The Complainant is Formlabs Inc. of Somerville, Massachusetts, United States of America (“United States”), represented by Lewis & Lin, LLC, United States.
The Respondent is Eduard de Boer, Wezacon, of Deventer, the Netherlands, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with SIDN through Sitebytes B.V., hereinafter referred to as the Domain Name. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2018. On the same day, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain name. On July 16, 2018, 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 July 17, 2018. In accordance with the Regulations, article 7.1, the due date for Response was August 6, 2018. The Response was filed with the Center on August 7, 2018. The Center received various email communications from the Respondent between August 5 and 10, 2018.
On August 10, 2018, SIDN commenced the mediation process. On September 4, 2018, SIDN confirmed 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 September 10, 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.
The Respondent requested the language of the proceedings to be Dutch. He stated that he is a Dutch national, that his native language is Dutch and that he only moderately understands English.
The Panel has ex officio taken cognizance of the decision Formlabs Inc. v. Eduard de Boer, Wezacon,WIPO Case No. D2018-1526, concerning the domain names , , , , and as well as the decision of the Third-Party Decider of The Belgium Centre for Arbitration and Mediation Cepani of August 30, 2018, concerning the domain name .1
Both decisions ordered the respective domain names to be transferred to the Complainant. 4. Factual Background
The Complainant is a 3D printing technology developer and manufacturer based in the United States. On September 26, 2012, the Complainant launched a Kickstarter campaign to fund the development and commercialization of its “Form 1” 3D printer. The campaign met its USD 100,000 goal within 2.5 hours and went on to raise almost USD 3 million.
The Domain Name was registered by the Respondent on September 26, 2012.
On the same day, the Respondent also registered the following other domain names: , , , , , , and .
After the launch of the Complainant’s Kickstarter campaign, the Respondent commented on the Complainant’s project page on September 27 and October 3, 2012, using his Kickstarter account. On October 26, 2012, the Respondent pledged an amount of USD 2,999 to the campaign in exchange for which he would receive a Form 1 3D printer and consumer goods. On November 26, 2013, the Respondent contacted the Complainant’s customer support regarding problems he was experiencing with his Form 1 3D printer. Back and forth communication between the Respondent and the Complainant’s customer support continued until July 2, 2014.
One of these communications by the Respondent, dated April 1, 2014, does not relate to the Respondent’s apparent customer issue, rather it included an unsolicited offer by the Respondent to sell several domain names, explicitly stating:
“I have an offer for formlabs
.
All domainnames Formlabs can buy for total of 45.000,- euro + two form 1 printers”.
The Complainant did not initially respond to the Respondent’s offer but spoke with the Respondent via Skype on August 26, 2014. The Complainant sent an email later that day to the Respondent offering to buy the previously offered domain names in exchange for one new Form 1+ printer and several additional benefits. In the same email, the Complainant stated that it would have the possibility to acquire the domain names by initiating domain name dispute resolution proceedings considering the Complainant’s pre-dating trademark rights but that it preferred to find an amicable solution and possibly establish a business relationship.
By email of August 28, 2014, the Respondent declined the Complainant’s offer and provided that the Complainant could always make him a better one. On the same day, the Complainant replied by reserving its right to start proceedings to recover the domain names. The Respondent replied to this email by stating “If you think. It all yours. You can give it a try. To get all Formlabs domainnames away from me. I already checked with an advisor the “word mark” Formlabs by today. There is no change ad all [sic] to take it away from me. Becose [sic] the word mark claimed later. Also I use the domainnames by my self with a nice website. It's a good experiment what will happen. I'm patient with this. If you get it. I give you a nice wine. Red or white? If not. I let open the doors for new offers from you to me. We will find out our ways. Near future”.
The Complainant did not respond to this communication. On February 19, 2015 the Respondent sent an email to the Complainant stating: “Long time back talked with you. Everything fine with you? How is all going on”. Again, the Complainant did not respond to this communication.
Three years later, on April 13, 2018, the Complainant’s counsel eventually contacted the Respondent to present an offer of "”$3,000 for all of the domain names listed on F, or $2,500US for just , , , and ”. The Complainant’s counsel also indicated in the communication that the Complainant was “aware of potential trademark concerns”. On May 21, 2018, the Complainant’s counsel made a new offer to purchase the , , , and , , and for USD 5,000. In the same communication, the Complainant’s counsel indicated that the Respondent's conduct could constitute actionable conduct under the United States Anti-Cybersquatting Consumer Protection Act. The Complainant’s counsel set a deadline until May 25, 2018, to respond to its offer. After not having received a response, the Complainant’s counsel reiterated the offer together with a more substantiated notice of infringement on June 5, 2018. Finally, on June 12, 2018, the Respondent replied to the Complainant’s offer and notice letter by indicating that he had already registered FORMLABS as a figurative Benelux trademark. The Respondent continued that this registration would preclude the Complainant from recovering the domain names at question and would not allow the use of the FORMLABS mark in the Benelux by another party. The Respondent concluded by stating that the Complainant “can make a proposal. To take over the domain names and the official trademark. The written prices offered have now expired. I will look at this carefully”.
The Complainant is the holder of several trademark registrations across various jurisdictions throughout the world including, inter alia, international trademark registration No. 1221634 for FORMLABS, registered on June 30, 2014, in international classes 1 and 9 in numerous jurisdictions, including the European Union. The trademark is hereunder referred to as the “Trademark”.
On August 27, 2014, the Respondent had filed a Benelux trademark application for the following figurative mark:
The Benelux Office registered the mark under No. 0970195 on April 27, 2015.
Prior to the filing of the Complaint the Domain Name redirected to a website indicating that the Domain Name was for sale. The Domain Name currently redirects to , which resolves to a website providing information related to the manufacturing and sale of jewelry using a combination of 3D printing and casting technology. 5. Parties’ Contentions A. Complainant
The Complainant considers the Domain Name to be identical and confusingly similar to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Domain Name. According to the Complainant, the Respondent redirected the Domain name to a website displaying a plagiarized article on 3D printing and has not used the Domain Name in connection with a legitimate use and was not licensed by the Complainant to register the Domain Name. Also, according to the Complainant, the Respondent has not been commonly known by the Domain Name and is in no way affiliated with the Complainant. Finally, the Complainant claims that the Domain Name was registered and is being used in bad faith. The Complainant contends that the Respondent clearly knew of the existence of the Complainant’s business and its trademark. The Complainant further claims that the Respondent has registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring them to the Complainant for valuable consideration in excess of his documented out-of-pocket costs directly related to the Domain Name and that the Respondent has filed a fraudulent Benelux trademark application to prevent the Complainant’s exercise of its rights. B. Respondent
The Respondent disputes that the Trademark and the Domain Name are identical or confusingly similar. The Respondent also claims to have rights and legitimate interests in respect of the Domain Name. The Respondent contends that at the time of the registration of the Domain Name, the Complainant had no trademark rights in the term “formlabs” and the Respondent was therefore free to register the Domain Name. The Respondent further contends that by not taking effective action over the course of years against both the Respondent’s Benelux trademark and the Domain Name, instead trying to negotiate the transfer of the Domain Name in exchange for varying amounts of money, the Complainant has effectively acquiesced in the Respondent’s use of the FORMLABS mark and that it is no longer possible for the Complainant to take any action against the Respondent. The Respondent claims that his Benelux trademark registration predates the Complainant’s EU trademark registration resulting from the international filing and that the Respondent therefore was first to establish rights in the FORMLABS trademark and the Domain Name on “European territory”. Lastly, the Respondent asserts to have always declined the Complainant’s offers to purchase the Domain Name as these offers were not reasonable and did not correspond to the costs incurred by the Respondent for registering and renewing the Domain Name. 6. Discussion and Findings 6.1. Language of the Proceedings
The Respondent requested for the language of the proceedings to be Dutch. The Panelist notes that it clearly appears from different documents that have been submitted by the parties that the Respondent has a satisfactory knowledge of English. The Respondent reached out to the Complainant in English and always communicated with the Complainant and his counsel in English. The Respondent has also posted English content on the website to which the Domain Name redirects.
As the Complainant is not domiciled in the Netherlands and there do not appear to be any exceptional circumstances which persuade the Panelist to decide that the proceedings are to be conducted in Dutch, the language of the proceedings shall be English in accordance with article 17.2 of the Regulations. 6.2. Substantive Elements of the Regulations.
Based on article 2.1 of the, a claim to transfer a domain name must meet three cumulative requirements:
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 mentioned in article 2.1 (a) sub II of the Regulations; and
b. the registrant has no rights to or legitimate interest in the domain name; and
c. the domain name has been registered or is being used in bad faith.
The Panel will therefore deal with each of these requirements. A. Identical or Confusingly Similar
The Complainant has demonstrated that it is the owner of the Trademark, which is protected under Dutch law. The Trademark predates the Benelux trademark filed by the Respondent.
The Domain Name incorporates the entirety of the Trademark and does not differ from it. It is established case law that the country code Top-Level domain “.nl” may be disregarded in assessing the similarity between the trademark on the one hand, and the disputed domain name on the other hand (see, interalia, 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 Panel finds that the Domain Name is confusingly similar to the Trademark within the meaning of article 2.1(a) of the Regulations. Therefore, the first requirement is met. B. Rights or Legitimate Interests
The Respondent has not been commonly known by the Domain Name and the Respondent’s use and registration of the Domain Name was not authorized by the Complainant.
The Respondent’s registration of his figurative Benelux trademark containing the term “formlabs” does not establish that the Respondent was known by the Domain Name within the meaning of article 2.1 (b) of the Regulations, nor does it otherwise establish that the Respondent has rights or legitimate interests in the Domain Name.
The Respondent applied for the trademark registration in the Benelux on August 27, 2014. The registration date of the Complainant’s international FORMLABS trademark, which includes registration in the European Union, is June 25, 2014. The latter thus pre-dates the Respondent’s filing. The Respondent’s argument that the Complainant’s international registration was only accepted on September 9, 2015, is not relevant as the date of protection i.e. the registration date is based on the priority date.
The registration of a trademark which corresponds to a disputed domain name does not automatically or necessarily establish respondent rights or legitimate interests in that domain name for the purpose of the Regulations. For example, panels have generally declined to find respondent rights or legitimate interests in a domain name on the basis of a corresponding trademark registration where the overall circumstances demonstrate that such trademark was obtained primarily to obstruct the filing of a complaint under the Regulations or otherwise prevent the Complainant’s exercise of its rights (see section 2.12.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”)). 2 As a result, such trademark rights should be recognized only if the overall circumstances in the case show that the registration was obtained in good faith for the purpose of making bona fide use of the mark in the jurisdiction where the mark is registered and not obtained merely to circumvent the application of the Regulations.
Based on the evidence in this case, the Respondent was clearly aware of the Complainant and its use of the word Formlabs, i.e. as a tradename and a trademark when the Respondent registered the Domain Name (as well as other comparable domain names) and when he applied for the registration of the Benelux trademark. The Domain Name was registered on the very day on which the Complainant publicly launched its Kickstarter campaign for its 3D printer product. The Respondent was clearly aware of and interested in this project as he had commented on the project page and had pledged approximately USD 3,000 to the Complainant’s campaign. Before applying for the Benelux trademark, the Respondent had been in numerous conversations with the Complainant, both regarding the Complainant’s product and the sale/transfer of the Domain Name. It was the Respondent who first engaged the Complainant with an unsolicited offer to sell the Domain Name together with other domain names incorporating the FORMLABS trademark for USD 45,000. The Respondent only applied for the Benelux trademark after the Complainant had sent a notice of infringement together with an offer to purchase the Domain Name.
Moreover, the Respondent has provided no evidence whatsoever of bona fide "use in commerce" or any preparations for the use of the trademark FORMLABS in the Netherlands or elsewhere, except for a recently launched website providing information relating to the manufacturing and sale of jewelry using a combination of 3D printing and casting technology. Before, the Domain Name was used in connection with websites primarily indicating that the Domain Name was offered for sale or displaying a standard academic article on 3D printing.
The Panel finds that the circumstances indicate that the Respondent has likely applied for and has registered its Benelux trademark in an attempt to legitimize its ownership of the Domain Name, to prevent the exercise of the Complainant’s rights and to obstruct the filing of a complaint under inter alia the Regulations, while being well aware of the Complainant, its goodwill in its trademark and its position in the market.
In view of the foregoing, the Panel finds that the Complainant has also made out the second element. C. Registered and Used in Bad Faith
As established above, the Respondent was clearly aware of the Complainant and its business following the Complainant’s Kickstarter campaign on September 26, 2012. That same day, the Respondent proceeded to register the Domain Name, while he must have been aware of the Complainant’s emerging rights. The Panel is of the opinion that the Domain Name was registered in bad faith.
In addition to this, the Panel finds that the fact that the Parties have attempted for several years to settle this matter does not as such diminish or in any other way compensate for the bad faith present when the Respondent registered the Domain Name.
In view of the above, the Panel finds that the Domain Name was registered and is being used in bad faith. 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 Complainant.
Richard van Oerle
Panelist
Date: September 24, 2018
1 Case No. 44455, see:
2 In view of the fact that the Regulations are to a significant extent based on the UDRP, it is well established that cases decided under both the Regulations and the UDRP are relevant to this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V.,WIPO Case No. DNL2008-0050).
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