Complainant is Liqui Moly GmbH of Ulm, Germany, internally represented.
Respondent is Royal Trading B.V. of Groningen, the Netherlands, internally represented. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with SIDN through TransIP BV. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 16, 2014. On July 16, 2014, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain name. On July 17, 2014, SIDN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on July 21, 2014. The Center verified that the Complaint together with the Amended 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 23, 2014. In accordance with the Regulations, article 7.1, the due date for Response was August 12, 2014. The Response was filed with the Center on August 11, 2014.
On August 15, 2014 SIDN commenced the mediation process. On September 16, 2014, SIDN extended the mediation process until October 13, 2014. On October 15, 2014, SIDN informed parties that the dispute had not been solved in the mediation process.
The Center appointed Richard C.K. van Oerle as the panelist in this matter on November 5, 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.
After reviewing the case file, the Panel issued a Procedural Order on November 11, 2014, inviting Respondent to submit certain further information and inviting Complainant and again Respondent to respond thereto. Having received certain but not all of the requested information, the Panel through the Center requested further information from Respondent which however did not react. 4. Factual Background
Complainant is the holder of the trade mark LIQUI MOLY, filed in many countries; in the Benelux the mark was registered in 1991 by designating the Benelux in International Registration 567461, for chemical products for industrial use as well as additives for lubricants with chemical and physical properties; anti-corrosive products; lubricants; industrial oils, including motor oils and gear oils as well as compressor oils; industrial greases ("Trade Mark").
The Domain Name was first registered on February 14, 2001. 5. Parties' Contentions A. Complainant
Complainant offers a wide variety of high quality products including motor oils, additives, car care products and chemically-based technical solutions for automotive applications. Complainant is the holder of the domain name .
Respondent has been allowed to use the Domain Name, but subsequently the commercial relation between Complainant and Respondent has come to an end. The Domain Name is currently redirected to the website of Respondent, , where competing products as an alternative to Complainant's products are offered on the same site. Respondent offers LIQUI MOLY products for "Sale" ("uitverkoop"). Complainant no longer delivers any products to Respondent since February 2012. B. Respondent
In its Response Respondent stated that it was "[…] forced to buy the domain name www.. We have paid € 4000.00 ex tax and a fee of our turnover of 5% per year during 3 years. This is stated in email and […] can also be proven by transaction details of the bank."
Respondent further submits that it has original Liqui Moly articles in stock and is buying and trading new products on a regular basis. 6. Discussion and Findings
Based on article 2.1 of the Regulations, a claim to transfer a domain name must meet three cumulative requirements:
a. the disputed domain name is identical or confusingly similar to a trade mark, or trade name, protected under Dutch law in which Complainant has rights, or other name mentioned in article 2.1(a) sub II of the Regulations; and
b. the registrant has no rights to or legitimate interests in the disputed domain name; and
c. the disputed domain name has been registered or is being used in bad faith.
Respondent may demonstrate such rights or legitimate interests on its part, inter alia, through the circumstances mentioned in article 3.1 of the Regulations. Complainant may provide evidence that the Domain Name has been registered or is being used in bad faith, inter alia, through the circumstances mentioned in article 3.2 of the Regulations.
Considering these requirements, the Panel rules as follows: A. Identical or Confusingly Similar
Complainant has established that it is the holder of a valid registration for the Trade Mark in the Benelux.
It is established case law that the country code Top-Level Domain (ccTLD) ".nl" may be disregarded in assessing the similarity between the domain name on the one hand, and the relevant trade mark on the other hand (see: Taylor Made Golf Company, Inc. v. Lotom Group S.A.,WIPO Case No. DNL2010-0067; Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).
The Domain Name is confusingly similar to Complainant's Trade mark, because the Domain Name incorporates the Trade Mark in its entirety. The hyphen between the words is of no influence.
Therefore, the Panel finds that the Domain Name is identical or confusingly similar to the Trade Mark. B. Rights or Legitimate Interests
Respondent claims to have bought the Domain Name on the instructions of Complainant and to have paid for it. Respondent submits to hold documentation on these factual circumstances. However, despite several requests to do so, Respondent did not provide evidence to this effect.
Respondent has asserted that it is a reseller of Liqui Moly products.
Pursuant to the panel decision under the Uniform Domain Name Dispute Resolution Policy ("UDRP") Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, the use of a trade mark in a domain name by an authorized sales agent of trademarked goods may be considered a bona fide offering of goods, constituting a legitimate interest, if certain requirements are met. In subsequent UDRP and .NL panel decisions, these requirements have also been acknowledged to apply to a reseller, such as Respondent (see, amongst others: Maison Louis Latour v. Jos Beeres Wijnkoperij,WIPO Case No. DNL2011-0074; and Seiko EPSON Corporation v. ANEM Computers / ANEM,WIPO Case No. DNL2010-0024).
The referenced requirements include, at minimum, the following:
(1) Respondent must actually offer the goods and services at issue;
(2) the website must sell only the trademarked goods (otherwise, it could be using the trade mark to bait Internet users and then switch them to other goods);
(3) the website must accurately and prominently disclose the Respondent's relationship with the trade mark holder; and
(4) Respondent must not try to "corner the market" in domain names that reflect the trade mark.
The Panel notes that, as viewed, the website to which the Domain Name resolves is obviously the website of Respondent. It is undisputed that Respondent actually offers some goods under the Trade Mark, but only under the title "Sale" ("uitverkoop"). The Panel notes that on the website many goods are offered under other trade marks.
Respondent's website fails to disclose the (lack of) relationship between Respondent and Complainant.
Given the foregoing the Panel finds that Respondent has not satisfied the Oki Data requirements.
The Panel did not find any other indications that would demonstrate Respondent's rights to or legitimate interests in the Domain Name.
The Panel therefore concludes that Respondent does not have any rights or legitimate interests in the Domain Name within the meaning of article 2.1(b) of the Regulations. C. Registered or Used in Bad Faith
The Panel refers to its considerations under 6.B above.
The Panel finds that the Domain Name is being used by Respondent for commercial gain by intentionally attracting Internet users to its website where Respondent is also offering goods that do not originate from Complainant. Furthermore, the website at the Domain Name does not disclose the (lack of) relationship between Respondent and Complainant. Therefore the use of the Domain Name may create confusion with the Trade Mark and Complainant as to the source, sponsorship and endorsement of the website. This constitutes evidence of bad faith use in accordance with article 3.2(d) of the Regulations.
The Panel therefore rules that Complainant has met the third requirement of the Regulations as set out in article 2.1 (c). 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.
Richard C.K. van Oerle
Panelist
Date: December 22, 2014
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