Complainant is Masterbed B.V of Doorn, the Netherlands, represented by Dohmen Advocaten, the Netherlands.
Respondent is Sleep 21 Ltd. of Ta'Xbiex, Malta, represented by Schenkeveld Advocaten, the Netherlands.
2. The Domain Name and Registrar
The disputed domain name <misterwaterbed.nl> is registered with SIDN through Key Systems GmbH.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2010. On January 14, 2010, the Center transmitted by email to SIDN a request for registrar verification in connection with the domain name at issue. On January 15, 2010, SIDN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient as it was not in the English language, Complainant filed an English version of the Complaint on January 25, 2010. 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 16.5, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 26, 2010. In accordance with the Regulations, article 7.1, the due date for Response was February 15, 2010. The Response was filed with the Center on February 15, 2010.
In accordance with the Regulations, article 8.1, SIDN commenced the mediation process on February 22, 2010. On March 3, 2010 SIDN determined that the mediation process was unsuccessful and terminated the mediation process.
The Center appointed Remco M.R. van Leeuwen as the panelist in this matter on March 16, 2010. 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.
4. Factual Background
Complainant
Trade name
Complainant trades in beds. It claims to do so under the trade name “misterbed.nl” since 2004. This trade name is not registered in the trade registry of the Chamber of Commerce. As proof that it has used this trade name, Complainant has submitted copies of its website, advertisements, stationary and pictures of its vans and boarding on its company building with the name “misterbed.nl” on it.
Trademark
Complainant claims to have a licence for the following trademark (hereinafter: the “Trademark”):
The device mark MISTERBED.NL, registered in the Benelux on May 24, 2004, under number 756 683, for goods in classes 20 and 24;
The Trademark is registered in the name of Thorheim Beheer B.V. As Annex 12, Complainant has submitted a statement showing that Thorheim Beheer has granted Complainant a licence to the Trademark and has also granted Complainant the right to invoke this trademark right on its own behalf against infringements.
Domain name
Complainant is the owner of the domain name <misterbed.nl>.
Respondent
Respondent trades in waterbeds.
According to the verification information from the SIDN the domain name <misterwaterbed.nl> (the “Domain Name”) has been registered by Respondent on September 10, 2009.
5. Parties' Contentions
A. Complainant
Trademark or Trade Name Protected under Dutch Law
Complainant claims to be entitled to the trade name “misterbed.nl” and, through a license, also entitled to the Trademark, in which Trademark the word element MISTERBED.NL is the distinctive part. Complainant further claims that the Domain Name is confusingly similar to the trade name and Trademark. In the Domain Name only the generic word “water” has been added, making the word “bed” into “waterbed”, while waterbeds also form a part of the collection of beds Complainant sells. As a result the public will presume that the Domain Name directs to a specific part of Complainant's collection.
No Rights or Legitimate Interest
According to Complainant, Respondent does not have any rights or legitimate interests in the Domain Name. Though Respondent has applied for the Community Trademark MISTER WATERBED on September 10, 2009, this word mark has not yet been registered. This application is in any event younger than Complainant's rights and, more importantly, cannot be invoked yet by Respondent as it has not yet been registered.
Registration and Use in Bad Faith
Complainant claims that the Domain Name is registered and is being used in bad faith. According to Complainant, Respondent should have known about the older rights of Complainant. After all, Complainant has been trading under the Trademark and trade name misterbed.nl for over five years. Moreover, according to Complainant, Respondent has copied various elements from Complainant's website onto its own website, among which some texts and a very similar cartoon character.
B. Respondent
Respondent claims that Complainant cannot invoke the Trademark because it is not the owner of the Trademark. Moreover, according to Respondent, the Trademark is merely descriptive and has only been registered in light of its figurative elements. In view of the descriptiveness of the Trademark, the Domain Name is not similar to it and therefore there is also no risk of confusion.
Respondent has, in its opinion, a legitimate interest in the Domain Name as it has already made substantial investment in the website attached to it and commercials for it.
Respondent does not deny that Complainant uses the trade name “misterbed.nl”, but does deny that it has done so for five years. According to Respondent this does not appear from the Annexes to the Complaint, nor does it show in which territory the trade name is protected.
6. Discussion and Findings
A. Identical or Confusingly Similar
Trade name
Respondent states that Complainant has not shown that its trade name “misterbed.nl” is older than the Domain Name and that it is unclear where this trade name is protected.
Complainant has submitted a large number of documents showing use of its trade name, among which an advertisement in a newspaper from 2005. Also, a brief Internet check shows that the trade name “misterbed.nl” has been used on the website of Complainant since 2004. Rights to a trade name originate by the use of that name. Based on these documents it may be assumed that Complainant has indeed used its trade name throughout the Netherlands since 2004.
Respondent claims that the trade name “misterbed.nl” is too descriptive and therefore there is no risk of confusion with the Domain Name.
As even descriptive names can qualify as trade names, as long as they do not monopolize the language, the Panelist finds that the trade name is valid at least for purposes of these proceedings. Though the level of descriptiveness will have an effect on the scope of protection the trade name has, in the opinion of the Panelist, the Domain Name is highly similar to the trade name “misterbed.nl”. The mere addition of the word “water” does not make a sufficient change to prevent confusion between the trade name and the Domain Name.
Trademark
Respondent claims that Complainant cannot invoke the rights to the Trademark.
Nonetheless, the Panelist rules that Complainant has sufficiently proved that it, in its capacity of licensee, has rights in the Trademark as mentioned in the Regulations. This ruling is not only in accordance with the decision in Komatsu Europe International N.V. v. Ivo Van Soest, h.o.d.n. SmartLogic, WIPO Zaaknr. DNL2009-0006, but also in line with the general opinion concerning licensees under the Uniform Domain Name Dispute Resolution Policy (UDRP), which is similar to the Regulations. The Panelist further notes that article 2.32 of the Benelux Convention concerning Intellectual Property (Trademarks and Designs) does not contain an unconditional prohibition for licensees to enforce relevant rights.
Respondent further states that the Trademark is merely descriptive and only valid because sufficient figurative elements are added. A registered design mark does not automatically give the owner the right to the word element in that trademark. However, in the opinion of the Panelist the word “misterbed” is not merely descriptive but has some distinctive character in itself. The Panelist further notes that Respondent apparently shares this view as Respondent itself has filed the word mark MISTER WATERBED and is therefore also of the opinion that this mark is not completely descriptive.
Though the similarity between the Domain Name and the Trademark is less in view of the many figurative elements added to the Trademark, “MISTERBED.NL” remains the main part of the Trademark, which part is similar to the Domain Name. Since “waterbeds” are a specific category of products within the main category “beds”, this similarity may lead to confusion.
The Panelist therefore rules that based on Complainant's trade name rights and to a lesser extent based on its Trademark rights, Complainant has met the first ground of the Regulations as set out in article 2.1 sub a under I.
B. Rights or Legitimate Interests
Different from what Respondent claims, the fact that substantial investments have been made in the website attached to the Domain Name, does not as such create a legitimate interest in a domain name.
Respondent claims to have a right in the Domain Name because the Domain Name is merely descriptive. As set out under the above section A, the Panelist does not share this view.
The Respondent has further not alleged that it is commonly known by the Domain Name (Regulations, article 3.1 sub b), or 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 (Regulations, article 3.1 sub c), nor has the Panelist found any evidence in that regard. The record does not present any circumstances which might otherwise indicate a right or legitimate interest in the Domain Name.
The Panelist therefore rules that Complainant has met the second ground of the Regulations as set out in article 2.1 sub b.
C. Registered or Used in Bad Faith
Complainant claims that Respondent was, or should have been, aware of Complainant's older rights in its Trademark and trade name “misterbed.nl” and that bad faith of Respondent is also shown by the fact that it has copied parts of Complainant's website.
Now that both Complainant and Respondent conduct their activities on the same market and sell (partly) identical products, the Panelist is of the opinion that Respondent should indeed have been aware of Complainant's older rights. Moreover, Respondent has not denied (sufficiently) that it has copied some specific elements, such as the cartoon character, from Complainant's website. Therefore, the Panelist rules that Complainant has sufficiently shown bad faith in the registration and use of the Domain Name by Respondent.
The Panelist therefore rules that Complainant has met the third ground of the Regulations as set out in article 2.1 sub c.
7. Decision
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain name <misterwaterbed.nl> be transferred to Complainant.
Remco M.R. van Leeuwen Sole Panelist
Dated: March 30, 2010
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