The Complainants are Helinox Inc. of Incheon, Republic of Korea and Helinox Europe B. V. of Amsterdam, The Netherlands, represented by Blenheim Advocaten of the Netherlands.
The Respondent is Helinox Development of London, United Kingdom of Great Britain and Northern Ireland, represented by AD Advocaten of the Netherlands. 2. The Domain Name, Registry and Registrar
The Registry of the disputed domain name is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the disputed domain name is eNom, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 20, 2018. On January 22, 2018, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On January 25, 2018, the Registry 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 amendment to the Complaint on February 5, 2018.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 6, 2018. In accordance with the ADR Rules, Paragraph B(3)(a), the due date for Response was March 20, 2018. The Response was filed with the Center on March 16, 2018.
The Center verified that the Response satisfied the formal requirements of the ADR Rules and the Supplemental Rules.
The Center appointed Alfred Meijboom as the sole panelist in this matter on March 21, 2018. 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 ADR Rules, Paragraph B(5). 4. Factual Background
The first Complainant creates lightweight chairs, tables, cots and accessories for outdoor use and owns, inter alia, European Union trade mark HELINOX with registration number 10889971, registered on August 11, 2013 for goods in classes 9, 11, 18, 20, and 22 (the “HELINOX Trademark”).
The second Complainant is a subsidiary of the first Complainant in the Netherlands.
The disputed domain name was registered by the Respondent on August 25, 2011 and resolves to a website under the disputed domain name which offers Helinox products for sale. The Complainants submitted evidence that the website also contains links to a competitor of the Complainant, and the Panel discovered that the website offers a link “Newsletter Subscription” which resolved to a website which offers “our newsletter with all the latest news regarding (…) products” which competes with the Complainants’ products. 5. Parties’ Contentions A. Complainants
According to the Complainants the disputed domain name is identical to the HELINOX Trademark.
The Complainants further argue that the Respondent has no rights or legitimate interests in respect of the disputed domain name for the following reasons:
- the Complainant is not familiar with the Respondent and had assumed that the first Complainant’s previous distributor Nigor Net B.V. of Utrecht, the Netherlands (“Nigor Net”), held the disputed domain name without authorization of the Complainants;
- Neither Nigor Net nor the Respondent have ever obtained permission from the Complainants to register the disputed domain name or to use or commercialize the disputed domain name;
- the Respondent is not commonly known under the disputed domain name;
- the Complainants requested Nigor Net to voluntarily surrender the disputed domain name, which it refused as it wanted to recover an alleged investment of EUR 30,000 in the disputed domain name;
- the Respondent never replied to the Complainants’ request to voluntarily surrender the disputed domain name;
- the website to which the disputed domain name resolves contains a full Helinox website, including information regarding Helinox products and an online shop for Helinox products, which mentions at the bottom of the home page “© 2016 Helinox Europe”, even though the Complainants are kept from controlling the disputed domain name and the website to which it resolves;
- the Complainants assume that Nigor Net is still using the disputed domain name and website as a channel to sell off its remaining stock of Helinox products – pretending to be the Complainants – and draw traffic and prospects inviting them to buy competing products traded by Nigor Net as evidenced by a link under the header “Our Other Brands”.
The Complainants also claim that the Respondent registered and used the disputed domain name in bad faith. According to the Complainants the Respondent registered the disputed domain name immediately after the HELINOX trademark of the first Complainant matured into registration in the United States of America, and submitted false information while registering the disputed domain name, evidently in order to try to stay anonymous and evade accountability and/or liability for its actions.
Further, the Complainants allege that the Respondent has leased or otherwise provided Nigor Net access to the disputed domain name, which the Complainants consider an indication that the Respondent is merely using the disputed domain name to earn money out of the HELINOX Trademark, to which it has no rights of its own, thus constituting use of the disputed domain name in bad faith. B. Respondent
The Response introduces a second Respondent, Nigor Net, who claims to be the actual Respondent as the Respondent Helinox Development, who is the formal disputed domain name holder, does not exist but was intended to be established by Nigor Net for its planned operations in Great Britain. Nigor Net claims that it had an oral distribution agreement with the first Complainant which the first Complainant terminated on January 20, 2017 observing a six month notice period, which notice period is challenged by Nigor Net so that it believes the distribution agreement still being in effect. As this constitutes a dispute between the first Complainant and Nigor Net, which has not yet resulted in legal proceedings, Nigor Net requests the Panel not to decide this ADR procedure.
The Respondent and Nigor Net agree with the Complainants that the disputed domain name is identical to the HELINOX Trademark.
When the first Complainant and Nigor Net entered into the oral distribution agreement Nigor Net took the initiative to register the disputed domain name which it used for the sales of Helinox products. As the first Complainant and Nigor Net have a dispute as to the end date of the distribution agreement and possible damages, Nigor Net has an interest to use the disputed domain name, for instance to sell its stock of Helinox products.
The Respondent registered and has been using the disputed domain name exclusively to increase the sale of Helinox products up to date, thus its registration and use are not made in bad faith. 6. Discussion and Findings A. Procedural matters
The amended Complaint was filed by two Complainants, the first Complainant being the owner of the HELINOX trademark and the second Complainant being an affiliate of the first Complainant. Article 22(11) of Regulation (EC) No. 874/2004 (the “Regulation”) states that “(…) The domain name shall be transferred to the complainant if the complainant applies for this domain name and satisfies the general eligibility criteria set out in Article 4(2)(b) of Regulation (EC) 733/2002,” which provision is reflected in paragraph B(11)(b) of the ADR Rules. As Article 4(2)(b) of Regulation (EC) 733/2002 provides that the registry shall “register domain names in the .eu TLD (…) by any (i) undertaking having its registered office, central administration or principal place of business within the Community”, the second Complainant satisfies such general eligibility criteria. As the Complainants are part of the same group of companies, both have an interest in the requested transfer of the disputed domain name and it would be equitable and procedurally efficient to permit the consolidation of the Complaint, the Panel accepts the Complainants jointly filing the Complaint (cf. Gymworld Inc. and Magformers UK Limited v. Vanbelle Jo, Vanbelle Law,WIPO Case No. DEU2017-0001).
The Respondent in this case is Helinox Development of the United Kingdom. The Response claims that the disputed domain name was registered by the Respondent, who is the domain name holder, but non existing as it was never formally established by Nigor Net, for whom the disputed domain name was registered and who used the disputed domain name. Both the Complainants and Nigor Net agree that the first Complainant understood that Nigor Net registered the disputed domain name and has been using the disputed domain name since its registration. Under these circumstances, the Panel will accept Nigor Net’s response as if it were Respondent’s response.
In order to succeed in its Complaint, the Complainants are required under paragraph B(11)(d)(1) of the ADR Rules to demonstrate the following:
(i) The disputed domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or Community law and; either
(ii) the disputed domain name has been registered by the Respondent without rights or legitimate interest in the disputed domain name; or
(iii) the disputed domain name has been registered or is being used in bad faith. B. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or Community law
The first Complainant sufficiently showed that it is the owner of the HELINOX Trademark, which is established by European Union law. The disputed domain name is identical to the HELINOX Trademark, except for the ccTLD “.eu” which is to be disregarded for the purposes of assessing confusing similarity (e.g. Gymworld Inc. and Magformers UK Limited v. Vanbelle Jo, Vanbelle Law, supra).
The Panel is therefore satisfied that the first element of Paragraph B(11)(d)(1) of the ADR Rules is met. C. Rights or Legitimate Interests
The Respondent argues that it needs the disputed domain name as it is still selling Helinox products, while the Complainants allege, inter alia, that the disputed domain name may no longer be used after the termination of the distribution agreement between the first Complainant and the Respondent became effective in August 2017. This ADR procedure is, however, not available to decide parties’ dispute with respect to the question if the termination of the distribution agreement took effect or not, but merely to decide the elements of paragraph B(11)(d)(1) of the ADR Rules.
The disputed domain name resolves to a website which offers Helinox products for sale. The Complainant submitted evidence that the website, under then header “Our Other Brands”, contained links to products which compete with the Helinox products. The Respondent did neither deny this nor provided an explanation. The Panel further discovered when visiting the website that it offered a “Newsletter Subscription” whith links to a website which offers “[Nigor Net’s] newsletter with all the latest news regarding (…) products” which compete with the Helinox products.
The Panel finds that the Respondent is actually still reselling Helinox products, irrespective if the distribution agreement was terminated or not. In determining if the Respondent has legitimate interests to the disputed domain name, the Panel agrees with the panel in Schleich GmbH v. P. Schellens, Cosch BV, Case No. DEU2017-0005, that the principles from Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 should be mutually applied to the procedure under the ADR Rules. These principles provide that a reseller or distributor can make a bona fide offering of goods and services and have a legitimate interest in a domain name, provided that:
(a) such use involves the actual offering of goods and services in issue;
(b) the website sells only the trademarked goods;
(c) the website site accurately and prominently discloses the registrant’s relationship with the trademark holder; and
(d) the Respondent must not try to “corner the market” in domain names that reflect the trademark.
The Respondent does not meet the requirements under (b) as the website under the disputed domain name offers Internet users links to and newsletters of products which directly compete with those of the Complainants, so that the use of the disputed domain name is not restricted to the corresponding website only selling the Complainants’ products.
Also, the requirement under (c) has not been met as the relationship between the Complainants and the Respondent is not disclosed, and Internet users could be confused as to the identity of the website’s operator because the website prominently uses is the HELINOX Trademark and Helinox logo, contains a copyright notice “© 2016 Helinox Europe”, and provides a description of the first Complainant under the tab “COMPANY”, and does not refer to Nigor Net but rather to “Experience Centre” under “CONTACT INFO”.
The Panel is accordingly satisfied that the Complainant’s showed that the second element of paragraph B(11)(d)(1) of the ADR Rules is met. D. Registered or Used in Bad Faith
This element needs no discussion in view of the Panel’s findings under paragraph 6.C above as paragraph B(11)(d)(1) of the ADR Rules considers it sufficient that either the second or third element is met. 7. Decision
For the foregoing reasons, in accordance with paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name be transferred to the second Complainant Helinox Europe B.V.1
Alfred Meijboom
Sole Panelist
Date: April 10, 2018
1 The remedy sought by the Complainants is the transfer of the disputed domain name to the second Complainant. As the second Complainant is established in the Netherlands, which is a member state of the European Union, it satisfies the general eligibility criteria for registration of the disputed domain name set out in Paragraph 4(2)(b) of Regulation (EC) No.733/2002. Therefore, the Complainants are entitled to request the transfer of the disputed domain name.
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