The Complainant is B.V. of Lelystad, the Netherlands, represented by Merkenbureau Knijff & Partners B.V., the Netherlands.
The Respondent is Baffoon B.V., Richard Hoedemaker of Beverwijk, the Netherlands, represented by De Raadgevers Bedrijfsjuristen B.V., the Netherlands. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Vautron Rechenzentrum AG (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 18, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 January 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 12, 2017. Following a request from the Respondent, the Response due date was extended until February 19, 2017. The Response was filed with the Center on February 17, 2017.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on February 24, 2017. 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. 4. Factual Background
The Panel notes that the Dutch words “mijn” and “domein” translate to “my” and “domain” in English, respectively.
The Complainant trades under the name B.V. (the “Trade Name”) since 1999 and offers services in the area of telecommunication, webhosting and domain name registration.
The Complainant owns various trade marks, including:
- the Benelux device mark, consisting of a disc and the word combination “mijndomein”, filed on August 5, 2015, and registered under nr. 0979992 on August 10, 2015;
- the Benelux word mark MIJNDOMEIN.NL, filed on February 11, 2016, and registered under nr. 0990801 on April 25, 2016;
hereafter together referred to as the “Trade Marks”.
On September 26, 1999, the Complainant registered the domain name .
The Respondent registered the Domain Name on January 16, 2003. Until recently, the Domain Name redirected to the website of “Budget Webhosting”, which is a trade name of the Respondent.
The Respondent offers the same services as some of those offered by the Complainant and owns a Benelux device mark, filed on December 20, 2011, and registered under nr. 0912332 on March 12, 2012, consisting of the word combination “mijndomein”, beneath which in small font the words “Gewoon betere hosting maar dan wel met alles erop en eraan, en voor minder geld” (“Simply better hosting but with all-in and cheaper”), and to the right a drawing of a row of penguins, all on a light blue background.
By letter of September 29, 2016 the Complainant has demanded that the Respondent cease and desist from using the Domain Name and transfer the Domain Name to the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant submits that it has been using the Trade Name since July 1, 1999. According to the Complainant the Domain Name is identical or confusingly similar to the Trade Name and the Trade Marks, the only difference being the domain name extension (“.com” versus “.nl”) which is a technical addition and non-distinctive.
The Complainant asserts that the Domain Name was being used by the Respondent to redirect traffic to the website of “Budget Webhosting”, which offers services identical to the services offered by the Complainant under the Trade Name and the Trade Marks.
The Complainant states that the only purpose of the Domain Name for Respondent was to redirect traffic intended for the business and the website of the Complainant, to the website of the Respondent who offers identical services. The Complainant points out that after receiving the cease and desist letter of September 29, 2016 the Respondent no longer redirected the Domain Name to the website of Budget Webhosting and instead connected it to a webpage that included the indication “mijndomein”. According to the Complainant, the Domain Name has never been used in connection with the indication “mijndomein” before.
Furthermore, the Complainant submits that the Respondent’s device mark (described under Section 4 above) does not give the Respondent any right to the word combination “mijndomein”, as these words are descriptive, while the only distinctive element is the penguin image which, the Complainant asserts, is the reason why the Benelux Bureau for Intellectual Property did not refuse this trade mark.
The Complainant contends that it has obtained a registration for the word mark MIJNDOMEIN.NL in 2016 by proving that this mark had acquired distinctive character through longtime and intensive use for webhosting and domain name registration. According to the Complainant, it has conducted from 2009 to 2013 extensive advertising campaigns on television and radio and in print media, involving a budget of more than EUR 300,000. In order to demonstrate the achieved brand awareness the Complainant has submitted a report on an independent survey carried out in the Netherlands showing a spontaneous brand awareness in the Netherlands of 5.05 percent for the MIJNDOMEIN.NL word mark and “assisted” brand awareness of 55.3 percent. In addition, the Complainant has submitted documents which in its view shows that over 250,000 users visit the website connected to the domain name every month.
Furthermore, the Complainant states that by redirecting the Domain Name to the website of “Budget Webhosting”, the Respondent has directed relevant public looking for the Complainant’s website under the domain name in a misleading manner to the website of the Respondent being a competing provider of identical and similar services, thereby trying to disrupt the business of the Complainant and intentionally attempting to attract for commercial gain Internet users to the Respondent’s website, by creating a likelihood of confusion with the Trade Marks as to the origin of the products and services of the Respondent as well as falsely suggesting an affiliation with or endorsement of the Respondent by the Complainant. B. Respondent
The Respondent submits that the Complainant has no right to the Complaint due to lapse of time, since the Domain Name was already registered in 2003. Since the Complainant waited thirteen years to submit the Complaint, the Respondent states, apparently there is no confusion between the Domain Name and the Trade Marks or the Trade Name. According to the Respondent the websites connected to the Domain Name and to the Complainant’s domain name are totally different. The Respondent also points out that when a customer visits the website connected to the Domain Name, it is redirected to the website of Budget Webhosting, a trade name used by the Respondent.
Furthermore, the Respondent states that the Trade Marks should not have been registered since (i) the Respondent has an older trade mark right containing the words MIJNDOMEIN; (ii) the words “mijndomein” and “” of which the Trade Marks consist are descriptive, while the Complainant has not submitted sufficient evidence of the Trade Marks having acquired distinctive character (inburgering).
According to the Respondent, for this purpose the Complainant should provide documents concerning the market share of the mark, the intensity, the geographical widespread, the duration of the use of mark, the amount of advertisement costs, and declarations of the Chamber of Commerce or other professional associations. Instead, the Respondent points out, the Complainant has only submitted a brand awareness report from which, the Respondent submits, it appears that only 3 percent of the audience recognizes the Complainant and mentions the Trade Mark which, the Respondent states, is insufficient for inburgering. As to the visitor statistics, the Respondent asserts that the document submitted is illegible.
Furthermore, the Respondent denies that the redirecting of the Domain Name to a website of Budget Webhosting was done to take advantage of the apparent success of the Complainant.
The Respondent submits that it will (the Panel understands) file a case with a Dutch court in order to obtain cancellation of the Complainant’s MIJNDOMEIN.NL word mark, on the ground that it is descriptive and has no distinctive character.
The Respondent also asserts that the Complainant has not acted against possible infringement (the Panel understands: by the Domain Name) for a period of thirteen years, which has led to the dilution of the word mark MIJNDOMEIN.NL.
Finally, the Respondent requests that the Complainant be ordered to pay the Respondent’s costs (the Panel understands: made in connection with the present proceedings). 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to have the Domain Name transferred to it, the Complainant must demonstrate each of the following:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Panel adds that the aim of the Policy is to address clear cases of abusive domain name registration (cybersquatting) in as efficient and cost effective a manner as is fairly possible. In principle envisaging only one round of pleadings, the Policy is not designed to adjudicate any domain name dispute.
In light of the Respondent’s submission that the Complainant has waited thirteen years after the Domain Name was registered to bring this case, the Panel notes that UDRP panels have recognized that the doctrine or defense of “laches” as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements (see the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.10).
However, this does mean that the Complainant will have to show that the Respondent does not have rights or legitimate interests in the Domain Name and, if that evidence has been provided, that the registration in 2003 was made in bad faith. A. Identical or Confusingly Similar
The Complainant has shown that it has rights in the Trade Marks for purposes of the Policy by submitting copies of the registration certificates of the Benelux Bureau for Intellectual Property. In addition, the Complainant has shown that it has rights in the Trade Name.
The Domain Name is identical or confusingly similar with the Trade Marks and the Trade Name. The dominant element is “mijndomein”, the only differences being the domain extensions, versus MIJNDOMEIN.NL and, in case of the Trade Name, the addition of the legal entity ( B.V.). Such extensions, as well as the denomination of the legal entity, are usually disregarded in determining confusing similarity as these are merely technical (or, in case of the Trade Name, legal) registration requirements (see paragraph 1.2 of the WIPO Overview 2.0).
Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Marks and the Trade Name. B. Rights or Legitimate Interests
In the UDRP context it can be difficult, if not impossible, to prove a negative (i.e., that the Respondent lacks any rights to or legitimate interests in the Domain Name), especially where the Respondent, rather than the Complainant, would be best placed to have specific knowledge of rights to or interests in the Domain Name. It follows that the Complainant has to make out a prima facie case that the Respondent lacks rights to or legitimate interests in the Domain Name (see, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455). If the Complainant meets this requirement and the Respondent fails to rebut this, the required evidence is deemed to have been provided (see, e.g., Accor v. Eren Atesmen,WIPO Case No. D2009-0701).
The Complainant thus must make a prima facie case that the Respondent does not have a trade mark or other right corresponding to the Domain Name, was not authorized by the Complainant to use or register a domain name containing the Trade Marks and did not (i) use or prepare to use the Domain Name in connection with a bona fide offering of goods or services before any notice of the dispute; nor (ii) as an individual, business, or other organization was commonly known by the Domain Name; nor (iii) is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Trade Marks.
The Panel notes that the Complainant has not argued, nor provided prima facie evidence, that the Respondent as an individual, business, or other organization has not been commonly known by the Domain Name. This implies that it has not met the burden of proof that the Respondent has no rights or legitimate interests, as it has to establish a prima facie case to this effect.
The Panel also notes that the Complainant has not shown that the Respondent did not use the Domain Name in connection with a bona fide offering of goods or services before any notice of the dispute. The Complainant has argued that the Domain Name was used “until October 2016” by the Respondent (in short) to redirect traffic intended for the business and the website of the Complainant, to the website of the Respondent who offers identical services, which might not be a bona fide offering of those services by the Respondent. In order to make out a prima facie case the Complainant would need to provide evidence that, although the Respondent has used the Domain Name since 2003, the Domain Name was now (or has been since any time after 2003) used to divert potential customers of the Complainant to the Respondent’s website. However the Complainant has not submitted evidence of such use, which the Respondent has denied.
On the basis of the above the Panel concludes that the Complainant has not succeeded in providing the required prima facie evidence that the Respondent has no rights or legitimate interests in the Domain Name.
In these circumstances, the Complaint must fail. The Panel adds here that this finding is confined to the Policy without prejudice to any possible further judicial proceedings. The Complainant remains free to seek remedies in other fora, and indeed a court may be better placed to decide a dispute like the present one, as it will have available an evidentiary record developed through inter alia pleadings and cross-examination. C. Registered and Used in Bad Faith
In view of the Panel’s conclusion under Section 6.B it is not necessary to discuss whether the Complainant has shown that the Domain Name was registered and is being used in bad faith. D. Remedy
The Respondent requests the Panel to deny the Complaint and award it a monetary fee based, as the Panel understands, on the costs related to the administrative proceedings.
The Policy, paragraph 4(i) provides that the remedies available are limited to cancellation or transfer of the domain name, and does not provide for monetary relief. Tommy Lee v. Netico, Inc.,WIPO Case No. D2005-0915. 7. Decision
For the foregoing reasons, the Complaint is denied.
Wolter Wefers Bettink
Sole Panelist
Date: March 13, 2017
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