Complainant is SimPlan AG of Maintal, Germany, represented internally.
Respondent is SimPlan of Terwolde, the Netherlands, represented by Van Diepen Van der Kroef Advocaten, the Netherlands.
2. The Domain Name and Registrar
The disputed domain name <simplan.nl> (the “Domain Name”) is registered with SIDN.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 20, 2010. On January 21, 2010, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On January 22, 2010, SIDN 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 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 27, 2010. In accordance with the Regulations, article 7.1, the due date for Response was February 16, 2010. The Response was filed with the Center on February 12, 2010.
In accordance with the Regulations, article 8.1, SIDN has commenced the mediation process on February 16, 2010. On March 9, 2010 SIDN has determined the mediation to not have been successful.
The Center appointed Wolter Wefers Bettink as the panelist in this matter on March 17, 2010. The Panelist 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's business consists of the provision of simulation services. Complainant is the proprietor of a Community figurative trade mark, registered on October 27, 1998, containing the textual element SIMPLAN.
The Domain Name has been registered on May 18, 1999 by Respondent, with whom Complainant claims to have started a partnership shortly before such registration. As from December 31, 2009 this partnership has ended. The Domain Name, <simplan.nl> is currently used by Respondent, for a website which contains a logo with the word “SimPlan”, similar to Complaint's mark, on which website Respondent offers simulation and system design services.
5. Parties' Contentions
A. Complainant
Complainant contends that <simplan.nl> is confusingly similar to the Community trade mark of which it is the proprietor and under which it undertakes public activities on a permanent basis. According to Complainant, the trade mark SIMPLAN is well-known to simulation users within Europe as Complainant is one of the largest simulation services providers. Complainant has several customers in the Netherlands, like Vanderlande and Hema, and is planning on opening a new branch in the country.
Complainant claims that Respondent has no rights or legitimate interests in the Domain Name, since it is an individual and is not commonly known by <simplan.nl>. According to Complainant, it has no valid connection or affiliation with Respondent, nor is Respondent a licensee of the trade mark. Furthermore, Respondent is said to use the trade mark to misleadingly divert customers to its own website whereas they are seeking Complainant's services.
Complainant alleges that the Domain Name is being used in bad faith, because Respondent is disrupting Complainant's business activities by preventing him from targeting his Netherlands based (potential) customers through the usage of the Domain Name. Complainant wants to use the “.nl” top level domain for its own business in the Netherlands. Furthermore, Respondent is claimed to capitalize on Complainant's well-known trade mark by creating a likelihood of confusion with Complainant's trade mark as to the source, sponsorship or endorsement of the website. According to Complainant, an Internet user looking for Complainant's services in the Netherlands will reasonably believe that the Domain Name will lead to a website held by Complainant.
B. Respondent
Respondent argues that the Domain Name is not identical or confusingly similar to the trade mark. The figurative nature of the trade mark would prevent the Domain Name from being identical. The fact that many of the trade mark's elements are lacking in the Domain Name, makes that the Domain Name is not confusingly similar.
Additionally Respondent claims that Complainant does not have a valid Community trade mark, because the trade mark has not been used in the past ten years.
Respondent further contends that it has rights or legitimate interests in the Domain Name, because it is responsible for the creation of most or all of the goodwill connected to the trade name Simplan in the Netherlands. Since April 1998 Respondent claims to be registered under the trade name “Simplan Simulatie en Systeemontwerp” and to have acted under the name “Simplan”.
Respondent denies that Complainant has completed projects for (the Dutch branches of) Vanderlande and Hema.
According to Respondent, Complainant has always been fully aware of and consented to the registration of the Domain Name in 1999. Respondent argues that the Domain Name has not been registered primarily for the purpose of disrupting the business of a competitor. At the time of registration, parties were not competitors.
Respondent further denies attracting Internet users to the website linked to the Domain Name by creating a likelihood of confusion. It also denies capitalizing on the trade mark. Instead, Respondent claims that its sole purpose is to be found under the Domain Name which it has used bona fide for more than a decade, under which it is well-known in the Netherlands and in connection to which it has built a significant amount of goodwill.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has shown that it has rights in a Community figurative trade mark containing the textual element SIMPLAN. The trade mark consists of an image of a circle punctuated with four rectangles. Respondent's objection that the figurative elements of the trade mark are lacking in the Domain Name is insufficient to come to a different conclusion. Firstly, it is obvious that a mark, to the extent that it includes figurative elements, cannot be reproduced in a domain name. To require some similarity with a device itself, for a finding under this first element of the Regulations, would always place the owners of such marks at a significant disadvantage. The terms of the Regulations include no such limitation against owners of such marks.
Secondly, it follows from the above that whether a domain name is identical or confusingly similar to a mark, is to be judged against the dominant textual elements of a complainant's mark. This approach is supported by prior panel decisions under the Regulations, as well as under the Uniform Domain Name Dispute Resolution Policy (the “UDRP” or the “Policy”) on which the Regulations are based in large part (see e.g.Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,
WIPO Case No. D2001-0031, the cases cited therein and Borges, S.A., Tanio, S.A.U. v. James English, WIPO Case No. D2007-0477: “The nature of a design mark may be relevant to whether its textual components are sufficiently dominant. But this is something that can only be judged on a case by case basis – according to the nature of the mark in question. Put in other words, the more distinctive or particular the textual elements of the trademark, the greater the likelihood of it being identical or confusingly similar”).
Due to its size and proportion in relation to the figurative elements and the relatively inconspicuous nature of these elements, the textual element SIMPLAN is to be considered the dominant part of the trade mark. Given also that the distinctiveness of the word “SimPlan” has not been contested by Respondent, this Panelist finds the Domain Name to be confusingly similar to Complainant's SIMPLAN trade mark.
Furthermore, Respondent puts forward that Complainant does not have a valid Community trade mark because of non-use. Respondent has submitted evidence that it has initiated invalidity proceedings against Complainants' Community trademark and two documents from Complainant, apparently dating from the years 2000 and 2008 respectively, which show another logo than the trade mark.
The Regulations are not the forum to decide on the validity of a trademark. What the Complainant has to show is that it has rights in the mark on which it relies for the Complaint. The registration certificate is generally accepted as sufficient evidence thereof. In this case, Complainant has submitted a photo copy of a print-out of the German Trademark Register as well as a copy of the Certificate of Registration of the Community trade mark SIMPLAN. This evidence, which has not been contested as such by Respondent, can be refuted for the purpose of a proceeding under the Regulations by providing conclusive evidence that the trademark has been abandoned, revoked, declared invalid or otherwise lost its validity. The evidence submitted by Respondent does not amount to such conclusive evidence.
B. Rights or Legitimate Interests
The Panel concludes from the parties' statements and the evidence submitted that Complainant and Respondent started a partnership in May 1999. This partnership has apparently been terminated on December 31, 2009. From that moment on any connection or affiliation with Complainant has been severed. Respondent contends that it registered the Domain Name in May 1999, with Complainant's consent.
Assuming that Respondent registered and used the Domain Name with permission of Complainant, such permission has been withdrawn with the termination of the partnership.
Respondent submits that it has rights in the trade name SimPlan which it alleges to have used in trade as the name of its company since 1998. As only evidence thereof, respondent provides an extract from the Dutch Chamber of Commerce Trade Register dated February 5, 2010 showing as the trade name of Respondent's company “Simplan Simulatie en Systeemontwerp”. This does not constitute evidence of Respondent's own right in the name Simplan, not only because the trade name is different, but also since under Dutch law a registration of a trade name in the Trade Register is insufficient to obtain (let alone demonstrate) rights in that trade name.
The Panelist also rejects Respondent's claim that before notice of the dispute, it was using the Domain Name in connection with the bona fide offering of goods. Respondent has not contradicted Complainant's statement that in March 2009 Complainant requested the transfer of the Domain Name. Nor has Respondent contested that, after termination of the partnership, it did not have a license or other authorisation from Complainant to use Complainant's trademark or the Domain Name. Since Respondent apparently uses the Domain Name, without consent from Complainant, for a website on which it offers its own services, which have no longer a connection with Complainant, its current use of the Domain Name cannot be considered to be “in connection with the bona fide offering of goods or services”. In fact, it would appear that Respondent is using the Domain Name to attract Internet users looking for Complainant (or its authorised representative in the Netherlands) to its website, where only Respondent's services are offered. This amounts to a “bait and switch” tactic which is not a legitimate domain name use (see e.g.Dr. Ing. h.c. F. Porsche v. Bv berry smits trading co,
WIPO Case No. DNL2009-0049).
In view of the above, the Panelist concludes that Respondent does not have an own right or legitimate interest in the Domain Name.
C. Registered or Used in Bad Faith
Article 2.1 sub c of the Regulations requires that Complainant shows that the Domain Name was registered or is being used in bad faith.
From the evidence it is clear that the Domain Name has been registered with the consent of Complainant. This implies that the Domain Name was registered in good faith, which would normally seal the fate of the Complaint. However, this consent has ended by December 31, 2009, at the termination of the partnership, which has turned Respondent's use of the Domain Name to bad faith. This is further evidenced by the logo Respondent uses on the website to which the Domain Name resolves, as this is very similar to the logos used by Complainant, in connection with services competing with Complainant's under a company name which is also very similar to Complainant's.
The Panelist concludes that the Domain Name has been used in bad faith and that, therefore, the Complainant has satisfied the third requirement under article 2.1 sub c of the Regulations.
7. Decision
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain name <simplan.nl> be transferred to the Complainant.
Wolter Wefers Bettink Sole Panelist
Dated: April 12, 2010
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