March 3, 2020. The Respondent did not submit any communication regarding the language of the proceeding.

The Center verified that 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 in both English and French, and the proceedings commenced on March 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2020. The Respondent sent two emails to the Center on March 12, and April 8, 2020. The Center notified the commencement of the Panel Appointment on April 8, 2020.

The Center appointed William A. Van Caenegem as the sole panelist in this matter on April 14, 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 is a company registered in Cyprus. Since 2015 it has run an online e-commerce activity using the trade name NEXTKEYSYS and more recently on autonomous e-commerce service.

The Complainant is the registered owner of the figurative European Union trade mark NEXTKEYS in relation to Classes 9, 42 and 45 (software, software design and software licensing), registered on August 3, 2019 (Registration No 018046857).

The Complainant’s domain name <nextkeys.io> was registered on August 7, 2018.

The disputed domain name was registered on August 15, 2019. According to the evidence submitted by the Complainant, the disputed domain name was used to mirror the Complainant’s website.

5. Parties’ Contentions

A. Complainant

The Complainant has trademark rights in NEXTKEYS in relation to the advertising and sale of software ‘keys’. It has used this mark since 2015 and it was registered, as indicated above, in August 2019. The Complainant is a digital wholesale distributor of software keys and as it points out, also a top merchant on “Kinguin.net”.

The Complainant draws attention to the fact that the disputed domain name was registered one year after the registration of the Complainant’s domain name <nextkeys.io>.

The Complainant points out that the disputed domain name is nearly identical its domain name <nextkeys.io>. The only effective difference is the omission of the letter ‘t’. The Complainant also says that the website of the Respondent at the disputed domain name had an identical layout to its own. Further, the Complainant indicates that this is a case of typosquatting. The word ‘nex’ as incorporated in the disputed domain name has no meaning. In a visual, aural and conceptual comparison the relevant part of the disputed domain name is so close as to be almost identical to the Complainant’s trade mark. Both the Complainant’s domain name and trademark are wholly incorporated in the disputed domain name, and the different extension is of no consequence. Furthermore, according to the Complainant it is also relevant that the website to which the disputed domain name resolves is very similar in layout and appearance to its own website. The presence of the Complainant’s NEXTKEYS trademark in a dominant position on the Respondent’s website is evidence of a ‘cut and past’ undertaken by the Respondent. Any person coming across the Respondent’s website is bound to mistake it for that of the Complainant, or so the latter contends.

Further the Complainant alleges that the Respondent’s intended use is a direct and unlawful exploitation of the Complainant’s trademark. The Respondent is in no way licensed or permitted to use the Complainant’s trademark. The Respondent’s name is not related to the disputed domain name in any way nor does the Respondent appear to have any relevant trademark rights. The Respondent’s website does not in fact directly sell anything but furnishes a link to another website that sells keys for computer software, namely computer games. The domain name that resolves to that other website is also registered by the Respondent. According to the Complainant the fact that the only live link on the relevant website takes an Internet user to a site selling competing products is an indication of bad faith. The Respondent has also replicated the look and feel of the Complainant’s website, including the representation of certain letters comprised in its mark, the colour scheme and the overall layout.

Therefore the Complainant suggests that the disputed domain name is simply a decoy to divert Internet users from the Complainant’s website and lure them into buying software from the Respondent’s website.

B. Respondent

On April 8, 2020, the Respondent contended that the disputed domain name was already deleted. However, the due date for a Response was March 31, 2020 and the Center thus proceeded to appoint a Panel in this matter.

6. Discussion and Findings

A. Language of the proceeding

The language of the Registration Agreement appears to be French. However, the Complainant requested that the language of the proceeding be English. The Complainant points to the expense involved in translation into French of relevant documents; the fact that the few communications by the Respondent were in English; the fact that the website to which the disputed domain name resolves was in English; the disputed domain name is composed of two English words; and the said registration agreement was in fact in several languages including English.

For the reasons proffered by the Complainant the Panel determines that the present proceedings be conducted in English in accordance with paragraph 11(a) of the Rules.

B. Identical or Confusingly Similar

The Panel finds that the Complainant has trademark rights in NEXTKEYS. Moreover the Complainant also contends that it has common law rights in “nextkeys” as a newly minted term.

The disputed domain name is not identical to the Complainant’s NEXTKEYS trademark. However, it differs only in one small aspect (i.e. the omission of the letter “t)) that neither visually, nor aurally, nor in any conceptual sense distinguishes it at all from the Complainant’s mark. That trademark is immediately recognizable in the disputed domain name. The fact that the registered mark is a figurative mark (with representation of the words NEXTKEYS in a particular and striking manner) does not detract from the manifest presence of that registered mark in the disputed domain name.

The gTLD “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.

Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant’s trade mark NEXTKEYS.

C. Rights or Legitimate Interests

The Respondent is not licensed nor authorized to use the Complainant’s NEXTKEYS trademark in any way. There is nothing to indicate that the Respondent is known by the disputed domain name or the term NEXTKEYS or NEXKEYS. The Respondent has established a website to which the disputed domain name resolves, that in many ways mirrors the look and feel of the Complainant’s website, and replicates its NEXTKEYS mark almost identically. All these actions are indicative of an attempt to free-ride on the Complainant’s reputation by deceiving consumers into thinking the Respondent’s website at the disputed domain name is that of the Complainant. They are not suggestive of any activity that could be said to be legitimate or constitutive of rights. The Respondent did not in any way attempt to counter the Complainant’s submissions.

Therefore the Panel holds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name.

D. Registered and Used in Bad Faith

As indicated above the disputed domain name resolved to a website that presented as a mirror image of the Complainant’s relevant e-commerce site. It replicated the Complainant’s trademark on that site without any authorization. The Panel finds thus that the Respondent was aware of the Complainant’s commercial activities, its trademark and the layout of its legitimate website. Moreover this is a case of cybersquatting which indicates full awareness of the Complainant’s mark and prior rights and a deliberate and dishonest attempt to attract Internet users and consumers and lead them to a website where competing services to the ones they seek are made available as described under paragraph 4(b)(iv).

The Panel therefore holds that the disputed domain name was registered and 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 <nexkeys.com> be transferred to the Complainant.

William A. Van Caenegem
Sole Panelist
Date: April 27, 2020

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