The Complainant is Broadband Hosting B.V., the Netherlands, represented by Koninklijke KPN N.V., the Netherlands.
The Respondent is Peter van Rotterdam, the Netherlands.
The disputed domain name <nlix.net> is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2021. On October 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 13, 2021, 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 October 20, 2021, 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 October 25, 2021.
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 October 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2021. On the Respondent’s request, the due date for Response was extended until November 26, 2021, in the circumstances of this case. The Center received an email communication from the Respondent on November 13 and 17, 2021. The Response was filed with the Center on November 16, 2021.
The Center appointed Alfred Meijboom as the sole panelist in this matter on December 10, 2021. 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.
The Complainant was established in 2001 and interconnects networks, datacenters, and applications over its converged exchange fabric in and between European metropolitan areas. The Complainant is owner of the European Union and United Kingdom stylized figurative marks as depicted below, with registration number 017150996 and UK00917150996, respectively, which marks were filed on August 25, 2017, and registered on January 25, 2018, for goods and service in classes 9 and 38, including telecommunications networks, computer networks, communications networks, telecommunication services, and data transmission (the “Trademark”):
As discussed sub 6.C. below, it is unclear when the Respondent registered the disputed domain name. The disputed domain name does not resolve to an active website.
The Complainant alleges that it has become one of the most renowned providers globally of interconnection networks since it was established in 2001 and that the Trademark has a strong reputation and is widely known. According to the Complainant the “nlix” part of the disputed domain name is identical to the Trademark and, although the Top Level Domain “.net” (“TLD”) may be disregarded according to standard case law decided under the Policy, in this case the TLD may even add to the confusing similarity between the Trademark and the disputed domain name, as the Complainant business relates to “network interconnection”.
The Complainant further alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name because the Complainant had not approved the registration and/or use of the disputed domain name, and there is no indication of the Respondent’s use of, or demonstrable preparations to use the disputed domain name, or any similar name in connection with bona fide offering of goods and services, especially since the disputed domain name was, according to the Complainant, already registered on April 7, 2003. According to the Complainant, the reasons provided by the Respondent in his July and August 2021 email correspondence with the Complainant, that he registered the disputed domain name a number of years ago for a project which he never started, and had considered and is now willing to sell the disputed domain name, do not satisfy the requirement of the Respondent having a legitimate interest in respect of the disputed domain name. Furthermore, the Complainant alleges that the Respondent is not commonly known by the disputed domain name or a similar name. If the Respondent would argue that the registration of the disputed domain name predates the filing of the Trademark, the Complainant alleges that such argument would be irrelevant as the EU trademark systems is an attributive registration system which does not grant rights to a user of a similar right which was not registered as a trademark as decided in an arbitral award in Stichting International Child Care Fund Holland v. Stefan Rooijakkers, Zaaknr. WIPO2006NL13, under the then applicable Regulations for Arbitration on .nl Domain Names.
Moreover, the Complainant alleges that the Respondent’s registration of the disputed domain name was made in bad faith as the Respondent is living in the Netherlands or otherwise at least is familiar with the Dutch market, and therefore the Complainant considers it beyond reasonable question that the Respondent was well aware of the Complainant and the Trademark when he registered the disputed domain name. The Complainant therefore contends that the fact that the Respondent still chose to register the disputed domain name without a good reason, establishes registration in bad faith. The Complainant further alleges that the fact that the Respondent, in his email correspondence with the Complainant, asked a considerable amount to transfer the disputed domain name to the Complainant is a clear indication that the Respondent registered the disputed domain name primarily for the purpose of selling the disputed 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 disputed domain name, so that the disputed domain name was accordingly registered in bad faith. The Complainant also alleges that it is possible that the Respondent shall use the disputed domain name for phishing activities, which would also constitute use of the disputed domain name in bad faith. Finally, the Complainant alleges that is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, and use of the disputed domain name made in bad faith.
The Respondent alleges that, in the early days of the Internet, it was common practice for data centers to use an abbreviation which included the letters “ix”, which represented “Internet eXchange”. The Respondent further alleges that, while living in New Zealand, he had registered the disputed domain name in 1996, with “nlix” being an acronym for “Next Level Information eXchange.” According to the Respondent he has registered and used “NLIX” as tradename in 2000, while the Complainant registered and started using its trade name in the Netherlands in 2001, and its domain names <nl-ix.net>, <nl-ix.nl>, and <nlix.nl> in 2002. The Respondent contends that he could not have known in 1996 or in 2000 that the Complainant would register the Trademark which is similar to the disputed domain name. While the Respondent did receive some emails from individuals within the Complainant’s company which were intended for the Complainant’s internal communication in 2019, he argues that the associated confusion was not caused by, or can be attributed to the Respondent.
The Respondent alleges that he has rights to or legitimate interests in respect of the disputed domain name because his business under the name “NLIX.net” has been operating for 25 year in New Zealand and since February 2000 in the Netherlands, and his business name predates the use of the Complainant’s business name. The Respondent also alleges that he is known under the disputed domain name and that he uses the disputed domain name as his business email address.
The Respondent further alleges that he acquired the disputed domain name for personal and business use more than 25 years ago, which long term shows that the disputed domain name was not registered for financial gain. Furthermore, the Respondent claims that he could not have been aware of the Complainant or its Trademark when he registered the disputed domain name more than 25 years ago as they did not yet exist. According to the Respondent he does not engage in Internet activities which are similar to those of the Complainant and he has never engaged in Internet activities that could tarnish the Complainant’s good name, nor has he registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name, or in order to prevent the Complainant from reflecting the Trademark in a corresponding domain name and the Respondent has not engaged in a pattern of such conduct. And finally the Respondent alleges that he has not registered the disputed domain name in an intentional attempt to attract for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Respondent asks the Panel to makes a finding of reverse domain name hijacking.
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
It is well established that the TLD may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy (e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Complainant relies on a stylized Trademark with the letters “NLix” being the dominant textual component, which the Panel shall compare with the disputed domain name. As the disputed domain name, disregarding the TLD, exists solely of the Trademark, the Panel is satisfied that the disputed domain name is identical to the Trademark.
Consequently, the first element of paragraph 4(a) of the Policy is met.
The Complainant needs to prove all three requirements of paragraph 4(a) of the Policy, so that the failure to demonstrate one element results in the failure of the Complaint in its entirety. Accordingly, in light of the Panel’s finding sub 6.C., the Panel does not need to address the issue of the Respondent’s rights or legitimate interests in respect of the disputed domain name.
As the Complainant alleges that it has not approved the registration of the disputed domain name by the Respondent, and the Respondent claims that he registered and used the disputed domain name around 1996, or at least in or before 2000, which predates the establishment of the Complainant and the Trademark registration, the Panel shall first need to decide when the Respondent actually registered the disputed domain name. The amended Complaint stated the registration date to be April 7, 2003, while the Respondent alleges 1996.
It has been generally accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), section 4.8). In order to assess and verify the parties’ allegations and to assess the evidence attached to the Response with respect to the registration date or period of the disputed domain name the Panel checked the disputed domain name WhoIs register and found that the registered creation date is April 7, 2003, which date corresponds with the indicated date of expiry of the disputed domain name, being April 7, 2022, as communicated by the Registrar to the Center. The Response, on the other hand, refers to evidence meant to show that the Respondent, when he lived in New Zealand, used the disputed domain name already in 2000, and that the disputed domain name had been registered with different registrars before the Respondent’s current Registrar. Because the Respondent’s evidence was not entirely clear, and the Panel appreciates that it may be difficult and even impossible for the Respondent to obtain evidence of actual registration of the disputed domain name more than 20 years ago, the Panel checked the disputed domain name on the domain history checker at “https://whoisrequest.com/history/”, which tracks nameserver changes since 2002. The Panel found that the disputed domain name was already registered in 2002 – when it was connected to domain name servers in New Zealand – which was supported by copies from the Wayback machine from 2001 which were attached to the Response. The domain history also showed that the disputed domain name was not connected to a name server from February 1, 2003, to May 18, 2003, after which the disputed domain name remained registered on different nameservers in the Netherlands. These facts supports the Respondent’s allegation that he originally registered the disputed domain name in New Zealand and moved to the Netherlands while keeping the registered domain name. This would mean that the disputed domain name was originally registered and then possibly allowed to lapse, or else that accurate records were not kept by the relevant registry and/or registrars. The Panel also infers from these facts that it is more likely than not that the Respondent had registered the disputed domain name before April 7, 2003, and that the Respondent’s claim that he registered the disputed domain name around 1996 and started using the disputed domain name in 2000 is credible.
In view of the Panel’s preceding findings that it is more likely than not that the Respondent has registered the disputed domain name before 2001, when the Complainant was first established and the Trademark was filed, the Panel concludes that the Respondent, when registering the disputed domain name, could not have known of the Trademark or the Complainant and has therefore not registered the disputed domain name in bad faith. Even if the disputed domain name was registered a few years later in 2003, the Complainant has not shown conclusively that at such time the Respondent would have done so to target the Complainant’s then-new rights.
Consequently, the Complainant failed to prove the third element of paragraph 4(a) of the Policy.
The Respondent has sought a finding of reverse domain name hijacking against the Complainant.
Paragraph 15(e) of the Rules provides that “[i]f after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.” And paragraph 1 of the Rules defines “Reverse Domain Name Hijacking” to be “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
The fact that a complaint fails is not in itself a basis for a finding of reverse domain name hijacking. Indeed, UDRP panels have consistently found that the mere lack of success of a complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking (WIPO Jurisprudential Overview 3.0, section 4.16).
In the present case, there are not facts which demonstrate that the Complainant knew it could not succeed as to any of the required three elements of paragraph 4(a) of the Policy, especially as the Complainant could have believed that the date of registration of the disputed domain name was in 2003 when the Complainant was already established and using the term “NLIX” – although still many years before it the registration date of the Trademark – the disputed domain name did not resolve to an active website, and the Respondent’s admission in his correspondence preceding the filing of the Complaint that he intended to use the disputed domain name for a project which he abandoned, and was only willing to transfer the disputed domain name to the Complainant for a considerable amount.
Consequently, the Panel does not make a finding of reverse domain name hijacking.
For the foregoing reasons, the Complaint is denied.
Alfred Meijboom
Sole Panelist
Date: December 24, 2021