Complainant is NATULIQUE Ltd. (Global Corporate Headquarter) of Aarhus, Denmark, represented by Stig Bundgaard, Denmark.
Respondent is Try Out B.V. of Wanssum, Netherlands, represented by Richard Bindels. 2. The Domain Name and Registrar
The disputed domain name is registered with SIDN through TransIP B.V. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 10, 2018. On April 10, 2018, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain name. On April 11, 2018, SIDN transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 13, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 17, 2018. 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"). The Center received a communication from Respondent on April 19, 2018.
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 20, 2018. In accordance with the Regulations, article 7.1, the due date for Response was May 10, 2018. The Response was filed with the Center on May 8, 2018.
On May 14, 2018, SIDN commenced the mediation process. On June 6, 2018 SIDN informed parties that the dispute had not been solved in the mediation process.
The Center appointed Gregor Vos as the panelist in this matter on June 14, 2018. 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 an internationally operating company in the beauty and healthcare sector.
Complainant is the owner of the following trademark registrations:
- United States of America trademark registration No. 5140567 for NATULIQUE, registered on February 14, 2017;
- International trademark registration No. 983705 for NATULIQUE, registered on August 20, 2008, designating, inter alia, the Benelux (the "Trademark").
Complainant has further registered the domain name in 2008, which wholly incorporates the above trademarks.
Respondent is a Dutch company that is active in the field of personal styling, providing education in the field of personal styling, as well as developing and designing products, buying and selling biological hair products, food products, and cosmetics.
The disputed domain name was first registered on December 18, 2014, and resolves to a webshop offering for sale products under the Trademark.
Respondent has provided an extract of the Dutch company register, evidencing that Respondent is statutorily named Try Out B.V. However, from both the Complaint and the Response it follows that the Parties both refer to Respondent as "Green Company Bio Distribution and Try Out BV". For the sake of clarity, the Panel will refer to Respondent as "Try Out".
Although no evidence is provided, it is established between the Parties that Complainant and Respondent in the past had entered into a supplier-distributor agreement with respect to Complainant's products marketed under the Trademark NATULIQUE for the Netherlands (the "Distribution Agreement"). From the statements of the Parties in the Complaint and the Response respectively it appears before the Panel that it is also established between the Parties that this agreement was in place from 2010 until January 2018.
To this end, Respondent states to have operated under the trade name "NATULIQUE Nederland" since 2010. From the extract of the Dutch company register, it follows that this trade name was recorded in the register in mid-2015. 5. Parties' Contentions A. Complainant
Complainant asserts that the Domain Name is confusingly similar to the Trademark as the Domain Name consists merely of the Trademark and the country name "nederland" that describes the geographical area in which Complainant's registered Trademark is designated. According to Complainant, the descriptive term in the Domain Name provides that the Domain Name is comparable and even identical to Complainant's Trademark.
Furthermore, Complainant states that Respondent has no rights or legitimate interest in the Domain Name as it is confusingly similar to the Trademark and that Respondent intentionally confuses consumers. As a result, according to Complainant, consumers are diverted from Complainant's website to Respondent's website. Complainant further argues that Respondent is the owner of the companies Green Company Bio Distribution and Try Out B.V., and uses the Domain Name for commercial purposes, therefore taking illegitimate advantage of the Domain Name. Moreover, Complainant states that Respondent registered the Domain Name several years after Complainant registered its Trademark and its similar domain name . According to Complainant, the Domain Name solely serves to mislead consumers. Additionally, Complainant states that Respondent is aware of the existence of the Trademark as a result of the Distribution Agreement.
Finally, Complainant asserts that the Domain Name has been registered and is being used in bad faith. Complainant contends that Respondent intentionally attempted to attract customers by creating a likelihood of confusion between the Domain Name and the Trademark, even though the Distribution Agreement has been terminated. Complainant further holds that Respondent was aware of the Trademark at the time of registration of the Domain Name and nevertheless wanted to benefit from diverting customers from to . Complainant concludes that Respondent intentionally attempts to capitalize upon and create a likelihood of confusion with Complainant's Trademark. In the view of Complainant, Respondent's bad faith is also evidenced from the fact that Respondent registered the Domain Name using the same email address that was used for corresponding with Complainant when the Distribution Agreement was still in force. B. Respondent
Respondent states that the Distribution Agreement was in force from 2010. According to Respondent, Complainant terminated the Distribution Agreement unexpectedly in early 2018 and Respondent does not agree with the termination. However, Respondent states that it understands that it cannot use the trade name "Natulique Nederland" anymore in the future. Respondent argues that it has built its business and customer base in the Netherlands using the trade name "Natulique Nederland" to sell products under the trademark NATULIQUE.
Furthermore, Respondent argues that there is no intentional confusion. Respondent states that Complainant has never prohibited Respondent to use the trade name "Natulique Nederland", and that Complainant even encouraged Respondent to use the Trademark in its position as a distributor. Respondent notes in this respect that it received a shipment of products bearing the Trademark still on December 5, 2017. Moreover, Respondent argues that for eight years it has actively acquired customers for Complainant and that Complainant seeks to take over the Dutch market without due settlement of the previous Distribution Agreement.
Finally, Respondent argues that the Domain Name and trade name are not intentionally used. The trade name "Natulique Nederland" is connected to Respondent and it wishes to continue distributing products of Complainant. Respondent points to previously intense collaboration between Respondent and Complainant. Respondent continues by stating that Complainant never registered the Trademark for the Netherlands. Respondent concludes that Complainant uses a tactic of appointing distributors and entering into agreements with them in order to later take over the respective markets. 6. Discussion and Findings
Following the assertions of both Complainant and Respondent, the Panel finds it important to note that the Panel's competence under the Regulations is limited. The dispute between the Parties appears to be part of an overall conflict as to the aftermath of the termination of the Distribution Agreement. It is important to note that the Regulations are addressed solely to resolving disputes concerning allegations of abusive domain name registration and use. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of the abusive registration or use of domain names, also known as "cybersquatting" (see, Avenza Systems Inc. v. Exqte,WIPO Case No. DNL2012-0011). On this basis, the Panel can only decide on whether a domain name should be transferred under this set of rules. Claims with regard to, for example, trade name or trademark infringements, violations of agreements or unlawful acts can only be decided upon by the competent national courts (see, NV TKS, Be Watch Ltd v. Tiflo BV,WIPO Zaaknr. DNL2010-0062). Any arguments, grounds or claims to that extent may only serve to provide background for a claim under the Regulations. It is established WIPO Case law that the Regulations cannot be used to litigate all disputes that simply involve domain names.
Based on Article 2.1 of the Regulations, a request to transfer a domain name must meet three cumulative conditions:
(a) the Domain Name is identical or confusingly similar to:
I. a trademark, 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) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(c) the Domain Name has been registered or is being used in bad faith.
Only if all three elements are fulfilled can the Panel grant the remedies requested by Complainant.
Even though the Complaint has been filed under the Regulations and not under the Uniform Domain Name Dispute Resolution Policy ("UDRP"), the Panel will, because of the similarities between the two regulations, refer to UDRP precedents to the extent applicable. A. Identical or Confusingly Similar
The threshold test for identity or confusing similarity under the Regulations involves a comparison between the trademark or trade name and the domain name, in order to assess whether the Trademark is recognizable within the domain name. For this comparison, the country code Top-Level Domain ("ccTLD"), in this case, ".nl", is generally ignored (see, Roompot Recreatie Beheer B.V. v. Edoco LTD,WIPO Case No. DNL2008-0008).
The Panel finds that Complainant has proven that it has rights in the trademark NATULIQUE by virtue of its registration. The Trademark is an International Registration, which has designated, inter alia, the Benelux. Therefore, the Trademark is also valid in the Netherlands.
The Domain Name incorporates the Trademark entirely. Additionally, the Domain Name contains the word element "nederland", the Dutch name of the country the Netherlands. Therefore, the Domain Name is not identical to the Trademark. However, the Panel finds that the addition of this word element does not change the overall impression of the Domain Name as being connected to the Trademark. The use in a domain name of a word that is identical to a trademark solely in connection with a geographical territory will generally be regarded by the relevant public as a local representation of the trademark owner or someone who is acting with the trademark owner's consent (see, Playboy Enterprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768; BP p.l.c. v. Kang-Sungkun Portraits Production,WIPO Case No. D2001-1097).
Consequently, the Panel finds that the requirement under Article 2.1(a) of the Regulation has been fulfilled. B. Rights or Legitimate Interests
In order to fulfil the requirement of Article 2.1(b), Complainant has to prove that Respondent lacks rights or legitimate interests in the disputed domain name. As this may result in the often impossible task of "proving a negative", Complainant bears the burden of prima facie showing that Respondent has no rights or legitimate interests in the Domain Name. If Complainant succeeds in making its prima facie case, the burden of proof shifts to Respondent, which will then have to come forward with appropriate allegations or evidence demonstrating a right or legitimate interest in the Domain Name (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel notes that, insofar as a respondent's being commonly known by a domain name would give rise to a legitimate interest under the Regulations, panels will generally carefully consider whether a respondent's claim to be commonly known by the domain name is legitimate. Mere assertions that a respondent is commonly known by the domain name will not suffice; respondents are expected to produce concrete credible evidence (see section 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")).
Complainant states that it had authorized Respondent to sell products bearing the Trademark in the past by virtue of the Distribution Agreement, and that Respondent is known as Green Company Bio Distribution and Try Out B.V. The Panel understands this statement by Complainant to allege that Respondent is not commonly known by the Domain Name (pursuant to Article 3.1(b) of the Regulations).
Respondent contends that it has rights to the trade name "Natulique Nederland". The Panel understands this assertion by Respondent in such a way, that Respondent would be commonly known by the Domain Name (pursuant to Article 3.1(b) of the Regulations). To that end, Respondent has submitted i) an extract of the Dutch company register, showing the recordal of the trade name "Natulique Nederland"; ii) an article in a sector magazine; and iii) screenshots of a Facebook page.
Firstly, it should be noted that a right to a trade name under Dutch law is only established through actual use and not through the sole recordal in the Dutch company register. Secondly, despite Respondent's claims to the contrary, the Panel finds that the evidence submitted by Respondent actually points to Respondent in fact being commonly known under a different trade name than "Natulique Nederland". For example, the article submitted by Respondent (an interview with the representative of Respondent in the magazine "De Kapper") shows that Respondent is structurally referred to as "Green Company". Also, the screenshots of the Facebook page do not show who is the owner and/or responsible party behind that page. On that basis, these screenshots cannot serve to prove the rights claimed by Respondent.
The Panel finds it sufficiently plausible that Respondent is indeed not commonly known by the Domain Name, but rather by its aforementioned company names. The Panel further notes that Respondent in its Response also refers to itself as "Green Company Bio Distribution and Try Out B.V.", as well as from other submitted documents referring to Respondent as such.
Respondent stated that the Distribution Agreement was terminated on January 6, 2018, and that it was a distributor for the Netherlands until that time. The Panel understands this assertion by Respondent in such a way, that Respondent, before having any notice of the dispute, has used the Domain Name in connection with a bona fide offering of goods or services (pursuant to Article 3.1(a) of the Regulations). Under established precedent, one of the requirements for such use to be considered as bona fide (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903), is that the site must accurately disclose the registrant's relationship with the trademark owner. It may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if in fact, it is only one of many sales agents.
Here, the Panel is of the view that Respondent has not sufficiently supported its assertion with concrete credible evidence. Respondent has, for instance, not submitted screenshots of its website under the Domain Name. Furthermore, as it is established between the Parties that the former distribution relationship no longer exists, the continued use of the Domain Name in the aforementioned manner, does not point to bona fide use as such.
The Panel finds that the requirements in the sense of Article 2.1(b) of the Regulations have been fulfilled. C. Registered or Used in Bad Faith
Under Article 2.1(c) of the Regulations, a complainant must show that the domain name has been registered or is being used in bad faith. This rule differs from the UDRP in the sense that under the UDRP, a complainant must show that the domain name has been registered and is being used in bad faith.
Article 3.2 of the Regulations provides a non-limitative list of circumstances which, if present, shall be evidence of the registration or use of a domain name in bad faith. One of these circumstances is:
"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."
The Panel notes that under the former Distribution Agreement, Respondent was a distributor for Complainant. Depending on the terms of the Distribution Agreement, this could be an indication for the registration of the Domain Name to have been undertaken in good faith.
Regarding the use of the Domain Name, the fact that both parties agree that the Distribution Agreement has been terminated, results in Respondent no longer being formally affiliated with Complainant. Also, Respondent confirms that it is aware that it can no longer use the (trade) name "Natulique Nederland" as a result of the Distribution Agreement having ended. Nonetheless, Respondent has indicated that it has continued its commercial use of the Domain Name.
It appears to the Panel that Respondent has continued to use the Domain Name without the permission of Complainant, with which Respondent is no longer affiliated. In terms of the Regulations, the Panel is of the view that Respondent's continued use of the Domain Name constitutes use for commercial gain, by attracting Internet users to the website through the likelihood of confusion with Complainant's Trademark. Given that the Domain Name solely exists of the Trademark and a country name, Internet users are likely to believe that it is Complainant's official Dutch website or that Respondent is still affiliated with Complainant. Moreover, the Respondent's acknowledgement that it understands that in future it will need to cease use of the Domain Name as a result of the termination of the Distribution Agreement points towards the finding that the continued use of the Domain Name by Respondent is indeed in bad faith.
In light of the above, the Panel finds that the requirement under article 2.1(c) of the Regulations has also been fulfilled. 7. Decision
For the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the disputed domain name be transferred to Complainant.
Gregor Vos
Panelist
Date: July 3, 2018
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