Complainant is Lensbaby LLC of Portland, Oregon, United States of America, represented by Isak Rydlund, Switzerland.
Respondent is Pwj Digicams of Urk, the Netherlands, represented by Vivan accountants - adviseurs, the Netherlands. 2. The Domain Name and Registrar
The disputed domain name (“Domain Name”) is registered with SIDN through WebDsign.NL. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2013. On July 3, 2013, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On July 4, 2013, SIDN transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 5, 2013. In accordance with the Regulations, article 7.1, the due date for Response was July 25, 2013. The Response was filed with the Center on July 24, 2013.
On July 26, 2013, SIDN commenced the mediation process. On August 26, 2013, SIDN extended the mediation process until September 24, 2013. On September 23, 2013, SIDN further extended the mediation process until October 24, 2013. On October 30, 2013, SIDN informed parties that the dispute had not been solved in the mediation process.
The Center appointed Willem J.H. Leppink as the panelist in this matter on November 19, 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 following facts are undisputed.
Complainant has a long established reputation in the use of its LENSBABY trademark in relation to photography and photographic techniques. Complainant has been using this trademark in the course of trade since 2004.
Complainant owns a Community Trade Mark registration for the LENSBABY trademark (registration number 991092), registered on October 16, 2008, for goods and services in classes 9, 41 and 42 (the “Trademark”).
The Domain Name was registered on October 29, 2005. 5. Parties’ Contentions A. Complainant
Insofar as relevant, Complainant contends the following.
Respondent is not authorized or otherwise licensed to use the Trademark in the Domain Name on an ongoing basis and is also not the authorized national distributor of LENSBABY branded products.
Respondent is not using the Domain Name in connection with a bona fide offering of LENSBABY branded goods. The website connected to the Domain Name is merely a collection of links intended to draw interest to Respondent’s actual selling platform “” where other competing products are also sold.
The website connected to the Domain Name is frequently not reachable or does not have any content readable by standard web browsers. Besides that, Respondent cannot be seen as making a legitimate,
noncommercial or fair use of the Domain Name without intent for commercial gain.
The Domain Name is being used in bad faith as Complainant has made several attempts to resolve the situation amicably.
There is an agreement between Complainant and Respondent. The agreement said that any variation of the Trademark in the form of a domain name would be transferred to Complainant on request. Such a request could be initiated for instance if Respondent was no longer the sole retailer for the LENSBABY branded goods on the Dutch market.
By using the Domain Name Respondent is disrupting the business of Complainant on the Dutch market. Respondent is “squatting” the Domain Name by not using it in connection with a bona fide offering of LENSBABY branded goods, and Respondent is fully aware of the damage being done to Complainant and the Trademark by blocking the use of the Domain Name. B. Respondent
Insofar as relevant, Respondent contends the following.
Respondent sells LENSBABY products since 2005 with the permission of Complainant. Besides that, Complainant has knowledge of the Domain Name and approved the use of the Domain Name by Respondent since 2005.
Complainant registered the Trademark since October 16, 2008, whilst Respondent established a legitimate registration and legitimate use of the Domain Name since 2005. Therefore, Complainant has to respect the rights of Respondent.
In the agreement between Complainant and Respondent, Complainant has authorized and allowed Respondent to use the Domain Name on a long-term basis without restrictive terms or any restrictive conditions. The agreement was made because Respondent was and is an important retailer of LENSBABY products for the Dutch market and that on that basis Respondent had the full right to use the Domain Name.
The Domain Name is not being used in bad faith. Attempts of Complainant to resolve the situation can only be considered as an attempt to change the agreement between Complainant and Respondent. As long as Respondent refuses to accept this unilateral change of the agreement, Complainant has to respect the legitimate rights and use of the Domain Name by Respondent. 6. Discussion and Findings
According to article 2.1 of the Regulations, for this Complaint to be successful in relation to the Domain Name Complainant must prove that:
(a) the Domain Name is identical or confusingly similar to a trademark or a trade name, protected under Dutch law in which 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 Complainant undertakes public activities on a permanent basis; and
(b) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(c) the Domain Name has been registered in bad faith or is being used in bad faith. A. Identical or Confusingly Similar
Pursuant to article 2.1(a) of the Regulations, Complainant must establish that the Domain Name is identical or confusingly similar to a trademark or trade name in which Complainant has rights.
The Panel finds that the Domain Name is identical to the Trademark. The Domain Name incorporates the Trademark in its entirety.
The Complainant has therefore established the first element of article 2.1 of the Regulations. B. Rights or Legitimate Interests
Pursuant to article 3.1 of the Regulations, Complainant must demonstrate that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent may demonstrate such rights or legitimate interests on its part inter alia through the following circumstances:
a. before having any notice of the dispute, Respondent made 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;
b. Respondent as an individual, business or other organization is commonly known by the Domain Name;
c. Respondent is making a legitimate noncommercial use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish or otherwise damage the relevant trademark, trade name, personal name, name of a Dutch public legal entity or name of an association or foundation located in the Netherlands.
Complainant contends that Respondent no longer has rights or legitimate interests in respect of the Domain Name and therefore Respondent has to transfer the Domain Name to Complainant. Respondent argues that it still has rights and/or legitimate interests in respect of the Domain Name. Both parties made reference to the agreement between the parties.
There is indeed precedent in decisions under the Regulations that a respondent may lose its right or legitimate interest in a domain name if a distribution agreement has ended. However, in the present proceedings parties disagree on the content of the agreement and its legal effect.
According to Complainant, the agreement provided that any variation of the Trademark in the form of a domain name would be transferred to Complainant on request. Such a request could be initiated for instance if Respondent was no longer the sole retailer for the LENSBABY branded goods on the Dutch market.
Respondent agrees that there is an agreement between Complainant and Respondent. However, according to Respondent, Complainant has authorized and allowed Respondent to use the Domain Name on a
long-term basis without restrictions.
None of the parties has submitted a copy of the agreement between the parties. Even if a copy had been submitted, the Panel notes that the present proceedings are not suited to interpreting the agreement between Complainant and Respondent, similar to what was decided by this Panel in NV TK, Be Watch Ltd v. Tiflo BV, WIPO Case No. DNL2010-0062.
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. Certain disputes are more fit for decision in such more extensive proceedings, which, for example, provide sufficient scope for the submission and examination for various types of evidence relevant to the interpretation of contract terms.
In any event, as none of the parties has submitted a copy of the agreement or other evidence regarding the terms of the agreement, the Panel finds insufficient basis to conclude in the present proceedings that Respondent lacks rights or legitimate interests in the Domain Name. Accordingly, Complainant has failed to demonstrate that Respondent has no rights or legitimate interests in the Domain Name. C. Registered or Used in Bad Faith
Given the Panel’s findings on the second element of article 2.1 of the Regulations, it is unnecessary to consider the issue of bad faith. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Willem J.H. Leppink
Panelist
Date: December 2, 2013
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