The Complainant is Traeger Pellet Grills LLC, United States of America, represented by Barnes & Thornburg, United States of America.
The Respondent is De Fonteyn Sunbelt Spas Europe, the Netherlands, internally represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2019. On November 13, 2019, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On November 14, 2019, 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 18, 2019. In accordance with the Regulations, article 7.1, the due date for Response was December 8, 2019. The Response was filed with the Center on December 6, 2019. On December 9, 2019, SIDN commenced the mediation process. On January 14, 2020, SIDN confirmed that the dispute had not been solved in the mediation process. The Complainant and the Respondent each filed a supplemental filing, respectively on January 13, and 23, 2020. The Center appointed Willem J. H. Leppink as the panelist in this matter on February 5, 2020. 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. In the circumstances of this case, the Panel has decided to accept both supplemental filings. 4. Factual Background The Complainant is a manufacturer of wood-fired grills and accessories, and the owner of the domain name The Complainant owns a number of trademarks (hereinafter: the “Trademarks”) around the world containing the element “Traeger”, including: - European Union Trademark registration No. 005610589, for the mark TRAEGER, registered on January 30, 2008, for goods in classes 4, 11, 21, and 30; The Respondent is a Dutch company that is active in the field of selling outdoor-living products, such as outdoor kitchens, verandas and wood-fired grills. The Complainant and the Respondent in the past had entered into a distributor agreement with respect to the Complainant’s products marketed under the Trademarks for the Netherlands (the “Distribution Agreement”). On May 16, 2019, the Complainant sent an email to the Respondent requesting to transfer the Domain Name to the Complainant, followed by a reminder on May 28, 2019. On December 17, 2019, after the Complaint was filed, the Complainant’s Vice President of International Sales sent a letter to the Respondent as a “formal memorialization” that the Distribution Agreement was terminated as of June 11, 2018. The Respondent registered the Domain Name on November 29, 2012. The Domain Name resolves to a webpage offering for sale the products under the Trademarks. After selecting the concerned TRAEGER product and pressing the order button, Internet users are redirected to the specific TRAEGER page on the Respondent’s website at “www.fonteyn.nl”where the ordering process may be completed. The Respondent’s website at “www.fonteyn.nl” also displays a top bar with tabs for other product categories including garden houses, outdoor kitchens, swimming pools, spas, saunas, and porches. 5. Parties’ Contentions A. Complainant To the extent relevant and not yet discussed under 4. above, the Complainant contends the following. Thirty years ago, the Complainant invented its original wood-fired grill and it continues to be a major manufacturer of wood-fired grills. Since 2001, the Complainant has been operating its website at “www.treagergrills.com” where it offers for sale its wood-fired grills, accessories, covers, sauces, rubs, apparel, and parts, as well as provides information, recipes, and support. The Domain Name is confusingly similar to the Trademarks. The Domain Name incorporates in its entirety the Complainant’s TRAEGER GRILLS trademark followed by the country-code Top-Level Domain “ccTLD” “.nl”. There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. According to the Complainant, the Respondent is no longer an authorized reseller of the Complainant’s products due to termination of the Distribution Agreement; during a meeting on June 11, 2018, the Complainant and the Respondent communicated about the termination of the Parties’ business relationship. Under the terms of the Distribution Agreement, upon termination the Respondent was to discontinue its use of the trademarks and transfer any domain names to the Complainant. The Respondent is not commonly known by the Domain Name and there is no evidence of the Respondent’s use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. The Respondent’s ongoing use of the Domain Name after the termination of the Distribution Agreement may be considered bad faith use. The Respondent is intentionally using the Domain Name to attract, for financial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Trademarks as to the source or affiliation of the Respondent’s website. Furthermore, the redirection of Internet users via links to the Respondent's website at “www.fonteyn.nl” where the Complainant’s products are sold “alongside” products that directly compete with the Complainant’s products, maintains the suggested affiliation and supports the finding of use in bad faith. B. Respondent To the extent relevant and not yet discussed under 4. above, the Respondent contends the following. The Respondent denies the Complainant’s contentions. It has registered and used the Domain Name in good faith in connection with its business as an authorized distributor of the Complainant’s products in the Netherlands. The Respondent registered the Domain Name and the Complainant was aware of the registration and website to which the Domain Name resolves. The Respondent uses this website to sell and promote the Complainant’s products as a dealer. The Distribution Agreement was not terminated, or at least not terminated properly. The Respondent has not received a termination notice; it had only found out that another party was appointed as distributor. The meeting on June 11, 2018, as referred to in the letter dated December 17, 2019, did take place, but did not address the distributor status of the Respondent. In July 2018, the Respondent even organized a large event together with the Complainant. The Respondent invested approximately EUR 70,000 in this event and many of the Complainant’s staff members attended. 6. Discussion and Findings Pursuant to article 2.1 of the Regulations the Complainant must prove each of the following three elements: 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. 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. A. Identical or Confusingly Similar Pursuant to article 2.1(a) under I of the Regulations, the Complainant must establish that the Domain Name is identical or confusingly similar to a trademark or trade name in which the Complainant has rights. The Complainant has shown that it has rights in several trademarks including European Union Trademark registration No. 1228133 for the word mark TRAEGER GRILLS. The Domain Name is identical to this trademark. The ccTLD “.nl” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see Roompot Recreatie Beheer B.V. v. Edoco LTD,WIPO Case No. DNL2008-0008). The Complainant has therefore established the first element of article 2.1 of the Regulations. B. Rights or Legitimate Interests / Registered or Used in Bad Faith In light of its further findings, the Panel will address the criteria of article 2.1(b) and (c) of the Regulations together below. As to the test of article 2.1(b) of the Regulations, the Respondent may demonstrate rights or legitimate interests on its part inter alia through the following circumstances listed in article 3.1 of the Regulations: a. before having any notice of the dispute, the [Respondent] made demonstrable preparations to use the Domain Name (or a name corresponding to the Domain Name) in connection with a bona fide offering of goods or services; b. the [Respondent] as an individual, business or other organization is commonly known by the Domain Name; c. the [Respondent] is making legitimate noncommercial use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish or otherwise damage the relevant trademark, trade name, personal name, name of a Dutch public legal entity or name of an association or foundation located in the Netherlands. The Complainant alleges that the Respondent has no rights or legitimate interests in the Domain Name for the reasons listed above under Section 5.A. The Respondent, however, alleges that the Distribution Agreement is still in place. The Panel notes that the Regulations are not intended to resolve complex commercial or contractual disputes between longstanding parties. The dispute between the Parties appears to be part of an overall conflict as to the status of the Distribution Agreement. The Regulations were adopted to facilitate the resolution of cybersquatting disputes involving allegations of clearly abusive domain name registration and use, and do not lend themselves to extensive fact-finding by panels. The Panel notes that certain disputes are more fit for decision in court proceedings, which, for example, provide more extensive means to evaluate whether a contract has been lawfully terminated. See e.g. NV TKS, Be Watch Ltd v. Tiflo BV,WIPO Case No. DNL2010-0062; Avenza Systems Inc. v. Exqte,WIPO Case No. DNL2012-0011; and Kirloskar Proprietary Limited v. Kirloskar Pompen B.V.,WIPO Case No. DNL2018-0024. That said, with respect to the record before it, the Panel notes that the Complainant has not submitted the Distribution Agreement or relevant contemporaneous evidence of the asserted termination on which it essentially bases its case. Furthermore, while not dispositive in this case, the Panel notes that the Respondent’s relevant webpages appear clearly set up for promoting and completing the sale of the Complainant’s products. Thus, the Complainant has in any event established neither the second nor the third element of article 2.1 of the Regulations. The present panel decision is without prejudice to any judicial proceedings between the Parties or their outcome. 7. Decision For all the foregoing reasons, the Complaint is denied. Willem J. H. Leppink
- European Union Trademark registration No. 1228133, for the mark TRAEGER GRILLS, registered on June 4, 2014, for goods and services in classes 11 and 35;
- European Union Trademark registration No. 1323303, for the mark TRAEGER WOOD FIRED GRILLS, registered on December 30, 2015, for goods in classes 11 and 30.
Panelist
Date: February 10, 2020
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