WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Matrix Investments B.V., TennisPlanet (Holland) B.V., TennisPlanet International B.V. v. Mr. N. J. Dammers, Tennisplanet LLC

Case No. D2009-0230

1. The Parties

Complainants are Matrix Investments B.V., TennisPlanet (Holland) B.V., TennisPlanet International B.V, all of Eindhoven, The Netherlands represented by Louwers Advocaten B.V, The Netherlands.

Respondent is Mr. N. J. Dammers, Tennisplanet LLC, of Eindhoven, The Netherlands and Florida, United States of America respectively, represented by Kraamwinkel Overman Advocaten, The Netherlands.

2. The Domain Name and Registrar

The disputed domain name <tennisplanet.mobi> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2009. On February 23, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On February 23, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 19, 2009. The Response was filed with the Center on March 19, 2009.

The Center appointed Alfred Meijboom as the sole panelist in this matter on March 27, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant Matrix Investments B.V. (“Complainant 1”) is owner of Benelux trademark TENNISPLANET with registration number 0685796 of September 26, 2000 in classes 9 and 35 (the “Trademark”). Its subsidiaries TennisPlanet (Holland) B.V. (“Complainant 2”) and TennisPlanet International B.V. (“Complainant 3”) use the Trademark under license from Complainant 1. Complainant 2 and 3 sell tennis related products through the Internet. To this aim they have registered various domain names incorporating the term “tennisplanet”. Complainants wish to register the disputed Domain Name <tennisplanet.mobi> (the “Domain Name”), but have been unable to do so because it has already been registered by Respondent. Complainants demanded Respondent to transfer the Domain Name to them, but Respondent refused to do so.

Respondent is Mr. N. J. Dammers from Tennisplanet LLC in Florida. Respondent has registered the Domain Name on October 19, 2006.

By submitting the Complaint, Complainants ask the Panel to order that the Domain Name be transferred. Respondent has asked the Panel in its Response to reject this remedy as requested by Complainants.

5. Parties' Contentions

A. Complainant

Complainants makes the following contentions:

1. The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.

The term “tennisplanet” in the Domain Name is identical to the Trademark. The term “tennisplanet” in the Domain Name is also identical to the trade name Tennisplanet, that Complainants 2 and 3 have been using since 2000. Complainants have registered several domain names including the term “tennisplanet”, including <tennisplanet.nl> and <tennisplanet.com>.

2. Respondent has no rights or legitimate interests in respect of the Domain Name

Respondent is not using the Domain Name, or making any demonstrable preparations to do so, in connection with a bona fide offering of goods and services. Complainants argue that the company Tennisplanet LLC was established by Respondent merely in order to be able to claim rights to the Domain Name. Respondent has not used the term “tennisplanet” as a trade mark, service mark, trade name or as (part of) a domain name at all. Respondent cannot invoke any specific right to use “tennisplanet” as part of a domain name. Further, if Respondent is going to use the Domain Name in combination with an active website, customers that are looking for Complainants' products or services, will be misled. This will lead to commercial gain for Respondent and will tarnish the Trademark. Use of the Trademark as part of the Domain Name by Respondent will lead to loss of exclusivity, illegitimate profit gains and dilution of the Trademark.

Therefore, Complainants argue that Respondent does not have any rights or legitimate interests in the Domain Name.

3. The Domain Name was registered and is being used in bad faith

Respondent has been a customer of Complainants, and therefore aware of Complainants' rights. Upon request by Complainants to transfer the Domain Name, Respondent replied that he would be willing to sell the Domain Name for EUR 7,500. Complainants offered Respondent an amount of EUR 650 to amicably settle the dispute, which amount was raised to EUR 1,000 when Respondent rejected the first offer. Respondent refused to transfer the Domain Name. Respondent has obviously only registered the Domain Name for the purpose of selling it for an amount of money, which exceeds Respondent's out-of-pocket costs. This is also supported by the fact that Respondent is still not using the Domain Name in combination with an active website. Because Respondent has registered the Domain Name, Complainants are unable to register a “.mobi” domain name which they absolutely need to expand their market to the mobile Internet. If Respondent will start using the Domain Name, there will be a likelihood of confusion with regard to Complainants' Trademark.

B. Respondent

Respondent makes the following contentions:

Complainants assume incorrectly that Respondent is planning to enter into competition with them. Tennisplanet LLC shall render services with respect to tennis training and management in the state of Florida, United States of America. To this end, Respondent is making preparations to reside and work in the United States of America.

1. The Domain Name is not identical or confusingly similar to a trademark or service mark in which Complainant has rights

Complainant 1 is not the only entity that holds a Benelux trademark TENNISPLANET as another registration by the company Redforest TV B.V. exists. Complainant 1 has registered the Trademark only for a very narrow scope of products and services, not including the services that Respondent wishes to offer. Respondent does not wish to become active in the Benelux or the European Union, but in the United States of America. He has therefore searched the trade mark and trade name registers in the United States of America and has established that there was no registration for “tennisplanet”. Thus, he has acted in accordance with the Policy. Complainants have no trademark and/or trade name rights in the United States of America, and have neglected to mention this in their Complaint. Respondent has legitimately registered the Domain Name.

2. Respondent has rights or legitimate interests in respect of the Domain Name

Respondent is making preparations for his future business in the United States of America. For obvious reasons, a domain name is acquired before actively entering into an online business, so it is not illogical that Respondent has not developed any activity on the Internet yet. Complainants have not exercised their rights during the Sunrise period, so Respondents have legitimately acquired the Domain Name. The envisaged offering of services by Respondent constitutes a bona fide offering of services. The activities that Respondent will develop under the Domain Name will be aimed at the United States of America, whereas Complainants do not have a reputation in the United States of America. Therefore, customers will be not be misled. Because Complainants have neglected to register the Domain Name during the Sunrise period, they cannot claim the Domain Name now. That would lead to the inacceptable result that a party with a locally registered trademark or locally used trade name would be able to block the use of that trademark or trade name with regard to Internet activities of third parties all over the world.

Therefore, Respondent has legitimate rights and interests in the Domain Name.

3. The Domain Name was not registered and is not being used in bad faith

Complainants have contacted Respondent and entered into negotiations to acquire the Domain Name. Respondent has offered to sell the Domain Name upon Complainants' request. After Complainants had turned down Respondent's offer, he has reverted to his initial business plan. The fact that Respondent does not actively use a website yet, is not proof of bad faith but obvious considering the fact that it takes time to set up an online business and because Respondent filed a so-called Petition for Alien Relative with the local authorities so as to obtain permission to reside and work in the United States of America. Complainants are merely frustrated that they have let the Sunrise period lapse without taking action.

Respondent has registered the Domain Name in good faith.

6. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires that Complainants demonstrate that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights.

In the present case Complainant 1 has demonstrated that it is owner of the Trademark. Complainant 2 and Complainant 3 are licensees to the Trademark so that they also have rights in the Trademark (e.g. Miele, Inc. v. Absolute Air Cleaners and Purifiers,WIPO Case No. D2000-0756; Compañia de Radiocomunicaciones Móviles S.A. and BellSouth Corporation v. Argentina Web Design, WIPO Case No. D2000-0914; Toyota Motor Sales U.S.A. Inc. v. J. Alexis Productions, WIPO Case No. D2003-0624; Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington, WIPO Case No. D2003-0796).

Neither the use of “Tennisplanet” as a trade name by Complainants 2 and 3 nor the registration of several other domain names incorporating the term “tennisplanet” are relevant as paragraph 4(a)(i) of the Policy only applies to rights in (registered or unregistered) trademarks or service marks.

The fact that the Trademark was registered by Complainant 1 in the Benelux and not in the United States of America does not change the finding that Complainants have rights in the Trademark. Contrary to Respondent's contentions the origin of the trademark registration as well as the scope of goods and services it is registered for are irrelevant to the finding on whether Complainants have rights within the meaning of paragraph 4(a)(i) of the Policy (Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).

As it is well established that top level domain extensions such as “.mobi” should not be considered in the assessment under paragraph 4(a)(i) (e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003) the Domain Name is identical to the Trademark.

Therefore, the Panel considers paragraph 4(a)(i) of the Policy satisfied.

B. Rights or Legitimate Interests

The fact that Complainants have not registered the Domain Name during the Sunrise period, does not prevent Complainants from invoking the Policy with regard to the Domain Name (Mansueto Ventures, LLC v. Jonathan Witte, WIPO Case No. D2006-1479; C. Bechstein Pianofortefabrik AG v. Melvin Besbrode, Besbrode Pianos Leeds, WIPO Case No. D2008-1528).

Complainants have made out a prima facie case under paragraph 4(a)(ii) of the Policy. Respondent has not been using the Domain Name, or made any demonstrable preparations to do so. Therefore Respondent has to demonstrate that he has a right or legitimate interest in the Domain Name.

Respondent claimed that he is planning to use the Domain Name for a bona fide offering of services. He did, however, fail to demonstrate actual preparations to do so. The Petition for Alien Relative that Respondent submitted cannot be regarded as sufficient evidence of preparations to use the Domain Name for the offering of bona fide goods and services. Therefore, Respondent has not met the requirements of paragraph 4(c)(i) of the Policy. Neither has Respondent demonstrated that he is commonly known by the Domain Name, that he is making a legitimate noncommercial or fair use of the Domain Name, or that he has rights or legitimate interests in the Domain Name in any other way.

Therefore, the Panel considers paragraph 4(a)(ii) of the Policy satisfied.

C. Registered and Used in Bad Faith

The fact that Complainants have failed to register the Domain Name during the Sunrise period does not automatically lead to the conclusion that Respondent could not have registered the Domain Name in bad faith, as Respondent claims. Further, Complainants have sufficiently demonstrated that Respondent was a customer of Complainants and hence was familiar with the Trademark. The Panel therefore concludes that Complainants have sufficiently demonstrated that Respondent registered the Domain Name with the Trademark in mind.

Under the Policy, an offer to sell a domain name for valuable consideration in excess of documented out of pocket cost directly related to the domain name may be considered evidence of bad faith (paragraph 4(b)(i)). Respondent has argued that he had made an offer to sell the Domain Name only upon request of Complainants. The Panel considers that even if this circumstance were to take away any evidence of bad faith, Respondent has in fact denied an offer for an amicable settlement by Complainants, and has responded by offering the Domain Name for sale for an amount clearly in excess of out of pocket costs. Therefore, the Panel deems that it has been sufficiently demonstrated that Respondent has registered and used the Domain Name in bad faith.

Considering the above, the Panel concludes that the requirements of paragraph 4(a)(iii) are sufficiently demonstrated.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <tennisplanet.mobi> be transferred to Complainant 1¹.

Alfred Meijboom
Sole Panelist

Dated: April 6, 2009