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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

XS4ALL Internet B.V. v. Usenet Nomads

Case No. D2003-0469

 

1. The Parties

The Complainant is XS4ALL Internet B.V., a private limited company, whose registered office is in Amsterdam, the Netherlands and place of business in Diemen, the Netherlands, (the "Complainant"), represented by Ms. C. A. Thomas, of Van Doorne Lawyers in Business, Amsterdam, the Netherlands.

The Respondent is Usenet Nomads, an entity of an unknown nature, with an address in Bangkok, Thailand (the "Respondent"), according to Go Daddy Software, Inc.’s WHOIS database showing the Registrant (Complaint, Annex I).

 

2. The Domain Name and Registrar

The disputed domain name < sxs4all.com> is registered with Go Daddy Software, Inc.

 

3. Procedural History

The Complaint was submitted in hard copy to the WIPO Arbitration and Mediation Center (the "Center") on June 17, 2003, in accordance with the Uniform Domain Name Dispute Resolution Policy (the "Policy"), approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, 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"). On June 20, 2003 the Complaint was received by e-mail.

On June 18, 2003, the Center sent an Acknowledgement of Receipt of Complaint to the Parties. The communication was made to the Respondent by e-mail.

At the Center’s request for registrar verification of June 18, 2003, concerning the disputed domain name, Go Daddy Software, Inc. transmitted its verification response to the Center by e-mail on June 18, 2003, confirming inter alia that the Respondent is listed as the Registrant of the disputed domain name, and it further provided the contact details for the Registrant and the technical, administrative and billing contact. The Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules and the WIPO Supplemental Rules.

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center sent the Complaint and a formal Notification of Complaint and Commencement of Administrative Proceeding to the Respondent on June 25, 2003, by courier and e-mail, using the contact details listed in the Registrar’s WHOIS database. The courier package was undeliverable due to the fact that the address provided by the Respondent was incorrect. The e-mail transmitted to Respondent’s e-mail address was also returned. In accordance with the Rules, paragraph 5(a), the due date for response was July 15, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 22, 2003, by courier and e-mail.

Although the Center’s courier package with the Complaint was not deliverable at the Respondent’s address, the Panel finds that the Center has discharged its responsibilities to make reasonable efforts to try to notify the Complaint to the Respondent pursuant to the Rules, paragraph 2(a), and that the Notification of Respondent Default was also properly notified.

The Center appointed Ms. Foteini Papiri as the Sole Panelist in this matter on July 29, 2003. The Panelist 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. Thus, the Panel finds that it was properly constituted.

The Panel, sharing the assessment of the Center, independently finds that the Complaint was filed in accordance with the requirements of the Policy, the Rules and the Supplemental Rules, and that payment of the fees was properly made.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondent’s default in responding to the Complaint). The registration agreement for the domain name at issue has been done and executed in English by Respondent and Registrar. Complainant has submitted its Complaint in English. In the absence of any special circumstance for the Panel to determine otherwise, as provided in the Rules, paragraph 11, the language of this proceeding is English.

 

4. Factual Background

Because the Complaint is formally in compliance with the Policy, the Rules and the Supplemental Rules, and because Complainant’s allegations and documents enclosed with the Complaint have not been contested, the Panel finds the following facts as having been sufficiently established:

Complainant is the oldest and one of the largest Internet Service Providers in the Netherlands and has been active as an Internet Service Provider since 1993. It was the first provider in the Netherlands and one of the first worldwide to make the Internet accessible to the general public. Anyone in the Netherlands who has been in contact with Internet is familiar with Complainant. Complainant’s strategy has always been to provide high quality access to the Internet using all available telecommunications techniques, such as GPRS, ADSL and circuit-switched telephony.

Complainant owns multiple trademark and service mark registrations for the XS4ALL mark, including the following (Complaint, Annex III):

i) Benelux Registration 617 399, issued November 24, 1997, for the word mark XS4ALL for goods and services in classes 9, 25, 35, 38, 41 and 42.

ii) European Community trademark registration 000413732, issued May 24, 2000, for the mark XS4ALL for goods and services in classes 9 (magnetic data carriers, optical data carriers), 25 (clothing, footwear, headwear), 38 (telecommunications and making available telecommunication devices necessary in order to request, store and view information via the Internet; electronic news services), 41 (providing of training; cultural activities) and 42 (computer programming, graphic designing with regard to the Internet).

iii) U.S. Federal Registration No. 2,519,012, issued December 18, 2001, for the word mark XS4ALL for: "telecommunications services, namely, providing telecommunications access to a global computer network and other telecommunications networks; electronic transmission of data, images, content and documents via computer terminals; electronic mail and messaging services; facsimile transmission".

iv) Benelux Registration 612 698, issued September 2, 1997, for the figurative mark XS4ALL for goods and services in classes 9, 25, 35, 38, 41 and 42.

v) European Community trademark registration 000326124, issued March 26, 1999, for the figurative mark XS4ALL for goods and services in classes 9 (magnetic data carriers, optical data carriers), 25 (clothing, footwear, headwear), 38 (telecommunications and making available telecommunication devices necessary in order to request, store and view information via the Internet; electronic news services), 41 (providing of training; cultural activities) and 42 (computer programming, graphic designing with regard to the Internet).

vi) U.S. Federal Registration No. 2,519,011, issued December 18, 2001, for the figurative mark XS4ALL for: "telecommunications services, namely, providing telecommunications access to a global computer network and other telecommunications networks; electronic transmission of data, images, content and documents via computer terminals; electronic mail and messaging services; facsimile transmission".

Complainant has on-line presence at the domain names <xs4all.com>, <xs4all.net> and <xs4all.org>, where Complainant’s background is set out and Complainant’s available services are presented.

In two separate proceedings, the Amsterdam District Court and in one of these proceedings also the Court of Appeal have confirmed that the mark XS4ALL is well-known and highly distinctive and have further upheld that also the part XS4 in itself is highly distinctive[1].

Over the years, members of the Dutch Internet community have come to recognize the XS4ALL mark as indicating a product or service originating with the Complainant.

According to Go Daddy Software, Inc.’s WHOIS database records furnished by the Complainant, the record for the disputed domain name < sxs4all.com> was created on February 23, 2001, and was last updated on December 19, 2002 (Complaint, Annex I).

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that: (1) the domain name <sxs4all.com> is confusingly similar to the marks in which the Complainant has rights; and (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name was registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and has not made submissions whatsoever. Under paragraph 5(e) of the Rules, it is provided that if a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the Complaint. Under paragraph 14(b) of the Rules, when a party defaults in complying with any of the requirements of the Rules, in the absence of exceptional circumstances, the Panel is entitled to "draw such inferences therefrom as it considers appropriate". No exceptional circumstances have been brought to the Panel’s attention. Accordingly, the Panel makes the findings below on the basis of the material contained in the Complaint.

 

6. Discussion and Findings

This dispute is properly within the scope of the Uniform Domain Name Dispute Resolution Policy, and the Administrative Panel has jurisdiction to decide the dispute. The registration agreement, pursuant to which the domain name that is the subject of this Complaint was registered, incorporates the Policy.

The Respondent is required to submit to a mandatory administrative proceeding in accordance with paragraph 4(a) of the Policy, because the Complainant asserts, in compliance with the Rules of Procedure, that:

(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 domain name;

(iii) the disputed domain name has been registered and is being used in bad faith.

Under Rules, paragraph 10(a), the Panel is allowed inter alia to independently visit the Internet in order to obtain additional light in this default proceeding.

On July 31, 2003, the Panel attempted to visit Respondent’s website at the URL "www.sxs4all.com", using the Internet Explorer browser. The <sxs4all.com> domain name opened to a page stating "SXS4ALL.COM is Under Construction – Please visit us later" and the Panel was automatically transferred to a test page with different listings.

The Complaint is well founded. The specific requirements of paragraph 4(a) under the Policy, which need to be proven cumulatively, are examined below.

A. Identical or Confusingly Similar

Beyond any doubt, the Complainant, XS4ALL Internet B.V., has rights in the mark XS4ALL registered for multiple goods and services.

The disputed domain name incorporates the mark XS4ALL (read as "access for all"), which constitutes its most significant meaningful portion. The domain name comprises of an extra "s", added before the mark XS4ALL (read as "s access for all").

The Complainant has used the mark XS4ALL in connection with a wide variety of Internet services. As a consequence, the public has come to perceive goods and services that are offered under an XS4ALL mark or a slight variation of the same as emanating from or being endorsed by or affiliated with Complainant. The addition of the letter "s" to the mark XS4ALL is a slight variation of the Complainant’s mark, which the average Internet user would expect the Complainant or its affiliates to use in connection with the mark XS4ALL to identify its goods or services.

The Panel finds that the domain name is confusingly similar to the XS4ALL mark, in which the Complainant has proven to have rights, pursuant to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

By its default, Respondent has not contested the allegation of the Complainant that the Respondent lacks any rights or legitimate interests in the domain name.

Complainant has had presence in the Dutch Internet Service Provider market since 1993, and Complainant’s first use of the XS4ALL mark predates the domain name registration. In connection with Complainant’s offering of goods and services, the XS4ALL mark acquired widespread recognition and goodwill. Because Complainant’s XS4ALL Benelux and European Community trademark and service mark registrations were issued before the registration of the disputed domain name, the Panel finds that the Complainant has prior trademark and service mark rights and the Respondent had actual or most likely knowledge of the well-known mark XS4ALL.

Respondent appears to have no corporate, partnership or fictitious business name or business listing registration under the domain name, nor has it claimed any rights with respect to the domain name <sxs4all.com>. Respondent also failed to demonstrate legitimate interests or "bona fide" offering of goods or services in respect of the domain name <sxs4all.com>.

Mr. Hans van der Vlugt, a Dutch national, was the first Registrant of the disputed domain name. On the website linked to the domain name <sxs4all.com> Mr. Van der Vlugt initially offered subscribers access to an anonymous proxy server and an anonymous remailer. These services were offered for commercial gain under a logo with the words "Secure Access 4ALL" and they enabled subscribers to access the Internet anonymously, being only identified by the IP number of <sxs4all.com>, or to send e-mail without the IP address or e-mail address being traceable (Complaint, Annex IV).

Later on, when negotiations between Mr. Van der Vlugt and the Complainant were underway for the transfer of the domain name to its rightful owner, Mr. Van der Vlugt transferred the domain name <sxs4all.com> to the Respondent and at the same time appeared as its spokesperson to the Complainant, informing it that the domain name would be further transferred on July 1, 2003, to a foreign adult site host, who was interested in the disputed domain name. According to Go Daddy Software, Inc.’s WHOIS database, such transfer has not taken place to this date. Currently, the domain name <sxs4all.com> resolves to a website stating "SXS4ALL.COM is Under Construction – Please visit us later" and the Internet user is automatically transferred to a test page with different listings. Trademark research shows that no trademark registration has been filed for either SXS4ALL or SECURE ACCESS 4ALL as a Benelux, European Community or US trademark or service mark.

In any case, the result of the test independently conducted by the Panel did not show any evidence as to the rights or legitimate interests of the Respondent in the domain name pursuant to paragraph 4(c) under the Policy, nor could the Panel find any indication of "bona fide" offering of goods or services. Furthermore, there is no evidentiary support that the Respondent, as an individual, business, or other organization, has been commonly known by the domain name or that it is making a legitimate non-commercial or fair use of the domain name.

Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name at issue, pursuant to paragraph 4(a)(ii) and 4(c) of the Policy.

C. Registered and Used in Bad Faith

There is no doubt as to the fact that the first Registrant of the disputed domain name, Mr. Van der Vlugt, registered and used the domain name <sxs4all.com> in bad faith. He was well aware, prior to his registration and use of the domain name, that Complainant was the owner of the XS4ALL mark because of the widespread and long-standing advertising and marketing of goods and services under the XS4ALL mark.

On March 18, 2002, Complainant’s legal counsel contacted the Registrant of the domain name, Mr. Van der Vlugt, to inform him that Complainant objected to the use of a domain name that incorporates Complainant’s trademark and trade name. Complainant offered to settle this matter by paying the registration costs for the domain name <sxs4all.com> under the condition that it would be transferred to Complainant. On April 11, 2002, Mr. Van der Vlugt replied to Complainant that he would be willing to transfer the domain name <sxs4all.com>, admitting that Complainant has set an example with its services and that his own website was indeed "making use" of Complainant’s fame and reputation (Complaint, Annex V).

On May 13, 2002, Mr. Van der Vlugt offered to exchange the domain name <sxs4all.com> for the domain name <mosaic.nl>, which was accepted by Complainant. However, transferring the domain name <mosaic.nl> to Mr. Van der Vlugt turned out to be impossible, since, at that time, private persons could not register a ".nl" domain name. When the rules for registering ".nl" domain names changed in January 2003, making the registration possible for private persons, Complainant tried several times to contact Mr. Van der Vlugt, but no answer was received. However, on April 17, 2003, Complainant found postings in a newsgroup on the Internet by Mr. Van der Vlugt, asking for advice whether or not to transfer the domain name. Most of the participants advised him to transfer the domain name <sxs4all.com> to XS4ALL in exchange for the domain name <mosaic.nl>, as agreed earlier. On April 22, 2003, Mr. Van der Vlugt posted another message stating that he would not be intimidated by Complainant’s efforts to stop infringement of its rights and that he had transferred the domain name <sxs4all.com> to a Thai Group with which he had a friendly relationship (Complaint, Annex VII).

The domain name <sxs4all.com> is a typographical variant of Complainant’s registered XS4ALL mark. It was registered and used by Mr. Van der Vlugt solely with the purpose of intentionally attracting for commercial gain Internet users who had made a misspelling or mistyping in the domain name <xs4all.com> or who believed that the website linked to the domain name <sxs4all.com> was an additional service offered by the Complainant, due to the similarity of the domain name to the XS4ALL mark and the similarity of the services offered by Mr. Van der Vlugt to those offered by the Complainant. It was his clear intent to profit at the Complainant’s expense by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his web site or of a product or service on his web site. Such circumstances constitute evidence of registration and use in bad faith according to the Policy, paragraph 4(b)(iv). In so doing, Mr. Van der Vlugt harmed the goodwill associated with the Complainant’s mark and engaged in "typosquatting"[2]. Once it was clear that Complainant would no longer tolerate the infringement of its trademark rights by the use of this domain name, the domain name was transferred to a third party.

It is reasonable to believe that this third party, the Respondent, prior to the transfer of the domain name registration, was also aware that Complainant was the owner of the XS4ALL mark because of the widespread and long-standing advertising and marketing of goods and services under the XS4ALL mark and was informed of the circumstances surrounding the disputed domain name <sxs4all.com>. On June 9, 2003, Mr. Van der Vlugt contacted Complainant again, this time on behalf of Respondent, as its spokesman. This action clearly indicates that Mr. Van der Vlugt’s interference was not limited to the transfer of the disputed domain name. He informed the Complainant that the domain name <sxs4all.com> would be sold to a foreign host of adult websites on July 1, 2003, for the amount of USD 2,500. Should Complainant be interested in buying the domain name, it should make a better offer (Complaint, Annex VIII).

It is clear that the Respondent is still using the domain name in bad faith, since it is engaging in negotiations with Complainant, through the first documented Registrant, to sell the domain name for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name. The domain name was transferred for no other reason than to further frustrate Complainant’s efforts to stop infringement of its legitimate rights.

Although Usenet Nomads has a postal address in Thailand, the telephone number stated in Go Daddy Software, Inc.’s WHOIS database is a Dutch mobile phone number. When it is dialled, the telephone is answered by a Dutch voicemail. There is no doubt that the domain name is owned by a Dutch entity or person.

The Respondent’s pattern of conduct clearly shows that the domain name was registered and is being used in bad faith. The Panel finds that the Complainant has proven paragraph 4(a)(iii) under the Policy.

Consequently, all the prerequisites for cancellation or transfer of the domain name are fulfilled, according to the remedies available under paragraph 4(i) of the Policy.

The Complainant has requested the transfer of the domain name.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name < sxs4all.com> be transferred to the Complainant.

 

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Foteini Papiri
Sole Panelist

Dated: August 11, 2003

 

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1. All judgments are available in .pdf format in Dutch at "http://www.domjur.nl/" (Numbers 2001-46, 2001-47 and 2002-139).
2. Numerous decisions have held that "typosquatting" constitutes both bad faith registration and use and have formed the grounds for transferring the domain names at issue to the Complainant. See, for example, VoiceStream Wireless Corporation v. Click Five et al., WIPO Case No. D2002-0190, (May 7, 2002); Dell Computer Corporation v. RaveClub Berlin, WIPO Case No. D2002-0601, (August 12, 2002); Collections, Etc., Inc. v. RaveClub Berlin, WIPO Case No. D2002-0698, (September 26, 2002).