Complainant is Stanley Black & Decker, Inc. of New Britain, Connecticut, United States of America, internally represented.
Respondent is JB van der Meide Beheer B.V. of Pijnacker, the Netherlands, represented by Eye4Law, the Netherlands. 2. The Domain Name and Registrar
The disputed domain name is registered with SIDN through Hostnet B.V. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2013. On November 14, 2013, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain name. On November 14, 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 November 18, 2013. In accordance with the Regulations, article 7.1, the due date for Response was December 8, 2013. The Response was filed with the Center on December 5, 2013.
On December 9, 2013, SIDN commenced the mediation process. On January 9, 2014, SIDN extended the mediation process until February 2, 2014. On January 30, 2014, SIDN informed parties that the dispute had not been solved in the mediation process.
The Center appointed Paul L. Reeskamp as the panelist in this matter on February 17, 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
Complainant is Stanley Black & Decker, Inc., an American company which provides security services and markets security products. Complainant has been active in the Netherlands since 2007 under the trade names:
i. STANLEY;
ii. STANLEY SECURITY PRODUCTS;
iii. STANLEY SECURITY SOLUTIONS.
These trade names will hereafter jointly be referred to as “the Trade Names”.
Complainant is the owner of the following trademark registrations:
i. Community Trademark Registration for the word mark STANLEY (no. 010450138), filed November 28, 2011 and registered May 2, 2012, for inter alia security products and security services in the classes 9 and 45;
ii. Community Trademark Registration for the word mark STANLEY SECURITY SOLUTIONS
(no. 010666238), filed February 22, 2012 and registered August 9, 2012 for inter alia security products and security services in the classes 9 and 45;
iii. Benelux Trademark Registration for the word/device mark STANLEY (no. 0488890), filed on October 18, 1990 and registered for inter alia fire extinguishers, safes, metal doors and money boxes, alarm equipment, and electronic door controls in the classes 1, 6 and 9.
These trademarks will hereafter jointly be referred to as “the Trademarks”.
Respondent is JB van der Meide Beheer B.V., a Dutch company active in the field of security. On January 19, 2012 Respondent registered the disputed domain name , hereafter: the Domain Name.
The Domain Name resolves to a parking page of the registrar. 5. Parties’ Contentions A. Complainant
Complainant bases its Complaint on its rights in the Trade Names and the Trademarks.
Rights of Complainant
Complainant argues that the Domain Name is identical or confusingly similar to the Trade Names and the Trademarks.
Rights or legitimate interests of Respondent in the Domain Name
Complainant argues that Respondent does not have any rights or legitimate interests in the Domain Name because (in short) Respondent:
i. does not use the Domain Name;
ii. is not commonly known by the Domain Name;
iii. has no trademark registrations identical with, or similar to, the Domain Name.
Registration or use of the Domain Name in bad faith
Complainant argues that Respondent has registered and/or is using the Domain Name in bad faith because of the following reasons.
i. The Domain Name has been registered or is being used primarily for the purpose of selling or transferring it to Complainant or Complainant’s competitors for valuable consideration in excess of the costs of registration.
ii. Complainant bases this argument on two communications (one e-mail of the director of Respondent of October 3, 2013 and one letter of Respondent’s representative of October 10, 2013) wherein it is stated that Respondent is willing to transfer the Domain Name to Complainant, in return for a payment. The amount requested for the transfer in these communications was EUR 20.000,-.
iii. The Domain Name has been registered or is being used in order to prevent Complainant from using it.
According to Complainant this argument is evidenced by the fact that Respondent does not have a website located at the Domain Name.
i. At the time the Domain Name was registered Complainant already had Dutch trade name rights in the Trade Names and already owned the Benelux Trademark Registration for the for the word/device mark STANLEY (no. 0488890);
ii. Since May 2, 2012 and August 9, 2012 Complainant owns the Community Trademark Registration for the word mark STANLEY (no. 010450138) and the Community Trademark Registration for the word mark STANLEY SECURITY SOLUTIONS(no. 010666238). B. Respondent Rights of Complainant
Respondent does not contest the rights claimed by Complainant in the Trade Names and Trademarks.
Respondent contests that the Domain Name is a “trade infringement” of Complainant’s trade name STANLEY and Complainant’s trademark for the word mark STANLEY. Respondent does not contest the similarity between the Domain Name and Complainant’s trade names STANLEY SECURITY PRODUCTS and STANLEY SECURITY SOLUTIONS nor the similarity between the Domain Name and Complainant’s Community Trademark Registration for the word mark STANLEY SECURITY SOLUTIONS(no. 010666238) and the Benelux Trademark Registration for the word/device mark STANLEY(no. 0488890).
Rights or legitimate interests of Respondent in the Domain Name
Respondent argues that the grounds on which Complainant bases the lack of a right or legitimate interest of Respondent in the Domain Name do not apply.
i. According to Respondent, it was (and is) not using the Domain Name yet, because it was still developing a business concept for the Domain Name when, on October 3, 2013, Respondent received a phone call from an employee of Complainant (hereafter: the Employee). According to Respondent the Employee inquired whether Respondent was willing to sell the Domain Name. Respondent argues that at first it was not keen to transfer the Domain Name.
ii. Respondent argues that Respondent’s business is not known under the Domain Name, because Respondent has not used the Domain Name yet.
iii. Respondent argues that it/its director is an entrepreneur with several businesses in the field of security. However, none of the trade names of these businesses are registered as a trademark.
Registration or use of the Domain Name in bad faith
Respondent contests that it has registered and/or used the Domain Name in bad faith.
Respondent disputes that it has registered or is using the Domain Name primarily for the purpose of selling or transferring it to Complainant or Complainant’s competitors.
Respondent claims this argument is evidenced by:
i. the fact that there has been no further contact between Complainant and Respondent (nor between their representatives) regarding the transfer of the Domain Name since October 10, 2013;
ii. an e-mail of October 3, 2013 of the Employee, in which – according to Respondent – two suggestions were made:
a. payment of an amount of money by Complainant for the Domain Name;
b. the start of an economic cooperation between the enterprises of Respondent and Complainant;
iii. an e-mail of October 4, 2013 of Complainant’s representative in which Respondent was requested to transfer the Domain Name to Complainant and to inform Complainant of the amount Respondent was requesting for the transfer.
Respondent does not dispute that it has offered to transfer the Domain Name to Complainant for EUR 20,000.-, but argues that Complainant contacted Respondent first to inquire whether Respondent was interested to transfer the Domain Name for certain compensation.
Respondent also argues that it was developing a business plan within the field of security which included (the use of) the Domain Name. Respondent claims it came up with the Domain Name through its love for American football, more in particular, its admiration for American football player Stanley Morgan. On January 19, 2012 Respondent also registered the domain name .
Respondent claims not to have been aware of an infringement of a right by the registration of the Domain Name.
Finally, Respondent argues it does not infringe Complainant’s trade name rights, because the (mere) registration of a domain name cannot be considered as use of a trade name under Dutch Trade Name Law. 6. Discussion and Findings
Based on article 2.1 of the Regulations, a claim to transfer of 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
There are two requirements that a complainant must establish under the first criterion, being: i) that it has rights in a trademark or trade name, and ii) that the domain name is identical or confusingly similar to such trademark or trade name.
Complainant based its Complaint on its various trade names and trademarks. Complainant’s rights to the Trade Names have not been disputed by Respondent.
Complainant has submitted copies of the trademark registrations from which it follows that Complainant is the holder of the Trademarks. The Trademarks invoked are protected under Dutch law. Complainant’s rights to the Trademarks have not been disputed by Respondent.
It is established case law that the top level domain “.nl” may be disregarded in assessing the similarity between the relevant Trademark(s) and Trade Names on the one hand, and Domain Name on the other (see, inter alia, Pieter de Haan v. Orville Smith Ltd.,WIPO Case No. DNL2008-0017). Therefore the assessment of identity or confusing similarity has to be made between the Trade Names, the Trademarks and the phrase “stanleysecurity”.
The Domain Name incorporates Complainant’s trademark and trade name for the term ‘stanley’ in its entirety. This term also forms the distinguishing element of the Domain Name. The term “security” in the Domain Name is descriptive for the products and services offered by Complainant. It is established case law however under the Regulations that the addition of descriptive elements to a trademark or trade name in a domain name is insufficient to avoid a finding of confusing similarity (see, inter alia, NS Reizigers B.V., N.V. Nederlandse Spoorwegen v. Prestige Taxicentrale, WIPO Case No. DNL2012-0041).
The Panel finds that the Domain Name is confusingly similar to Complainant’s Community Trademark Registration for the word mark STANLEY (no. 010450138) and Complainant’s identical trade name STANLEY. Moreover, the Panel finds that the Domain Name is confusingly similar to Complainant’s trade names STANLEY SECURITY PRODUCTS and STANLEY SECURITY SOLUTIONS as well as Complainant’s Community Trademark Registration for the word mark STANLEY SECURITY SOLUTIONS(no. 010666238) and Complainant’s Benelux Trademark Registration for the for the word/device mark STANLEY (no. 0488890), of which the device-element is limited/subordinate to the word-element STANLEY.
The Domain Name incorporates the distinguishing elements of these trade names and trademarks. Confusing similarity between the Domain Name and these trade names and trademarks of Complainant has also not been contested by Respondent. Therefore the Panel finds the Domain Name to be confusingly similar to these trade names and trademarks. B. Rights or Legitimate Interests
Pursuant to article 2.1(b) of the Regulations, Complainant must demonstrate that Respondent has no rights to or legitimate interests in the Domain Name. This condition is met if Complainant makes a prima facie case that Respondent has no such rights or legitimate interests, and respondent fails to rebut this (see for example Technische Unie B.V. and Otra Information Services v. Technology Services Ltd.,WIPO Case No. DNL2008-0002).
Complainant argues that Respondent does not have a right or legitimate interest in the Domain Name, because Respondent i) does not use the Domain Name, ii) is not commonly known under the Domain Name, and iii) does not hold any trademark registrations identical with, or similar to the Domain Name.
The Panel is satisfied that Complainant with these arguments made a prima facie case that Respondent does not have a right or legitimate interest in the Domain Name.
According to established case law under the Regulations, the burden of proof then shifts to Respondent. Respondent has not disputed Complainant’s arguments. Respondent merely claims that it has not used the Domain Name yet, because it is developing a concept for a security business, for which the Domain Name is registered. Respondent however did not provide evidence of any demonstrable preparations to use the Domain Name or a (trade) name corresponding to the Domain Name for such purpose, and the Panel furthermore finds that the intended use cannot be considered bona fide for the reasons set out below under Section 6.C.
Accordingly, the Panel finds that Respondent does not have rights to or legitimate interests in the Domain Name. C. Registered or Used in Bad Faith
Pursuant to article 2.1(c) of the Regulations the domain name must have been registered or used in bad faith in order for a claim of a complainant to become the registrant of the domain name to be granted.
The Panel holds that the mere fact that Respondent has (at the initiative of Complainant) offered the Domain Name for sale for a price that (largely) exceeds the costs of registration of the Domain Name, does not necessarily constitute bad faith (see, inter alia, Professional Telecom Support B.V. v. Ronald van Veen WIPO Case No. DNL2008-0013 and Doka Nederland B.V. v. Media Village B.V. WIPO Case No. DNL2009-0009). Under certain circumstances however, an offer such as the one made by Respondent may result in or at least contribute to a finding of bad faith.
The Panel firstly holds that Respondent does not contest that the Trade Names and Complainant’s Benelux Trademark Registration for the word/device mark STANLEY (no. 0488890) predate the registration of the Domain Name.
Secondly, the Panel holds that Respondent is active within the security industry with several businesses. Considering the nature of Respondent’s activities in the field of security and given the (undisputed) fact that Complainant has been active under its Trade Names at least several years before registration of the Domain Name, the Panel finds that Respondent at the time of the registration of the Domain Name knew or should have known of the existence of Complainant and its relevant trademark and Trade Names.
That Respondent had or should have had knowledge of Complainant’s rights, is emphasized by the fact that the trade name STANLEY and Complainant’s Benelux Trademark Registration for the word/device mark STANLEY (no. 0488890) are highly distinctive. They are in no way descriptive of the services and products offered by Complainant. Moreover, the Panel holds that STANLEY is also the distinguishing element in Complainant’s other trade names. Respondent has not provided any reasonable explanation for the incorporation of this particular distinctive element in the Domain Name (see, inter alia, SembCorp Industries Limited v. Hu Huan Xin WIPO Case No. D2001-1092). Respondent’s argument that it is developing a business with a name derived from American footballer “Stanley Morgan” cannot be considered as such. This is even more so, because Respondent has not provided evidence of any demonstrable preparations for such a business. The lack of a reasonable explanation for the registration of the Domain Name with the element “stanley” underlines that Respondent knew or should have known of Complainant’s rights.
Therefore, it is apparent to the Panel that Respondent has registered the Domain Name with a (future) purpose to derive benefit from Complainant’s rights and/or with the purpose to sell the Domain Name to Complainant or Complainant’s competitors for valuable consideration in excess of the cost of registration.
The Panel finds that under these circumstances, the repeated offer of Respondent to sell the Domain Name to Complainant for an amount of EUR 20,000.-, constitutes bad faith. The fact that Complainant had initiated inquiries in this regard or suggested a compensation of EUR 500.- is immaterial to this conclusion in this case (see SembCorp Industries Limited v. Hu Huan Xin, supra).
The Panel is satisfied that the Domain Name has been registered in bad faith.
Moreover, the Panel holds that the lack of use of the Domain Name contributes to the finding of bad faith. Despite a period of two years since the date of the registration of the Domain Name, Respondent has not used the Domain Name.
For the reasons and circumstances as discussed above, the Panel finds that the lack of use in this matter also constitutes bad faith.
Accordingly, the Panel finds that the requirement of article 2.1(c) of the Regulations has been met. 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 Complainant.
Paul L. Reeskamp
Panelist
Date: February 28, 2014
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