The Complainant is Avenza Systems Inc. of Toronto, Canada, internally represented.
The Respondent is Exqte of Rijswijk, The Netherlands, internally represented. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with SIDN through . 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2012. On March 19, 2012, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On March 21, 2012, SIDN 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 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 March 22, 2012. In accordance with the Regulations, article 7.1, the due date for Response was April 11, 2012. On April 11, 2012, the Respondent requested an extension of the Response due date. On the same day, the Center advised the Respondent that the Regulations do not allow for an extension of the Response due date and requested the Complainant to submit any comments it may have on the Respondent’s request. On April 11, 2012, the Complainant indicated that it wanted the proceedings to continue in the regular manner. On April 12, 2012, the Respondent submitted its late Response.
In response to the latter, the Complainant submitted Supplemental Filings on April 16, 2012. On April 19, 2012, the Respondent in its turn submitted Supplemental Filings.
The Center appointed Willem J.H. Leppink as the panelist in this matter on April 20, 2012. 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.
On May 3, 2012, after reviewing the case file, the Panel invited the Complainant by Procedural Order to clarify and substantiate its statements regarding the invoked trade name rights. The Complainant submitted its answer on May 11, 2012, after which the Respondent was granted a term of five days to respond to the Complainant’s submission. The Respondent’s response was received by the Center on May 16, 2012. The Panel thereupon informed the Parties that it would render its decision on May 28, 2012. 4. Factual Background
The Domain Name was registered by the Respondent on March 17, 2000. 5. Parties’ Contentions A. Complainant
The Complainant has essentially stated the following:
The Complainant is the designer of a software product called MAPublisher which has been distributed in The Netherlands since 1997. It owns a registered trademark for MAPUBLISHER in Canada and in the United States of America.
“MAPublisher” is a trade name with notoriety worth protecting in The Netherlands. The use of its trade name as (part of) a domain by the Respondent creates confusion in the mind of the public. In its answer to the Panel’s Procedural Order, the Complainant has stated that “MAPublisher” is a well-known trade name worldwide that is used interchangeably with the company name Avenza. The Complainant can provide evidence of this statement by submitting copies of invoices, purchase orders, emails, etc.
The Respondent has no rights to or legitimate interests in the Domain Name. The Respondent was a reseller of the Complainant’s products in The Netherlands until 2010. As the Respondent no longer has a right to resell or distribute the Complainant’s products, it has no rights to or legitimate interests in the Domain Name.
In addition, the use of the Domain Name by the Respondent is in bad faith because the Domain Name is merely held by the Respondent to sell it to the Complainant for a high price. In several emails which have been submitted by the Complainant and in several telephone calls between the Complainant and Respondent(’s representative) the Domain Name was offered for sale.
Per email of April 12, 2000, a representative of the Respondent informed the Complainant: “And of course, as we discussed and as Martin is agreeable to and understands, should eXQte ever stop acting as Avenza’s representative in The Netherlands we will give the domain to Avenza free of charge”. B. Respondent
The Respondent did not timely reply to the Complainant’s contentions. Per letter of May 16, 2012, the Respondent has rebutted the Complainant’s statements that were submitted in response to the Procedural Order regarding the notoriety of the trade name and its protection under the Dutch Trade Name Act. The Respondent has submitted this letter in Dutch. The Panel did not, however, consider it necessary to request a translation into English, since the Complainant has not called for a translation and the Complainant was apparently able to submit a Supplemental Filing in response to the Respondent’s late Response, which was also submitted in Dutch.
The Respondent’s basic position is that “MAPublisher” is merely used by the Complainant to distinguish its software product and that “MAPublisher” is therefore only used as a trademark. Never has “MAPublisher” been used to indicate (a part of) the Complainant’s company, which is the key function of a trade name. 6. Discussion and Findings
According to article 2.1 of the Regulations, for this Complaint to be successful in relation to the Domain Name the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or a trade name, protected under Dutch law in which the Complainant has rights; or a personal name registered in the General Municipal Register (“gemeentelijke basisadministratie”) of a municipality in The Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in The Netherlands under which the Complainant undertakes public activities on a permanent basis; and
(ii) the Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered in bad faith or is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has asserted that it has trade name rights with notoriety worth protecting in The Netherlands under Dutch trade name law.
A first review of the Complaint left the Panel with questions concerning this assertion. Consequently, the Panel requested the Complainant “to properly substantiate that “MAPublisher” is a trade name of the Complainant and to properly substantiate that such trade name has “notoriety worth protecting” in The Netherlands”. The Panel finds that the Complainant has failed to even provide prima facie evidence that it indeed has trade name rights in “MAPublisher” protected in The Netherlands. While apparently the Complainant has not registered this term as a trade name in The Netherlands, Dutch trade name law does not require such registration for protection; for this purpose it does however in any event demands the use of the trade name. In this regard the burden of proof is on the Complainant to submit verifiable evidence of the existence of trade name rights. The offer of the Complainant to do so at the request of the Panel is insufficient, especially as the Panel’s Procedural Order has already explicitly made such request.
The Panel agrees with the Respondent that the statements of the Complainant indicate that “MAPublisher” has only been used as a trade mark, to distinguish the software product that is sold under the name “MAPublisher”.
The Complainant has therefore not established the first element of article 2.1 of the Regulations. As a result, it is unnecessary for the Panel to discuss its findings in relation to the other requirements.
The Panel notes that the Complainant’s failure to have registered a trade mark for “MAPublisher”, which under Benelux law is not difficult to obtain, has necessarily shifted the focus of the present case to the Complainant’s trade name position. Although the Panel must thus deny the Complaint, it adds here that it does not appear inconceivable that regular court proceedings would instead focus on the Complainant’s undisputed statement that parties have agreed in 2000 that, upon termination of the contractual relationship between parties, the Respondent would transfer the Domain Name to the Complainant free of charge.
Indeed, .nl proceedings do not lend themselves to extensive fact-finding by panels and are primarily intended to resolve relatively obvious cases of cyber squatting. With reference to the decision in NV TKS, Be Watch Ltd v. Tiflo BV, WIPO Case No. DNL2010-0062, the Panel notes that certain disputes are more fit for decision in court proceedings, which, for example, provide sufficient scope for considering such questions as whether a contract has been lawfully terminated. B. Rights or Legitimate Interests
See above under A. C. Registered or Used in Bad Faith
See above under A. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Willem J.H. Leppink
Panelist
Dated: May 25, 2012
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