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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Scotch & Soda B.V. v. D-Max Ltd

Case No. DNL2011-0058

1. The Parties

Complainant is Scotch & Soda B.V. of Hoofddorp, The Netherlands, represented by Zacco Netherlands B.V., The Netherlands.

Respondent is D-Max Ltd of Charlestown, Saint Kitts and Nevis.

2. The Domain Name and Registrar

The disputed domain name <scotchsoda.nl> (the “Domain Name”) is registered with SIDN through EuroDNS S.A.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2011. On August 26, 2011, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain name. On August 29, 2011, SIDN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).

In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 30, 2011. In accordance with the Regulations, article 7.1, the due date for Response was September 19, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 20, 2011.

The Center appointed Willem Hoorneman as the panelist in this matter on October 7, 2011. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.

4. Factual Background

Complainant is a Dutch company active in the fashion industry, in particular in the field of designing, retailing and selling clothes, under the trade name “Scotch & Soda B.V.” and has been undertaking commercial activities on a permanent basis under such trade name since 2001. Complainant currently holds over 30 own retail stores worldwide, more than 7,000 other sales points and has an online presence with an integrated web store.

Complainant is the owner of a number of SCOTCH & SODA trademark registrations, including the following relevant trademark registrations for, inter alia, clothing, footwear and headgear (hereinafter collectively referred to as the “Trademarks”):

1. Benelux trademark registration for SCOTCH & SODA (no. 401396), registered on July 18, 1984;

2. Benelux trademark registration for SCOTCH & SODA and device (no. 623806), registered on April 15, 1997; and

3. Community trademark registration for SCOTCH & SODA (no. 003593498), registered on March 29, 2005 (seniority of the Benelux trademark registration SCOTCH & SODA (no. 401396) has been invoked).

The Domain Name was first registered on July 7, 2009. Respondent became the current registrant of the Domain Name by a change of registrant on June 7, 2010. The Domain Name directs to a so-called parking page.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Domain Name is identical or confusingly similar to its Trademarks and its trade name “Scotch & Soda B.V.”.

Complainant claims that Respondent has no rights to or legitimate interests in the Domain Name. According to Complainant, Respondent has no trademark rights and does not undertake public activities on a permanent basis under the name “Scotch & Soda”.

Complainant furthermore alleges that Respondent is not using the Domain Name for a bona fide offering of goods or services. The use of the Domain Name cannot be described as legitimate noncommercial or fair use without intent for commercial gain, because the website under the Domain Name is a constantly changing so-called “Pay Per Click” (PPC) website with different links and references, including to other trademarks; Complainant’s examples include the fashion industry.

Complainant asserts that the Domain Name is registered or is being used in bad faith, as Complainant has older trademark rights and its Trademarks and trade name are well known in the fashion industry. Therefore it seems likely that Respondent was aware of Complainant’s Trademarks when registering the Domain Name and at minimum turned a blind eye to Complainant’s rights. Complainant states that the Domain Name is being used to gain commercial benefit from Complainant’s success and reputation.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Article 10.3 of the Regulations provides that in the event that a respondent fails to submit a response, the complaint shall be granted unless the panelist considers it to be without basis in law or fact. The Panel notes that, in accordance with article 16.4 of the Regulations, the Center has fulfilled its obligation to employ reasonable available means to achieve actual notice of the Complaint to Respondent.

Based on article 2.1 of the Regulations, a request to transfer a domain name must meet three cumulative conditions:

A. The disputed domain name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which the complainant has rights, or other name by means of article 2.1 (a) under II of the Regulations; and

B. The respondent has no rights to or legitimate interest in the disputed domain name; and

C. The disputed domain name has been registered or is being used in bad faith.

Considering these conditions, the Panel rules as follows:

A. Identical or Confusingly Similar

Complainant has based its Complaint on its trade name and its Trademarks and has submitted copies of the trademark registrations from which it follows that it is the holder of the Trademarks. These (Benelux and Community) Trademarks qualify as trademarks protected under Dutch law.

It is established case law that the top level domain “.nl” can be disregarded in assessing the similarity between the relevant trademark(s) on the one hand, and the disputed domain name on the other. In this regard, the Domain Name could be considered practically identical to the Trademarks and the trade name of Complainant. Further, the only difference between the Domain Name and the Trademarks or trade name is the absence of the symbol “&” between the elements “scotch” and “soda”, which does not make any relevant difference (see also: XS4ALL Internet B.V. v. Terminte, WIPO Case No. DNL2009-0042). As for the rest, the Domain Name is textually (and therefore visually and phonetically) identical to the Trademarks and trade name of Complainant.

Therefore, the Panel finds that the Domain Name is confusingly similar to Complainant’s Trademarks and trade name.

B. Rights or Legitimate Interests

Complainant must demonstrate that Respondent has no rights to or legitimate interest in the Domain Name. This condition is met if Complainant makes a prima facie case that Respondent has no such rights or interests, and Respondent fails to rebut this (see: Technische Unie B.V. and Otra Information Services v. Technology Services Ltd., WIPO Case No. DNL2008-0002).

The record does not include any indication that Respondent has any relevant trademark or trade name rights regarding the term “scotchsoda” or “Scotch & Soda”. Complainant has not licensed or otherwise permitted Respondent to use the Trademarks and/or the trade name of Complainant.

Respondent’s failure to submit a Response deprived it of an opportunity to show rights to or legitimate interests in the Domain Name. It may be assumed that Respondent was and is not known under the name “scotchsoda”.

The Domain Name links to a parking page that appears to contain various links and references to other (commercial) websites and trademarks. It is established case law that such parking pages built around a third party’s trademark as a rule do not constitute a bona fide offering of goods or services, nor do they constitute a legitimate noncommercial use of a trademark (see: mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006; The Knot, Inc. v. In Knot we Trust LTD, WIPO Case No. D2006-0340; Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598; and Coöperatieve Raiffeisen-Boerenleenbank B.A. (Rabobank Nederland) v. Nguyet Dang, ND Dang, WIPO Case No. DNL2010-0074). In the present case, the Panel notes that the linked pages also cover the area of fashion.

Based on the foregoing, the Panel is of the opinion that Respondent has no rights to or legitimate interest in the Domain Name.

C. Registered or Used in Bad Faith

The registration of the Trademarks as well as the use of the trade name “Scotch & Soda B.V.” by Complainant predates the Domain Name’s registration by several years. As Complainant owns trademark rights effective and enforceable in The Netherlands and is located in The Netherlands where it has been active for many years, while the Domain Name is in the “.nl” domain, indicating that it is directed at users in The Netherlands, the Panelist deems it likely that Respondent was aware of Complainant’s (well-known) Trademarks and/or trade name when registering the Domain Name.

In addition, a simple trademark register search would have informed Respondent of the existence of the Trademarks, while the extracts of a recent Google search carried out by Complainant (submitted as annexes to the Complaint) on the search terms “scotch & soda” and “scotch and soda” show that the first four respectively seven, and nine out of the first ten (unsponsored) search results refer to the Trademarks of Complainant, with in each case the first result referring to Complainant’s own website under the domain name <scotch-soda.com>. Therefore, even if Respondent had not actually been aware of Complainant’s rights, a small effort on its part would have revealed those rights. If Respondent has not made that effort, it has been willfully blind to such rights.

However this may be, the links to other fashion companies reinforce the presumption that Respondent is using the Domain Name to attract Internet users to its website, by creating a likelihood of confusion with Complainant’s Trademarks as to the source, affiliation, or endorsement of Respondent’s website, thereby gaining commercial benefit from the reputation of Complainant and its Trademarks.

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

7. Decision

For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name <scotchsoda.nl> be transferred to Complainant.

Willem Hoorneman
Panelist
Dated: October 28, 2011

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