The Complainant is Noa Noa ApS of Kvistgärd, Denmark, represented by Legal Experience Advocaten, the Netherlands.
The Respondent is Bumo Beheer of Apeldoorn, the Netherlands, internally represented. 2. The Domain Name and Registrar
The disputed domain name (“the Domain Name”) is registered with SIDN through VEVIDA Services B.V. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2013. On June 14, 2013, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On June 17, 2013, 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 June 18, 2013. In accordance with the Regulations, article 7.1, the due date for Response was July 8, 2013. On July 5, 2013, the Respondent requested the Complainant whether it would agree to an extension of the Response due date to August 5, 2013. On July 8, 2013, the Complainant agreed to the extension of the Response due date. Accordingly, on July 8, 2013, the Center informed the parties that the Response due date was extended to August 5, 2013. The Response was filed with the Center on August 5, 2013.
On August 9, 2013, SIDN commenced the mediation process. On September 10, 2013, SIDN extended the mediation process until October 8, 2013. On October 8, 2013, SIDN further extended the mediation process until November 7, 2013. On November 8, 2013, SIDN informed parties that the dispute had not been solved in the mediation process.
The Center appointed Tjeerd F.W. Overdijk as the panelist in this matter on November 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. 4. Factual Background
The Complainant, Noa Noa ApS, is a company in the fashion industry. According to the Complainant it sells its products in 25 countries worldwide and in more than 180 stores. The Complainant trades under the name ‘Noa Noa’ since 1981 and has been trading in the Netherlands under this name as from 2000. The Complainant sells its products in the Netherlands in 14 official Noa Noa stores and 2 unofficial stores with a different name. The Complainant is the proprietor of several (Community) trademarks concerning the brand Noa Noa. The Complaint is in particular based on the Complainant’s Community figurative trade mark NOA NOA with registration number 000746743, filed on February 13, 1998 and registered on July 6, 1999 (hereinafter: the “Trademark”).
The Respondent, Bumo Beheer, is a financial holding company and specializes in trading men’s and women’s clothing and has registered the domain name in April 1999. According to the Complainant, the Domain Name is not used for the business operations of the Respondent. The Domain Name is solely used for providing information about an “offline” store, not being the Respondent, but a company associated with the Respondent, named “Noa Noa for Women” (hereinafter: the “Store”). The Store is a clothing store in Apeldoorn, and does not sell its products online nor sells products of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant states that it is the holder of older rights, based on the fact that prior to the date of registration of the domain name in 1999, the Complainant already filed an application for the Trademark in 1998 and has been trading in the Netherlands under the name Noa Noa as from 2000.
When comparing the trade name Noa Noa of the Complainant with the domain name , it is clear that the Domain Name is identical to the trade name of the Complainant. Figurative trademarks can also be qualified as trademarks protected under Dutch law within the meaning of article 2.1(a) of the Regulations, if a domain name wholly incorporates the dominant element(s) of a figurative trademark. The Complainant refers in this regard to Altro Limited v. Handelsonderneming H.M.S. B.V.,WIPO Case No. DNL2012-0047.
The dominant and distinctive elements of the Trademark are NOA NOA, which also forms the trading and company name of the Complainant. The Domain Name incorporates these dominant elements. This should be a basis for a claim under article 2.1(a) of the Regulations. The top level domain “.nl” should be disregarded in assessing the similarity between the relevant trade mark and the domain name, according to Pieter de Haan v. Orville Smith Ltd.,WIPO Case No. DNL2008-0017 and Doka Nederland B.V. v. Media Village B.V.,WIPO Case No. DNL2010-0009.
Based on Altro Limited v. Handelsonderneming H.M.S. B.V.,WIPO Case No. DNL2012-0047, a domain name that wholly incorporates a complainant’s registered mark may be sufficient to establish confusing similarity for the purpose of the Regulations.
The Complainant argues that the Respondent has no rights or legitimate interests in the Domain Name. The Respondent is a financial holding company and has not been granted any license or other authorization to use the Complainant’s Trademark and trade name. The Respondent does not form any part of the distribution network of the Complainant.
The Domain Name is not used by the Respondent, but by the Store, a company associated with the Respondent. The Respondent nor the Store are entitled to the Domain Name. The Respondent is not using the Domain Name in a bona fide way for the offering of goods or services. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain. The Store does also not sell products of the Complainant nor has been given any license or authorization for the use of the Trademark or trade name in the Domain Name.
The Complainant states that the Store also uses the Complainant’s official logo on its website without the permission of the Complainant. This causes trade mark infringement according to article 9 paragraph 1 sub (b) and/or sub (c) of the Regulation on the Community trade mark (hereinafter: “CTMR”). With regard to article 9 paragraph 1 sub (b) the Complainant states the following. The use of the logo of the Complainant and use of the domain name creates a strong likelihood of confusion as to source, sponsorship, association, or endorsement of the Store and website associated with its domain name . The fact that both the Complainant and the Store sell clothing, actually enhances the likelihood of confusion. By using the Trademark an official connection with the Complainant is suggested that is in fact not there. The Complainant refers to the decision of the Benelux Court of Justice in BMW / Deenik and states that is has a well-founded reason to oppose to the domain name . With regard to article 9 paragraph 1 sub (c), the Complainant states the following. NOA NOA is a well-known trademark in the European Community with a high level of distinctiveness. The Respondent and/or the Store intend to profit from the goodwill and reputation of the Trademark. Both the Complainant and the Respondent and/or the Store are active on the same market and appeal to the same clientele. The link between customers of the official web shops of the Complainant and the Store is enhanced as well. The use of the Domain Name by the Respondent and/or the Store takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Trademark. According to the decision of the European Court of Justice in L’Oreal / Bellure, the Respondent and/or the Store obviously seek by its use of the domain name and the official logo of the Complainant, to ride on the coat-tails of the Trademark. NOA NOA is a very well-known trademark and the Respondent and/or the Store want to benefit from the power of attraction, the reputation and the prestige of the Trademark and the Complainant suffers severe damage as a result of the use.
The Complainant states that the Domain Name has been registered or is being used in bad faith because the Complainant was established in 1981 (and its Trademark has become a very well-known trademark in the European Community) and the Domain Name was first registered in 1999). The Complainant makes reference to the decision in Professional Telecom Support B.V. v. Ronald van Veen,WIPO Case No. DNL2008-0013. The bad faith of the Respondent is evidenced by the fact that (i) the Respondent was already aware of the well-known trademark of the Complainant at the time of registration of the Domain Name (ii) the Domain Name is used to attract Internet users to Respondent’s own website where the Respondent and/or the Store is offering goods of the Complainant’s competitors, and (iii) a false official connection with the Complainant is suggested inter alia by using the Complainant’s official logo on the website even though no NOA NOA products of the Complainant are sold, which leads to the conclusion that the use of the Domain Name is in bad faith. The Complainant refers in this respect to Eva Solo A/S v. Intrec B.V.,WIPO Case No. DNL2011-0060.
The Complainant already anticipated a possible defense by the Respondent based on a settlement agreement concluded between the Complainant and Noa Noa Mode B.V. dated February 29, 2000. Under this settlement agreement (“the Settlement Agreement”) the Store was only allowed to use the sign NOA NOA for its shop in Apeldoorn and advertisement brochure. The Complainant states that neither the use of the sign NOA NOA in the Domain Name, nor the use of the official logo is allowed under the Settlement Agreement. The Complainant also takes the position that this agreement is irrelevant. The Respondent is no party to this agreement and therefore the agreement cannot be the justification for the use of the Domain Name.
Based on the above, the Complainant requests the Panel to decide that the Complainant shall become the registrant of the Domain Name. B. Respondent
The Respondent has filed a Response.
The Respondent states that the domain name already exists since April 26, 1999. Because the Respondent has been using the Domain Name for fourteen years, the Respondent has acquired a ‘right to use’. Apparently the use of the Domain Name was not regarded as an infringement over the last fourteen years, because the Complainant never contacted the Respondent with regard to the Domain Name.
Furthermore, the Respondent refers to the Settlement Agreement. Under the Settlement Agreement the Respondent is allowed to use “Noa Noa” in publicity materials and advertisements. On the date of entering into the agreement, the use of domain names was not very common. Article 1 of the Settlement Agreement leaves room for using a website and social media, in which the Domain Name is named, because publicity materials and advertisements also concern e-mail, websites and social media.
Since April 26, 1999 there has been contact between the Respondent and the Complainant, in which the Complainant proposed to buy the name from the Respondent. Parties never discussed the Domain Name. The Respondent finds it remarkable that the Domain Name has become an issue after all these years.
For these reasons the Complaint should be rejected. 6. Discussion and Findings
Based on article 2.1 of the Regulations, complaints may be submitted by any party which asserts and establishes that:
a) a domain name is identical or confusingly similar to:
i) a trade mark, or trade name, protected under Dutch law in which the complainant has rights; or
ii) 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
b) The registrant 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.
With regard to these requirements the Panel considers the following. A. Identical or Confusingly Similar
The Complainant argues that the Domain Name is confusingly similar to the Trademark and trade name NOA NOA.
The Domain Name incorporates the entirety of the textual components of the Trademark, which is “Noa Noa”. According to Stichting VVV Groep Nederland v. C. Henriquez,WIPO Case No. DNL2008-0040, LEGO Juris A/S v. Nick Terlouw,WIPO Case No. DNL2011-0023 and Altro Limited v. Handelsonderneming H.M.S B.V.,WIPO Case No. DNL2012-0047, a domain name that wholly incorporates a complainant’s registered mark may be sufficient to establish confusing similarity for the purpose of the Regulations.
It is also established case law that the top level domain “.nl” may be disregarded in assessing the similarity between the Domain Name on the one hand and the invoked trademark on the other hand (Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).
In view of the foregoing, the Panel finds that the Domain Name is confusingly similar to the Trademark pursuant to article 2.1(a) of the Regulations. B. Rights or Legitimate Interests
In accordance with paragraph 3.1 of the Regulations, a respondent may demonstrate its rights to or legitimate interests in the domain name by proving, on a non-exhaustive basis, any of the following circumstances:
a) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
b) the respondent (as an individual, business, or other organisation) has been commonly known by the domain name, even if the respondent has acquired no trade mark or service mark rights; or
c) the respondent 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 mark or service mark at issue, or a personal name, or a name of a Dutch public legal entity or a name of an association or foundation located in the Netherlands.
Generally, in cases under the Regulations, the overall burden of proof rests with the complainant and the complainant is required to make clear that there is a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name.
The Complainant argues that the Respondent has no rights or legitimate interests in the Domain Name based on sub (i) and (iii). The Complainant brought forward arguments that the Respondent is just a financial holding company and the Domain Name is not used for the business operations of the Respondent. Moreover the Complainant based its position on the fact that the Respondent has not been granted any license or other authorization to use the Complainant’s Trademark or trade name nor does the Respondent form part of the Complainant’s distribution network. The Complainant also argues that the Store has no rights or legitimate interests, because the Settlement Agreement concluded between the parties in 2000 would be irrelevant in this regard because it is not concluded between the Respondent and the Complainant. According to the Complainant, the Respondent did not argue why the Settlement Agreement between the Store and the Complainant would be applicable in this case. The Respondent only argued that the content of the agreement means that the Store is allowed to advertise through advertising materials, which would include advertising via website.
The Respondent essentially argues that the Settlement Agreement forms the ground for a legitimate interest. In this connection, the Panel as a preliminary observation notes that the Regulations are primarily intended to resolve relatively obvious cases of cyber-squatting and are not primarily intended as an alternative to a civil procedure or arbitration on a contractual dispute between the parties. However, the Panel finds that the circumstances of this case and the Settlement Agreement are sufficiently clear to proceed to a decision on the merits.
Although the Settlement Agreement has been concluded between Noa Noa Mode B.V. and the Complainant, article 5 of the Settlement Agreement provides that the Settlement Agreement is also binding on the successors and associated companies of both parties. According to information in the Dutch Trade Register, the Respondent is the sole shareholder of Noa Noa Mode B.V. in Apeldoorn (the Store). The Respondent therefore qualifies as an associated company as mentioned in article 5. Although the Settlement Agreement refers to binding associated companies (and successors), the Panel finds that a reasonable interpretation implies that such companies may also benefit from rights and permissions granted to the principal parties to the Settlement Agreement.
Under article 1 of the Settlement Agreement, the Store is allowed to use the sign NOA NOA in its company name, in the name of the Shop in Apeldoorn and in packaging and publicity materials, such as newspaper and other advertisements as well as brochures. Therefore, the Panel finds that the Settlement Agreement generally allows Noa Noa Mode B.V., as well as companies associated with it, including the Respondent, to use the name Noa Noa for its Shop and for its marketing. This permission to make use of the name Noa Noa extends to the use of a domain name primarily serving these purposes.
For the above reasons and on the basis of the evidence presented, the Panel finds that the Respondent has a right or legitimate interest in the Domain Name for the purpose of providing an Internet presence for the Store. C. Registered or Used in Bad Faith
Evidence that a domain name has been registered or is being used in bad faith may be provided inter alia through the following circumstances:
a) the domain name has been registered or acquired primarily for the purpose of selling, renting or transferring it to the complainant or to the complainant’s competitors forvaluable consideration in excess of the cost of registration;
b) the domain name has been registered in order to prevent the complainant from using it;
c) the domain name has been registered primarily for the purpose of disrupting the complainant's activities;
d) the domain name has been or is being used for commercial gain, by attracting internet users to a website of the registrant or other online location through the likelihood of confusion which may arise with the trademark, trade name, personal name, name of a Dutch public legal entity or name of an association or foundation registered in the Netherlands as to, for example, the source, sponsorship, affiliation or endorsement of the website of the registrant or other online location(s) or of products or services on the domain registrant's website or another online location.
On the basis of the facts as presented it is clear that none of the circumstances giving rise to a presumption of bad faith registration or use is applicable in this case. The Respondent is using the Domain Name for the purpose of providing an Internet presence for the Store. Right from the top of the homepage the Store clarifies to the visitor that the Domain Name refers to a shop: “Noa Noa for Women – Kledingwinkel Apeldoorn”. The Complainant argues that because the Complainant was established in 1981 and its NOA NOA mark has become a very well-known trademark in the European Community since, the Respondent could have known of the trademark and therefore has registered the Domain Name in bad faith. The Panel takes the view that the Complainant has provided insufficient evidence to conclude that the NOA NOA trademark has been very well known since 1981. Further, there are no other circumstances in the record of this case from which to conclude that the Respondent has registered the Domain Name in bad faith.
The Store was already in existence at the time the Trademark was registered, which could give the Respondent and/or the Store a legitimate interest to make reference to or identify the Store under the name Noa Noa. Since then, in the Settlement Agreement the Complainant has basically acknowledged the right or permission for the Respondent to use the name Noa Noa for the indicated purposes. As noted above, the Panel finds that this permission must reasonably be deemed to include the registration and use of a corresponding domain name as long as it can be said to have this identifying function.
The Complainant argues that the Respondent is also using the Domain Name for distinguishing products of competitors and by doing so causes confusion among the relevant public about the origin of the goods offered for sale in the Store. The Panel is not convinced that this is the case. Even if the use of the Domain Name would lead to confusion among the public, this is primarily attributable to the existence of a shop under the name Noa Noa in Apeldoorn to which the Complainant gave its explicit consent in the Settlement Agreement.
Based on the above, the Panel concludes that the Complainant has failed to prove that the Respondent registered or is using the Domain Name in bad faith. 7. Decision
For all the foregoing reasons the Complaint is denied.
Tjeerd F.W. Overdijk
Panelist
Date: January 14, 2014
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