The Complainant is SA Fun Concept of Luxembourg, Luxembourg, represented by SCRL Ramquet & Pricken, Belgium.
The Respondent is Webbrothers 3 of Vlagtwedde, the Netherlands, represented by Abcor BV. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with SIDN through R. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2012. On December 10, 2012, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On December 11, 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 December 14, 2012. In accordance with the Regulations, article 7.1, the due date for Response was January 3, 2013. Due to exceptional circumstances the Center extended the due date for Response to January 9, 2013. On January 3, 2013, the Center received a communication from a third party. The Respondent’s Response was filed with the Center on January 7, 2013.
On January 11, 2013, SIDN commenced the mediation process. On February 12, 2013, SIDN extended the mediation process until March 12, 2013. On February 25, 2013, SIDN informed the parties that the dispute had not been solved in the mediation process.
The Center appointed Remco M.R. van Leeuwen as the panelist in this matter on March 20, 2013. 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.
The Panel has decided that the communication submitted on January 3, 2013 from a third party will be disregarded as a response, as it did not come from a party to this proceeding.
On March 22, 2013, the Respondent filed a supplemental submission. On March 25, 2013, the Complainant indicated that it would file a reply to the Respondent’s supplemental submission. The Center received such submission from the Complainant on April 12, 2013, and the Respondent’s reply to it on April 15, 2013. In view of the prolonged term to file the initial Response, the Panel will disregard the Respondent's supplemental submission of March 22, 2013, based on article 11.2 of the Regulations. Consequently, the Parties' submissions of April 12 and April 15, 2013, will also be disregarded.
Any exhibits filed in a language other than Dutch or the procedural language, being English, that have been submitted without a translation will also be disregarded by the Panel based on article 17.3 of the Regulations. 4. Factual Background Complainant
The Complainant exploits the concept of mini-golf played indoors in a dark room in a 3D fluorescent setting.
The Complainant is the owner of the following trademarks (hereinafter: the “Trademarks”):
- Benelux trademark GOOLFY, registered on December 6, 2007, under number 834905 in classes 25, 14 and 43.
- Community trademark GOOLFY BLACK LIGHT MINI GOLF & device, registered on February 7, 2008, under number 5409776 in classes 25, 14 and 43.
According to the Complainant it trades under the trade name “Goolfy” since 2006. Respondent
The first date of the registration of the Domain Name is February 2, 2007. According to the information received from SIDN, the Respondent became registrant of the Domain Name on November 22, 2012, through a change of registrant. The Respondent’s activities consist of managing domain names, operation and maintenance of websites. On the date of filing of the Complaint the Domain Name was linked to a website showing sponsored links. 5. Parties’ Contentions A. Complainant
According to the Complainant the Domain Name is identical to the Trademarks and the trade name Goolfy. Further, the Respondent has no rights or legitimate interests in the Domain Name as it is not known by the name “Goolfy”. The parking page showing sponsored links cannot be considered a bona fide offering of goods or services, or a legitimate noncommercial use.
According to the Complainant, the Domain Name is also registered and used in bad faith because the Domain Name is for sale. Also correspondence between the Complainant and the company Leisure Concepts Holding BV would show bad faith, according to the Complainant. Lastly the Complainant claims that when the term “Golf Dark” is entered into the search option on the website linked to the Domain Name, links to websites appear that are competing with the activities of the Complainant. B. Respondent
The Respondent claims that the Trademarks were transferred to the Complainant out of a third-party bankruptcy. According to the Respondent, such transfer was legally flawed and the Complainant is not the rightful owner of the Trademarks. It further claims that the Community trademark GOOLFY BLACK LIGHT MINI GOLF & Device is not identical to the Domain Name and the Complainant has failed to explain why the elements other than GOOLFY should be disregarded in the comparison between this trademark and the Domain Name.
The Respondent further disputes that the Complainant has any trade name rights in the name “Goolfy” in the Netherlands since 2006, as no proof of this has been submitted.
The Respondent claims to have a legitimate interest in the Domain Name as it intended to create a website for Volkswagen Golf fans. According to the Respondent, at the time of registering the Domain Name the Complainant had no rights in the name “Goolfy”, and at that time the term was only used as a nickname for the Volkswagen Golf. The Respondent claims that after the registration of the Domain Name in 2007, the Domain Name was linked to a website stating that a website for Volkswagen Golf fans would be launched. Only after the recession was the Domain Name linked to a parking site. The Respondent therefore claims that it has not acted in bad faith. The Respondent further notes that it is not the company Leisure Concepts Holding, as the Complainant appears to suggest. 6. Discussion and Findings
Based on article 2.1 of the Regulations, a request to transfer a domain name must meet three cumulative conditions:
a. The domain name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which the complainant has rights, or other name by means of article 2.1(a) under II of the Regulations; and
b. The respondent has no rights to or legitimate interests in the domain name; and
c. The domain name has been registered or is being used in bad faith.
Considering these conditions, the Panel rules as follows: A. Identical or Confusingly Similar
As the Trademarks are registered in the official registers in the name of the Complainant, the Panel will presume that the Trademarks are valid and legally owned by Complainant.
The Panel agrees with the Respondent that the Domain Name is not identical or confusingly similar to the Community Trademark GOOLFY BLACK LIGHT MINI GOLF & Device. The Complainant has not claimed or given any arguments why the Community Trademark and the Domain Name would be confusingly similar and the Panel finds that there are too many additional elements in the Community Trademark for it to be confusingly similar to the Domain Name.
The Complainant has not submitted any proof of trade name use of the name Goolfy in the Netherlands. While the Complainant may have been using the trade name Goolfy, such use by its own admission was not in the Netherlands. The Panel therefore finds, for purposes of this proceeding, that the Complainant has no rights in the trade name Goolfy in the Netherlands.
The Panel agrees with the Complainant that the Benelux trademark GOOLFY and the Domain Name are indeed identical.
The Panel therefore rules that, based on the Complainant’s rights in the Benelux trademark GOOLFY, the Complainant has met the first ground of the Regulations as set out in article 2.1(a) under I. B. Rights or Legitimate Interests
The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The burden of proof therefore shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Domain Name.
The Respondent has submitted a signed statement from a former employee, stating that during his work for the Respondent (from 2007 - 2010) he worked on a website for the Domain Name for a“Golf-GTI-website-community”. The Respondent has submitted invoices for the years 2009 and 2010 for the costs of hosting the website “www.”.
The Panel notes that the above statement is minimal in content and not accompanied by any form of contemporaneous evidence specifically supporting it. The Panel also finds the evidence submitted by the Respondent insufficient to show that the term “Goolfy” is a common nickname for the Volkswagen Golf. The Panel therefore finds that the Respondent has not met its burden of proof, and that the Complainant has met the second ground of the Regulations as set out in article 2.1(b). C. Registered or Used in Bad Faith
The correspondence submitted by the Complainant between the Complainant and Leisure Concepts Holding BV will be disregarded by the Panel. While elements in the record suggest a certain connection between Leisure Concepts Holding BV and the Respondent, the Panel would have expected the Complainant to document such connection to a higher standard.
Having noted that, the Panel finds that aspects of this case together might be taken to suggest bad faith on the part of the Respondent. However, the Panel also notes indications in the record of a rather troubled and protracted history between the parties (and possibly the mentioned third party), in relation to the registration and use of various identifiers potentially relevant to this case, among others the transfer of the Trademarks. In light of this, as much as the Complainant’s case may well have merit, the Panel finds that in the end it is more suited to possible determination in court than within the abbreviated framework of the .NL Regulations. Proceedings under the Regulations do not lend themselves to extensive fact-finding by panels (see, e.g., Avenza Systems Inc. v. Exqte,WIPO Case No. DNL2012-0011).
The Panel therefore rules that the Complainant has not met the third ground of the Regulations as set out in article 2.1(c). 7. Decision
For all the foregoing reasons, the Complaint is denied.
Remco M.R. van Leeuwen
Panelist
Date: April 16, 2013
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