The Complainant is Merk-Echt B.V. of Breda, the Netherlands, internally represented.
The Respondent is Tilma Consultants of Oranjestad, Aruba, Overseas Territory of the Netherlands, represented by Advocatenkantoor mr. drs. Tilma, the Netherlands.
The disputed domain name <merkecht.com> is registered with Tucows Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2012. On November 22, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 22, 2012, the Registrar 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 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 the Respondent of the Complaint, and the proceedings commenced on November 29, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2012. The Response was filed with the Center on December 19, 2012.
The Center appointed Alfred Meijboom as the sole panelist in this matter on January 9, 2013. 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.
The Complainant is a trademark agent that holds registrations for a Benelux stylized trademark and a Benelux word mark MERK-ECHT. The trademarks were originally registered by the Respondent in 1999 and 2001, respectively, for goods and services in classes 9, 16 and 45. The Respondent assigned both trademarks to the Complainant in 2009.
The Respondent was one of the three founding shareholders of the Complainant and sold his shares in the company to the Complainant in 2009.
The disputed domain name was registered on November 20, 1999.
The disputed domain name is nearly identical to both trademarks of the Complainant. The Respondent has no rights or legitimate interests in respect to the disputed domain name. The trademarks have always been in use by the Complainant for whom it is an important asset and marketing tool because all existing and possible future clients contact the Complainant through the website at the disputed domain name and email addresses connected to the disputed domain name. The annual costs for renewal of the disputed domain name have always been paid for by the Complainant. The Respondent has never used the disputed domain name.
In 1999 the Complainant was established by three individuals, including the Respondent’s owner, who founded the Complainant as equal owners. The disputed domain name was registered by the Respondent upon the request of the other two individuals, with the purpose of setting up a company website for the Complainant. Without authorization or consent, the Respondent did not register the disputed domain name in the name of the Complainant, but in its own name. The registration of the disputed domain name has thus been effected in bad faith.
In June and July 2009 there were email correspondences between the Complainant and the contact person of the Respondent with regard to the transfer of the disputed domain name to the Complainant, to which the Respondent agreed. Despite the request, the disputed domain name was not transferred. After July 2009, the relationship between the owner of the Respondent and the other shareholders of the Complainant seriously deteriorated and the transfer of the disputed domain name was never effected.
According to the Complainant it is evident that the disputed domain name belongs to the Complainant. The disputed domain name has been an integral and essential part of the corporation of the Complainant. The legitimate interest in the disputed domain name is with the entire entity of the Complainant and thus not with one single individual (a shareholder).
The Respondent has refused to transfer the disputed domain name to the Complainant. On November 7, 2012, a representative of the Respondent contacted the registration service provider of the disputed domain name with a written request to provide him with the access data for the disputed domain name. The Complainant fears that the Respondent will use this access data in order to transfer the disputed domain name, change the content of the website or otherwise obstruct the business of the Complainant, which would affect the continuity in the entire communication of the Complainant’s business and would cause considerable (economic) damage to the Complainant.
The Respondent contents that it is not correct and unsubstantiated that the Complainant has always paid the annual costs for renewal of the disputed domain name and that the Respondent has never used the disputed domain name. The Respondent, as the founder of the Complainant, paid the initial registration fees and annual hosting fees.
The Respondent is a founder and shareholder of the Complainant. Until 2008, the Respondent was also an owner of the trademark MERK-ECHT, and it still owns the disputed domain name. In 2009, a shareholder of the Complainant reached an agreement with the Respondent to purchase all shares of the Respondent in the Complainant, as well as the trademark MERK-ECHT and the disputed domain name. As part of the agreement, the Respondent transferred the ownership of the trademark in good faith to the Complainant. The Complainant and its purchasing shareholder failed to pay for the trademark and the shares in the Complainant. As the Complainant was in default, the Respondent did not transfer the disputed domain name to the Complainant, exercising its right of retention.
The Complainant stated that there was no consent for the Respondent’s registration of the disputed domain name, nor authorization to register the disputed domain name. According to the Respondent this is irrelevant as consent was not required. As the Respondent was the owner of the trademark it follows that it was also entitled to the disputed domain name. Never before was there any discussion about the ownership of the trademark. The fact that the transfer of the disputed domain name was part of the “buy-out package” of the Respondent proves that there was no bad faith on behalf of the Respondent. The dispute between the Respondent and the other shareholders of the Complainant is based on the failure of the Complainant to pay the Respondent.
The first matter to be addressed is the language of the proceedings.
The Complainant claims that the Respondent’s contact person has Dutch nationality and that Dutch is the official language of Aruba where the Respondent is established and states “In case the Panel decides that English should be the language of the proceedings, we refer to the translations into English of the documentation attached in Dutch”. The Complainant did, however, not explicitly request the Panel to decide that the language of proceedings shall be Dutch, but rather filed the Complaint in English and submitted English translations of Dutch language attachments to the Complaint. The Respondent filed the Response in English and did not request the language of proceedings to be Dutch. The language of the registration agreement is English.
Article 11(a) of the Rules read “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel appreciates the Complainant’s claim as an implicit request for a change of language into Dutch. However, the Panel notes that the language of the registration agreement is English, the Respondent did not request (or agree) to change the language of proceedings into Dutch, both parties submitted their Complaint and Response in English, and both parties seem to comprehend English. Accordingly, the Panel has decided that the language of the proceedings shall be English.
Paragraph 4(a)(i) of the Policy requires that the Complainant demonstrates that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. In the present case, the Complainant has sufficiently demonstrated that it has rights in the trademarks mentioned in paragraph 4 above. It is well established that top level domain extensions such as “.com” may typically not be considered in the assessment under paragraph 4(a)(i) of the Policy (e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). When comparing the disputed domain name with the Complainant’s word mark MERK-ECHT, the only difference is that the disputed domain name fails the hyphen. This does not, however, change the overall impression of the disputed domain name which remains very similar to said word mark MERK-ECHT. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
In light of the Panel’s finding under the third element, it is not necessary for the Panel to make a finding in this regard.
Paragraph 4(a)(ii) of the Policy requires the Complainant to demonstrate that the Respondent registered and used the disputed domain name in bad faith. The Complainant explicitly states that the Respondent has never used the disputed domain name, which the Panel understands to mean that the Respondent never used the disputed domain name for its own purposes. The Panel checked the use of the disputed domain name and found that it links Internet users to a website of the Complainant under a different domain name. The disputed domain name has apparently always been used in a de facto manner by the Complainant, who now fears that the Respondent may change the settings so as to prevent the Complainant from further use of the disputed domain name. However, this raises a question as to whether the Respondent has or is currently using the disputed domain name in bad faith with the evidence of such past or current use in bad faith lacking with reference to material presented in the case file.
However this may be, even if (future) use of the disputed domain name would be in bad faith, the Panel reminds the Complainant that it should also be established that the disputed domain name was registered in bad faith. The Complaint and Response are at odds as to whether the Respondent was authorized to register the disputed domain name in its own name in 1999, which is when the Complainant was established. The Complainant, or its other shareholders, must have known that the disputed domain name was registered by the Respondent as they alleged to have paid the annual renewal fees for the disputed domain name and the Complainant has actually been using the disputed domain name to link Internet users to its website. The Panel considers this to be an indication that the Complainant (at least implicitly) agreed to the registration of the disputed domain name by the Respondent, even though the beneficiary owner is the Complainant. The registration of the disputed domain name was therefore not made in bad faith.
Additionally, the Panel observes that this domain name dispute is part of a greater dispute between the parties, apparently based on contract(s) and alleged non-compliance. The parties have ample opportunity in ordinary court proceedings to argue their case. The Policy offers, however, limited administrative proceedings for domain names that potentially conflict with trademarks and which purpose is to prevent the misuse of the domain name system by so-called cybersquatters. These administrative proceedings are not intended to solve contractual disputes, and the Panel is lacking both the power and the legal means to deal with questions concerning an underlying contractual relationship and the legality of a right of retention (see LPA LES PRODUITS ASSOCIES SA vs. ICCWorldWide Limited, WIPO Case No. D2000-0900).
For the foregoing reasons, the Complaint is denied.
Date: January 23, 2013
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