XS4ALL Internet B.V. v. Usenet Nomads

WIPO

Arbitration

and Mediation

Center

ADMINISTRATIVE

PANEL

DECISION

XS4ALL

Internet

B.V. v.

Usenet

Nomads

Case No. D2003-0467

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.

Foteini

Papiri

Sole Panelist

Dated:

August

11, 2003

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).

More cases by this complainant

• XS4ALL Internet B.V. v. Wim Koopman, Silvercloud Computing — DNL2018-0059 · cloudxs4all.nl, ipxs4all.nl · Transfer · 05 Dec 2018
• XS4ALL Internet B.V. v. H. van Genesen — DNL2018-0036 · 1xs4all.nl · Transfer · 14 Aug 2018
• XS4ALL Internet B.V. v. Safwan Ramadhan, Company — D2016-1044 · xs4all.xyz · Transfer · 11 Jul 2016
• XS4ALL Internet B.V. v. Terminte — DNL2009-0042 · xs4aall.nl · Transfer · 17 Sept 2009