The Complainant is Stichting VVV Groep Nederland with its registered office in Leersum, the Netherlands, represented by V.O. Patents & Trademarks, the Netherlands.
The Respondent is SMTM of Valletta, Malta.
The disputed domain name <vvvs-hertogenbosch.nl> (the “Domain Name”) is registered with SIDN through The Registrar Company B.V.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2013. On November 14, 2013, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On November 14, 2013, SIDN transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on November 18, 2013. The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on November 19, 2013. In accordance with the Regulations, article 7.1, the due date for Response was December 9, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 11, 2013.
On December 16, 2013, the Center received an email communication from the Respondent. On December 17, 2013, the Center acknowledged receipt of the email communication and informed the Respondent that the Response due date had passed and that the email communication would be forwarded to the Panel for its consideration.
The Center appointed Hub J. Harmeling as the panelist in this matter on January 6, 2014. 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.
The Complainant provides, as a market leader, a wide range of leisure, tourist and recreation services in the Netherlands since 1885. The product range of the Complainant includes, through its member organizations and websites, the provision of tourist information for both Dutch and foreign residents at local, regional, national and international level.
Domain Name
The Domain Name was first registered on November 13, 2012. The Respondent became the registrant of the Domain Name on July 23, 2013. The Domain Name is in use.
Trademarks
The Complainant owns the following Benelux trademarks:
- Benelux trademark registration no. 157946 for the VVV word mark, registered for goods and services in classes 35, 39, 41 and 43, registered on December 15, 1987;
- Benelux trademark registration no. 621850 for the VVV word mark, registered for goods and services in classes 16, 35, 39, 41 and 43, registered on June 17, 1997;
- Benelux trademark registration no. 445660 for the VVV device for goods in class 16, registered on May 4, 1988;
- Benelux trademark registration no. 158300 for the VVV device, registered for services in classes 35, 39, 41 and 41, registered on December 14, 1988.
These trademarks (hereinafter jointly referred to as the “Trademarks”) are being used in relation to the goods and services registered, more in particular for providing (information on) a wide range of leisure, tourist and recreation services in the Netherlands.
Trade Name
The Complainant is also commercially active on the Internet operating a website under the domain name <vvv.nl> through which its services are also offered and advertised. In addition, various local and regional VVV-entities operate their own domain names, which all bear the element “vvv” in conjunction with the respective geographical identifier (city, village or region), such as <vvvassen.nl> or <vvvleiden.nl>.
Furthermore, the Complainant owns the trade name rights of the sign “VVV” by means of extensive and longstanding use since 1885.
The Complainant contends that the registration and/or use of the Domain Name <vvvs-hertogenbosch.nl> infringes its trademark and trade name rights as the Domain Name includes the element “vvv”, a sign in which the Complainant owns prior rights. The element “s-hertogenbosch” is merely descriptive for the geographical territory of the service, as a result of which the attention of the consumer will focus on the distinctive element “vvv”, creating a risk of confusion between the Trademarks and the Domain Name. The Complainant contends this risk is particularly relevant in this case, since the same city is known both by the name of ‘Den Bosch’ and ‘‘s-Hertogenbosch’, leading to confusion with the Domain Name <vvvdenbosch.nl> that is used by the Complainant and/or its member organizations.
Furthermore, the Complainant contends that the Respondent has no valid reason to register this exact Domain Name and that the registration thereof is detrimental to the reputation of the VVV trademark and provides the Respondent with an unfair advantage.
The Complainant contends the Respondent does not have a right or legitimate interest in the Domain Name and that the parties have never entered into an agreement that would entitle or enable the Respondent to use the trademark or trade name ‘VVV’.
The Complainant asserts that the Domain Name has been registered and/or is being used in bad faith. The Complainant claims that the Respondent must have been familiar with the Complainant and its services, and that the Respondent registered the Domain Name only in order to sell it to the highest bidder. The Complainant refers to previous .nl panel decisions in its favor in similar cases, also concerning domain names consisting of the element ‘vvv’ in conjunction with a (Dutch) geographical name (see, e.g., VVV Groep Nederland v. Balata.com Ltd., WIPO Case No. DNL2012-0042)
The Respondent asserts that the Domain Name is used as a fan site about the city of Den Bosch, which is, according to the Respondent, evident from the disclaimer on the site. The Respondent also contends that the Domain Name is not exploited commercially. In addition, the Respondent offers to sell the Domain Name to the Complainant for the price of EUR 2500.
Based on paragraph 17.2 of the Regulations the Panel accepts the English language as the formal language of these proceedings.
Even though the Respondent has not filed a timely Response, the Panel decides to take the email communication received from the Respondent on December 16, 2013 into consideration. It will therefore rule on the basis of the contentions of both parties.
Based on article 2.1 of the Regulations, a request to transfer a domain name must meet three cumulative conditions:
a) The 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 interests in the domain name; and
c) The domain name has been registered or is being used in bad faith.
Considering these conditions, the Panel rules as follows.
The Complainant has established its rights in the trademark VVV and has submitted evidence substantiating its Trade Name and its longstanding use thereof. The Trademarks and the Trade Name are protected under Dutch law.
It is established case law that the top level domain “.nl” may be disregarded in assessing the similarity between the relevant trademark or trade name on the one hand, and the domain name on the other hand (see: Taylor Made Golf Company, Inc. v. Lotom Group S.A., WIPO Case No. DNL2010-0067; Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).
The first element of the Domain Name – “vvv” – is identical to the Complainant’s Trademarks. The second element in the Domain Name – “s-hertogenbosch” – is non-distinctive and merely descriptive as it is the name of a Dutch town (‘s-Hertogenbosch). Noting that the first element of the Domain Name (“vvv”) is identical to the word component of the Trademarks as registered, the Panel finds that the Domain Name is confusingly similar to the Complainant’s Trademarks.
The Complainant is required to make a prima facie case that the Respondent lacks rights to or legitimate interests in the Domain Name. The Panel accepts that the Complainant has never authorized Respondent to use its Trademark and/or Trade Name and that it has no relationship with Respondent. There is no indication in the record that the Respondent has any relevant trademark or trade name rights regarding the term “VVV” or “VVV ‘s-Hertogenbosch”. It may thus be assumed that the Respondent was and is not commonly known by the Domain Name. No evidence has been brought forward that would give rise to a right to or legitimate interest in the Domain Name or in any other way to or in the acronym “VVV”. In this regard, the Panel notes that the Respondent is free to set up and maintain a fan site about the city of Den Bosch. Registering and using a domain name incorporating the Complainant’s VVV trademark to that effect, however, is not required for that purpose and such use under the referenced circumstances amounts to an intentional misrepresentation of the Respondent as being (or in some way associated with) the Complainant.
For all of the above, the Panel accepts that Respondent has no rights to or legitimate interests in the Domain Name.
Based on the evidence provided by the Complainant, the Panel accepts that the Complainant’s Trademark and Trade Name have been in use for a long time and are generally well known in the Netherlands. The Panel further notes that the Complainant has provided evidence (in the form of pre-proceeding communications) that the Respondent, apparently located in Malta, has full command of the Dutch language. In view of these circumstances the Respondent must be presumed to have been aware of the Trademarks of the Complainant prior to the registration of the Domain Name on July 23, 2013. Furthermore, upon the Complainant’s request to transfer the Domain Name, Respondent asked for valuable consideration well in excess of the documented out-of-pocket costs. The Panel therefore finds, with reference to article 3.2(a) of the Regulations, that the Domain Name has been registered in bad faith.
Moreover, regarding the Complainant’s allegation of bad faith under article 3.2(d) of the Regulations that the Respondent has intentionally attempted to attract Internet users to its site by creating a likelihood of confusion as to the source of sponsorship, the Panel concludes the following:
By using the Domain Name for a site providing recreational, leisure and touristic information and offering similar services as can be found on the website of the Complainant, the Respondent is trying to capitalize on or otherwise take advantage of the confusion among Internet users trying to reach the Complainant’s website. The disclaimer on the website at the Domain Name shows all the more that the Respondent is aware of the possibility of such confusion, and chooses to pursue its activities.
The Panel is therefore satisfied that the Respondent has registered and used the Domain Name in bad faith.
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name <vvvs-hertogenbosch.nl> be transferred to the Complainant.
Hub J. Harmeling
Panelist
Date: January 27, 2014