The Complainants are:
1) Time Export A/S of Farsø, Denmark; and
2) O’Flaherty Finance Corporation of Waco, Texas, United States of America;
both represented by Gorrissen Federspiel, Denmark.
The Respondent is Kraan en Truck Service of ‘s-Gravenhage, the Netherlands, internally represented. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with SIDN through WideXS. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2013. On October 29, 2013, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On November 1, 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 November 5, 2013. In accordance with the Regulations, article 7.1, the due date for Response was November 25, 2013. The Response was filed with the Center on November 23, 2013.
On November 29, 2013, SIDN commenced the mediation process. On December 20, 2013, SIDN informed 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 January 13, 2014. 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 Complainants
The Complainants are the owner of the following trademarks (hereinafter: the “Trademarks”):
- Community trademark VERSALIFT, registered on March 16, 2011, under number 9383191 in classes 7, 12, 35, 37 and 42; and
- Community trademark VERSALIFT & design, registered on March 16, 2011, under number 9383118 in classes 7, 12, 35, 37 and 42; and
- Benelux trademark VERSALIFT, registered on November 19, 1982, under number 385535 in class 7.
According to the Complainants the Trademarks are world famous for quality aerial lifts and their Versalift products are the world’s best-selling lifts for mounting on vans and chassis. Respondent
The Respondent sells aerial work platforms. The Domain Name was registered on June 2, 2006. 5. Parties’ Contentions A. Complainant
According to the Complainants the Domain Name is identical to their Trademarks and the Respondent has no rights or legitimate interests in the Domain Name because it imports lifts from brands that are competitors of Complainants. Complainants have not given the Respondent a written approval to register the Domain Name. According to the Complainants the Respondent has previously been a sub-distributor for the products under the Trademarks, but parties have not entered into a distribution agreement.
The Complainants state that the Domain Name is used as a portal to Respondent’s website and therefore used in bad faith as its only purpose is to confuse customers searching the Internet for the Complainants’ products. B. Respondent
Respondent claims that it has been a dealer for the Complainants’ products for many years and that throughout all these years Complainant 1 has known that Respondent registered and used the Domain name. According to Respondent it has not received any official statement regarding the termination of the relationship with the Complainant and Respondent is holding the Domain Name to support the commercial communication of the products sold under the Trademarks. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel agrees with the Complainants that the Trademarks and the Domain Name are identical.
The Panel therefore rules that, based on the Complainants’ rights in the Trademarks, the Complainants have met the first ground of the Regulations as set out in article 2.1(a) under I. B. Rights or Legitimate Interests
According to the Complainants the Respondent has no rights or legitimate interests in the Domain Name as there is no contractual relation between the Respondent and the Complainants and the Complainants have not given approval for the registration of the Domain Name.
The Respondent appears to contend that there is still a (contractual) relation between the Complainants and the Respondent and that the Complainant 1 has given implicit approval for the registration of the Domain Name.
The Panel notes that a reseller of branded products may have a legitimate interest in a domain name which consists of the product’s trademark. For such a legitimate interest to be present, established case law under the Regulations (e.g., General Electric Company v. V.O.F. Aquacombi,WIPO Case No. DNL2008‑0042; Akzo Nobel Coatings International B.V. v. E. Kroon,WIPO Case No. DNL2009-0003; and Honda Nederland B.V. v. Hode BV,WIPO Case No. DNL2010-0077) requires that:
1 the reseller actually offers the trademarked products and/or services at issue under the domain name; and
2 on the website that is linked to the domain name, only the trademarked products and/or services are sold; and
3 the relationship, or absence thereof, with the trademark owner is accurately and prominently indicated on the website that is linked to the domain name; and
4 the trademark owner is not barred from using its trademark as a domain name (which may be the case if the reseller has registered a large amount of obvious domain names).
On the website to which the Domain Name now resolves products are offered that are competitors of the products offered under the Trademarks. Moreover, there is no indication in the record that Versalift products are currently being offered on the website. Therefore, the above mentioned criteria have not been met and based on established case law, the Respondent does not have any right or legitimate interest in the Domain Name.
The Panel therefore rules 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
It is unclear whether or not the Domain Name was registered in bad faith where the parties disagree whether or not there was approval for the registration of the Domain Name, and neither party has presented any further evidence answering this question.
However, apart from the fact that there apparently is no longer any approval from the Complainants to use the Domain Name, the Domain Name currently leads to a website offering products from competitors of the Complainants. On this basis and according to established case law under the Regulations, the Panel concludes that the Domain Name is currently being used in bad faith.
The Panel therefore rules that the Complainant has met the third ground of the Regulations as set out in article 2.1(c).
The Panel notes that its decision takes account of the specific record of this case within the abbreviated framework of the Regulations. 7. Decision
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain name be transferred to the Complainants.
Remco M.R. van Leeuwen
Panelist
Date: January 30, 2014
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