The Complainant is Meguiar’s, Inc., United States of America (“USA”), represented by Baker & McKenzie Amsterdam N.V., Netherlands.
The Respondent is W3Company, Netherlands, represented by ICTRecht, Netherlands.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2021. On August 6, 2021, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On the same day, 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 September 2, 2021. In accordance with the Regulations, article 7.1, the due date for Response was September 22, 2021. The Response was filed with the Center on September 21, 2021.
On September 28, 2021, SIDN commenced the mediation process. On October 28, 2021, SIDN extended the mediation process until November 27, 2022. On November 29, 2021, SIDN extended the mediation process until January 3, 2022. On January 19, 2022, SIDN confirmed to the Parties and the Center that the dispute had not been solved in the mediation process.
The Center appointed Wolter Wefers Bettink as the panelist in this matter on February 15, 2022. 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.
On March 1, 2022, the Complainant submitted a further submission to the Center.
4. Factual BackgroundThe Complainant is Meguiar’s, a 100 year-old business that manufactures car care products for cleaning and protecting automotive surfaces under the trade mark MEGUIAR’S. The Complainant’s products are sold in the Netherlands by the Complainant to and through its 100% subsidiary and licensee Meguiar’s Holland B.V. and its authorized dealers.
The Complainant holds inter alia the following trade marks (the “Trade Marks”):
- Benelux word mark MEGUIAR’S, filed on May 30, 1990, and published on June 1, 1991, under No. 485255;
- European Union word mark MEGUIAR’S, registered on November 11, 2005, under No. 003255759;
- European Union word/device mark MEGUIAR’S SINCE 1901, registered on September 13, 2011, under No. 009883257; and
- European Union word/device mark MEGUIAR’S SINCE 1901, registered on September 13, 2011, under No. 009883315.
Since 2017, the Respondent is a reseller of the Complainant’s products which it obtains through the Complainant’s distributor in the Netherlands, G.K.B. Import BV. In the Complainant’s 2021 catalog, the Respondent is listed as one of the Complainant’s resellers (“Verkooppunten”) and an “Ultimate Dealer”, which denotes a company stocking all products in the catalog.
The Domain Name was registered on May 24, 2017 and resolves to a website on which the Respondent resells goods purporting to be the Complainant's goods (the “Website”).
5. Parties’ Contentions A. ComplainantThe Complainant submits that the Domain Name is confusingly similar to the Trade Marks, since the Domain Name contains MEGUIAR’s, which is the distinguishing element of the Trade Marks, while the addition of the descriptive word “shop” does not diminish the confusing similarity between the Domain Name and the Trade Marks. According to the Complainant, the addition of the descriptive term “shop” even adds to the confusion, as it relates to the sale of the commercial goods for which the Trade Marks are registered, i.e. the sale of the Complainant’s car care products, which takes place in shops. The Complainant contends that the confusing similarity of the Domain Name and the Trade Marks is further strengthened by the content of the Website since the Trade Marks are used there, intentionally suggesting to the consumer to be the “Meguiar’s webshop Netherlands”, thereby trading off the Complainant’s reputation. Furthermore, the Complainant states, the country code Top-Level Domain (“ccTLD”) “.nl” is a technical registration requirement that may be disregarded in this assessment.
According to the Complainant, the Respondent has no rights to or legitimate interests in the Domain Name, since the Respondent has not accurately and prominently disclosed the Respondent’s relationship with the Complainant, namely, that it is not related to the Complainant. In this connection, the Complainant points out that at the top of the Website, the Respondent prominently states, “Meguiar’s webshop Netherlands. You can buy all Meguiar’s products on Meguiarsshop.nl.”, while at the bottom of the Website is stated “Meguiarsshop.nl is part of W3Company”. The Complainant submits that this statement is in small letters at the very bottom of the website, which requires significant scrolling down before it becomes visible, so that it cannot be regarded as a prominent disclosure of its relationship with the Complainant. The same applies, the Complainant contends, to the statements on the contact page of the Website, at the bottom of which it is stated that the Website “is part of W3Company”. Furthermore, the Complainant points out that neither statement accurately discloses the nature of the relationship, as it is not unmistakably clear that there is no commercial relationship between the Respondent and the Complainant. On the contrary, the Complainant submits, the heading at the home page “Meguiar’s webshop Netherlands. You can buy all Meguiar’s products on Meguiarsshop.nl.” as well as the prominent use of the Trade Marks give the false impression that the Website is operated by the Complainant or that the Respondent is somehow officially authorized by and affiliated with the Complainant. Finally, the Complainant states that it regularly receives emails from customers of the Respondent, which are intended for the Respondent. The fact that this happens on a regular basis, in the view of the Complainant, goes to show that it is not clear to customers that the Respondent is not affiliated with the Complainant.
According to the Complainant, the Domain Name is registered and/or being used in bad faith as the Respondent takes unfair advantage of, or otherwise abuses the Trade Marks, since (i) the Trade Marks can be considered famous or well-known, with nearly 500,000 Facebook followers; (ii) the Respondent is not affiliated with the Complainant; (iii) the Respondent has recreated the look and feel of the Complainant’s website on the Website, by using an identical color scheme of black and yellow and pictures which are identical or similar to the copyrighted original photos, images and marketing materials of the Complainant, without the latter’s consent. In addition, the Complainant states, the favicons (tab icons) of the Website are identical to the ones used on the Complainant’s website which shows that the Respondent has created the Website in such a way that it is confusing to consumers, and that the false impression is given of a commercial relationship between the Respondent and the Complainant. Furthermore, the Complainant submits, the bad faith of the Respondent is confirmed by the fact that the Complainant on multiple occasions made the Respondent aware that its use of the Domain Name as described above is not legally permitted nor approved/accepted by the Complainant, explicitly or implicitly. Nevertheless, the Respondent willingly and knowingly continued its practice as described, i.e. using the Domain Name and fashioning and presenting its website content in such a way as to confuse visitors into thinking they are on the official Meguiar’s trade mark owner’s webshop, thus deliberately misleading customers away from the Complainant’s original website and/or authorised webshop, to the economic benefit of the Respondent and detriment of the Complainant. Finally, according to the Complainant, by choosing the corporate name W3Company the Respondent made a conscious choice for a name that can easily be mistaken by the consumer as being 3M Company, the well-known corporate owner of the Complainant and its Meguiar’s business. This again is a clear indicator of bad faith, no legitimate interest, and deliberate confusing of the public, the Complainant concludes.
B. RespondentThe Respondent states that it does not deny that the Domain Name is similar to the Trade Marks, but points out that it is an official reseller of the Complainants products and has been using the Domain Name for a number of years in the context of selling these products. The Respondent submits that it has a legitimate interest in the Domain Name since it is actually offering the goods and services at issue, and uses the Domain Name to sell only the trademarked products so that its offerings on the Website may be characterized as bona fide. In addition, the Respondent contends that it accurately discloses its relationship with the Complainant, since at the bottom of each web webpage, it reads: “Meguiarsshop.nl is part of W3Company. Registered in The Netherlands KvK 50676776.” which makes clear that the Respondent (and not the Complainant) manages the Domain Name. The Respondent submits that the letters in this statement are no smaller than most other text on the web pages, are clearly applied in white on a black background and can be found on every web page under the Domain Name, while it is not necessary to scroll far down on every page to read the statement, but only when one is on a page with many products. The Respondent points out that the same statement is contained in every order confirmation or other message from the Respondent to customers. The Respondent further submits that the relationship with the Complainant is clearly disclosed on the customer service page of the Website, which contains the following message beneath the logo of the Respondent:
“Meguiarsshop.nl is part of W3Company. Through our webshops we gladden many consumers daily with products to keep their car in top condition. As a reseller of Meguiar’s products, we are proud to offer them in a specially developed webshop. For detailed information about the Meguiar’s brand, the official sales channel or support from one of the product experts, we refer you to the website of Meguiar’s Netherlands. If you choose the quality of Meguiarsshop.nl, we will do everything to process your order as quickly and carefully as possible. We are already fans of Meguiar’s. You too?”
The Respondent states that the links to the customer service page can be found on every web page and that this message is therefore not difficult to find, while it accurately discloses the Respondent as a reseller of the Complainant’s products. Therefore, the Respondent contends, it uses a domain name which is descriptive of the business conducted thereunder and Internet users are not likely to believe they are dealing with the Complainant. As for the emails the Complainant has stated it regularly receives from the Respondent’s customers, the Respondent submits that this need not indicate an unclear situation attributable to the Respondent, since it only sells products from the Complainant.
Taking the above into consideration, the Respondent concludes that it has a legitimate interest in the Domain Name.
With respect to bad faith registration and/or use of the Domain Name, the Respondent first submits that if a registrant is found to have a legitimate interest in the use of a domain name, it is not likely to have registered the domain name in bad faith and, since the Respondent is an official reseller of the Complainant’s products, it has a legitimate interest.
According to the Respondent it received permission to use the Complainant’s images, product photos and promotional images. The Respondent refers to a telephone call that would have taken place on May 25, 2019, between the Respondent and a ‘‘Customer Engagement I Digital Content Editor” at the Complainant, who would have confirmed that the images may be used (the Panel understands: at the Website). The Respondent contends to have stated in that call that, should there ever be any objection from the Complainant to such use of these images, the Complainant could simply ask the Respondent to remove them.
Finally, the Respondent points out that the likeness of its corporate name W3Company, with the corporate name of the Complainant’s parent company 3M is a coincidence. According to the Respondent, it was incorporated in 2010 and W3 stands for WWW, or “World Wide Web”. Combined with “Company” this refers to “Internet company” and the Respondent now is a full-service Internet agency for consulting, design, development and management of websites, web applications and Internet marketing campaigns. Since 2017 this also includes web shops selling the Complainant’s products.
Therefore, the Respondent concludes that there is no bad faith.
C. Further SubmissionAfter the mediation process was concluded and the Panel had been appointed, the Complainant submitted a further submission without being so invited to the Center, alleging that such submission contained a reply to the positions and documents in the Response that were not previously known to the Complainant.
Article 11.2 of the Regulations provides that the panel in its sole discretion shall determine the admissibility of further submissions. Without prejudice to a panel’s power to decide otherwise, it is well established that further submissions normally are admissible only in demonstrated exceptional circumstances that made it impossible for a party to file such submission before the deadline of the proceedings, provided such exceptional circumstances are explained in the further submission (see, e.g., Formula One Licensing B.V. v. Louis Theunisse,WIPO Case No. DNL2009-0033; BIC Graphic Europe S.A. and Société BIC v. Alpha Holding B.V.,WIPO Case No. DNL2015-0059).
The basic premise of the Regulations is that both parties may file only one submission – the Complaint and the Response respectively. This implies that it may not always be possible for a complainant to anticipate all defenses in the Response. Even so, it is standard precedent under the Regulations that further submissions must be motivated by exceptional circumstances. As the Complainant has failed to invoke such circumstances that would justify the further submission and its timing following the mediation procedure, the Panel will not take it into account.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Complainant has shown that it has registered rights in the Trade Marks. The Domain Name is confusingly similar to the Trade Marks as it incorporates the mark MEGUIAR’S, of which the Trade Marks consist or which – in case of the word/device marks – is the dominating element, in its entirety (see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7).1
According to WIPO Overview 3.0, section 1.8, where the relevant trade mark is recognizable within the disputed domain name, the addition of other terms (i.e. the term “shop”) would not prevent a finding of confusing similarity under the first element.
The ccTLD “.nl” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 3.0, section 1.11).
Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Marks in which the Complainant has rights.
B. Rights or Legitimate InterestsUnder article 3.1 of the Regulations, the Complainant has to make out a prima facie case that the Respondent does not have rights to or legitimate interests in the Domain Name, upon which the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights to or legitimate interests in the Domain Name (see WIPO Overview 3.0, section 2.1).
Article 3.1 of the Regulations provides that the Respondent may demonstrate such rights or legitimate interests on its part inter alia through the following circumstances:
“a. before having any notice of the dispute, the registrant 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 registrant as an individual, business or other organization is commonly known by the domain name;
c. the registrant is making a 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 Panel notes that the Complaint states that the Website does not give an adequate disclosure of its relationship with the Complainant and that the Website thereby, and inter alia through use of the Trade Marks and images of the Complainant’s products, gives the false impression that it is operated by the Complainant or that the Respondent is somehow officially authorized by and affiliated with the Complainant. The Panel understands that this relates to the question whether the Respondent’s is using the Domain Name in connection with a bona fide offering of goods or services under article 3.1 sub a of the Regulations.
The Panel notes that neither the Complainant nor the Respondent have addressed other circumstances relevant to rights to or legitimate interests in the Domain Name on the Respondent’s part (such as those mentioned in article 3.1 sub b and c of the Regulations). The Panel will therefore focus in its decision on the question whether the Respondent uses the Domain Name in connection with a bona fide offering of goods or services (article 3.1 sub a of the Regulations).
The Respondent submits that it has received consent from the Complainant to use the Trade Marks as part of the Domain Name. To support its claim, the Respondent refers to a phone call that it would have had with an employee of the Complainant – allegedly holding the position of Customer Engagement I Digital Content Editor – who would have given such consent. Leaving aside the question whether a person in this position would have had the authority to give binding permission on behalf of the Complainant to use its Trade Marks in the Domain Name, the Panel notes that the telephone conversation apparently took place two years after registration of the Domain Name, while there is no evidence that it was confirmed in writing by the Complainant (or the Respondent for that matter). In view of these circumstances, the Panel is not convinced on the record that the Respondent has received binding consent from the Complainant to use the Trade Marks as part of the Domain Name.
Regardless, the Respondent has submitted that it is an authorized retailer or distributor of the Complainant’s products and as such is authorized to use the Trade Marks in connection with the sale of the Complainant’s products. It has submitted that since 2017 it buys the Complainant’s products through the Complainant’s exclusive partner and distributor in the Netherlands, G.K.B. Import BV. The Respondent, as “W3 Company (autowebshop.nl)” is listed in the Complainant’s official 2021 catalog (which is also published on the Complainant’s website) as one of the Complainant’s official resellers and as an “Ultimate Dealer” which stocks all of the Complainant’s products. Based on the record before the Panel, the Panel concludes that the Respondent can be qualified as a reseller of the Complainant’s products.
Under established UDRP case law, use of a domain name in relation to a website selling the Complainant’s products bearing the Complainant’s trademarks (such as sale by a reseller) may qualify as a bona fide offering of goods or services, in accordance with article 3.1 (a) of the Regulations, provided such use would satisfy the following conditions (see, Oki Data Americas, Inc., v. ASD, Inc.,WIPO Case No. D2001-0903):
(1) the respondent must actually be offering the goods or services at issue;
(2) the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trade mark in a domain name to bait consumers and then switch them to other goods);
(3) the site itself must accurately disclose the respondent’s relationship with the trade mark owner; and
(4) the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trade mark owner of the ability to reflect its own mark in a domain name.
The Panel has reviewed the evidence provided by the Parties and has visited the Website and on this basis has found that the Website (which the Respondent refers to as its web shop) only offers for sale the Complainant’s products and no products of other manufacturers. Therefore, the first two conditions of the Oki Data test, referred to above, are fulfilled. In addition, as there is no evidence in the record of this case that the Respondent has tried to “corner the market” in all relevant domain names, condition (4) is also met.
As to the question whether the Website accurately and prominently discloses the Respondent’s relationship with the Complainant (condition (3) of the Oki Data test), it is not sufficient that the Website makes no explicit representation that it is the Complainant’s, as that leaves open the possibility that an Internet user typing in the Domain Name and viewing the Website could be left with the impression that a direct relationship exists with the Complainant, when this is not the case. On the other hand, a clear and sufficiently prominent disclaimer can support a finding that the Respondent has undertaken reasonable steps to avoid unfairly passing itself off as related to the Complainant, or otherwise confusing users (see WIPO Overview 3.0, section 3.7).
In this connection the Panel notes the following:
1. A screen shot of the Website taken on August 5, 2021, submitted by the Complainant, shows that at the time a statement at the top of the Website read: “Meguiar’s webshop Netherlands. You can buy all Meguiar’s products on Meguiarsshop.nl.” When the Panel visited the Website at the end of February 2022 this statement had been removed.
2. The Website does not contain a prominent disclosure of the Respondent’s relationship with the Complainant, such as at the top of the home page, nor is there a disclaimer in view (e.g. in a popup) when an Internet user scrolls down the home page of the Website.
3. The text which according to the Respondent clearly discloses the relationship with the Complainant is “Meguiarsshop.nl is part of W3Company. Registered in The Netherlands KvK 50676776”. Contrary to what the Respondent submits, this does not clarify the relationship with the Complainant. Moreover, this message is in small print and can only be found by scrolling down to the very bottom of the home page of the Website, so that it is unlikely that many Internet users will find it or read it.
4. The Respondent also refers to a message on the Customer Service page which would disclose the relationship. Again, this message is not readily visible and can only be accessed by clicking on the “Contact” tab or the “Bestellen” (Dutch for “Order”) tab at the bottom of each web page, which leads to a web page with the heading “Klantenservice” (Dutch for “Customer service”).
5. This page contains (from above), a Whatsapp and an email form to contact the Respondent, information on delivery time, ordering of products, payment and returns, then a section headed by the Complainant’s word/device mark with a text on the history of the Complainant and its products, apparently taken from a Facebook page of the Complainant’s Dutch subsidiary, and, at the bottom, the text on the relationship between the Respondent and the Complainant. Given the location of the message and its small print, it does not qualify as a prominent disclaimer.
6. The text on the Customer services page does not accurately disclose the relationship between the Respondent and the Complainant, as it does not clearly state that the Respondent is not associated or affiliated with the Complainant.
Taken together, these circumstances lead the Panel to conclude that the Respondent has not accurately and prominently disclosed its relationship with the Complainant, so that it does not meet condition (3) of the Oki Data test. Therefore, the Respondent’s use of the Domain Name in relation to the Website does not qualify as a bona fide offering of goods or services, in accordance with article 3.1 of the Regulations.
The Panel concludes that the Complainant has shown that the Respondent does not have rights to or legitimate interests in the Domain Name, as set out in article 2.1(b) of the Regulations.
C. Registered or Used in Bad FaithIn accordance with article 3.2 of the Regulations, the Complainant has to show that the Domain Name was registered or is being used in bad faith. The Complainant submits that the Domain Name was registered in bad faith as the Respondent takes unfair advantage of, or otherwise abuses the Trade Marks.
The Complainant has submitted that the Website uses pictures which are identical or similar to the photos, images and marketing materials on the Complainant’s websites. The Respondent has submitted that it obtained the Complainant’s consent for such use in a phone call with a “Customer Engagement I Digital Content Editor” of the Complainant. Here the Panel refers to its conclusion in section 6 B that the record is not convincing in this regard.
Furthermore, the Complainant has submitted – and the Respondent has not refuted – that the Website uses the same favicon as the Complainant for its websites, consisting of the stylized first letter ‘M’ of the Complainant’s word/device mark. The Panel has verified that, when accessing the Website, this is displayed in the browser’s address bar while, when making an Internet search for “MEGUIAR’S”, it shows in the search results next to both the Website and the Complainant’s websites under (inter alia) “.com”, “.nl” and “.be”. Therefore, when looking at the bookmarks on the results page, all these websites appear to belong to the same group or, at least, to be affiliated. Since such favicons are placed by a web designer, to make the website involved easier to recognize and remember, this has apparently been done at the instruction or at least with the approval of the Respondent.
The emails submitted by the Complainant show that persons who apparently ordered the Complainant’s products on the Website, but did not receive them, address the Complainant, requesting delivery of the products. This suggests that apparently these persons consider the Respondent (or, in any case, its Website) to be affiliated to or approved by the Complainant.
With reference to section 6B above, the absence of a clear and sufficiently prominent disclaimer at minimum indicates that the Respondent has failed to take reasonable steps to avoid unfairly passing itself off as related to the Complainant, or to otherwise confuse users.
The above circumstances, together with the Respondent’s specific choice of the Domain Name, lead the Panel to conclude that the Domain Name is being used for commercial gain, by attracting Internet users to the Website through the likelihood of confusion which may arise with the Trade Marks as to the source, sponsorship, affiliation or endorsement of the Website and, therefore, that the Domain Name is being used in bad faith, as set out in article 3.2 sub d of the Regulations.
The Panel concludes that the Domain Name is being used in bad faith.
7. DecisionFor all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain name
Wolter Wefers Bettink
Panelist
Date: March 1, 2022
1 In view of the fact that the Regulations are to an extent based on the Uniform Domain Name Dispute Resolution Policy (“UDRP”), it is well established that both cases decided under the Regulations and cases decided under the UDRP, and therefore WIPO Overview 3.0, are relevant to this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V.,WIPO Case No. DNL2008-0050).