WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

tesa SE v. Heyting eBusiness Holding B.V.

Case No. DNL2014-0038

1. The Parties

The Complainant is tesa SE of Hamburg, Germany, represented by Hogan Lovells International LLP, Germany.

The Respondent is Heyting eBusiness Holding B.V. of Zwolle, the Netherlands, internally represented.

2. The Domain Name and Registrar

The disputed domain name <tesashop.nl> ("Domain Name") is registered with SIDN through Realtime Register.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 4, 2014. On September 4, 2014, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On September 5, 2014, 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 8, 2014. In accordance with the Regulations, article 7.1, the due date for Response was September 28, 2014. The Response was filed with the Center on September 28, 2014.

On October 6, 2014, SIDN commenced the mediation process. On October 15, 2014, SIDN informed parties that the dispute had not been solved in the mediation process.

The Center appointed Willem Hoorneman as the panelist in this matter on November 5, 2014. 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

The Complainant, tesa SE is one of the leading manufacturers of self-adhesive tape and related products and a wholly owned affiliate of Beiersdorf AG. Beiersdorf AG introduced a transparent and self-adhesive rubber tape under the name "tesa" to the market in 1936.

The Complainant is holder of, inter alia, the following registrations for its TESA trademark (the "Trademark"):

- Community Trademark no. 8979 TESA (word), filed on 01.04.1996 and registered on July 15, 1999, covering goods of international classes 01, 06, 07, 09, 16, 17, 19, 20, 21 and 26 (Seniority in Benelux: January 16, 1987);

- International Registration no. 327 065 TESA (word), designating among others Benelux and registered on November 21, 1966 for goods of international class 16 and17;

- International Registration no. 515 673 TESA (word), designating among others Benelux and registered on April 2, 1987 for goods of international classes 01, 06, 07, 09, 16, 17, 19, 20, 21, 24 and 26; and

- Community Trademark no. 098 355 96 (figurative), filed on March 23, 2011 and registered on January 31, 2012, covering goods of international classes 01, 06, 11,16, 17, 19, and 26 (Seniority in Benelux: 19.05.1992):

The Domain Name was registered by the Respondent on March 23, 2012.

5. Parties' Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to the Complainant's Trademark. The mere addition of the word "shop" after the Trademark does not serve to distinguish the domain name from the Trademark as it suggests that the Complainant's products are sold by the Complainant itself or an affiliate.

Furthermore, the Complainant states that the Respondent has no rights or legitimate interests in the Domain Name. The Respondent has no connection with the Complainant, nor has the Respondent been otherwise allowed by the Complainant to make any use of its Trademark in connection with self-adhesive tape and related products. The Complainant has not granted any consent to third parties to register the Domain Name. According to the Complainant, the use of the Domain Name does not meet the requirements set in the decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, particularly as the Respondent does not disclose its relationship to the Complainant and as it uses on its website the Trademark as well colors similar to the Complainant's figurative Trademark. The Domain Name is therefore, according to the Complainant, not used in connection with a bona fide offering of goods or services.

The Complainant contends that the Respondent is using the Domain Name in bad faith to intentionally attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website, in accordance to article 3.2 sub d of the Regulations. For the above reasons, the Complainant requests the transfer of the Domain Name.

B. Respondent

The Respondent contends that it only sells original Tesa products that have been put on the market by the Complainant. The Domain name is only used for providing access to a 'single brand store'. Respondent uses the Trademark to communicate that it sells original Tesa products. The Trademark is solely used for functional purposes. No figurative trademarks of the Complainant are used on the website. The website clearly displays the trade name of the Respondent ('Action Store') and communicates that the Action Store sells Tesa products. The use of the Trademark does not create the impression that there is a commercial connection with the Complainant. As such, the Respondent argues that it is making a bona fide offering of goods, absent any associated deception.

The Respondent contends that it has offered the Domain Name to the Complainant, which offer was not accepted by the Complainant.

6. Discussion and Findings

Pursuant to article 2.1 of the Regulations, the Complainant's request to transfer the Domain Name must meet three cumulative conditions:

a. The Domain Name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which the Complainant has rights, or other name by means of article 2.1(a) under II of the Regulations; and

b. The Respondent has no rights to or legitimate interests in the Domain Name; and

c. The Domain Name has been registered or is being used in bad faith.

The Respondent may demonstrate such rights or legitimate interests on its part, inter alia, through the circumstances mentioned in article 3.1 of the Regulations. The Complainant may provide evidence that the Domain Name has been registered or is being used in bad faith, inter alia, through the circumstances mentioned in article 3.2 of the Regulations.

A. Identical or Confusingly Similar

It is established case law that the country code Top-Level Domain (ccTLD) ".nl" may be disregarded in assessing the similarity between the domain name on the one hand, and the relevant trademark on the other hand (see: Taylor Made Golf Company, Inc. v. Lotom Group S.A., WIPO Case No. DNL2010-0067; Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).

The Domain Name is confusingly similar to the Complainant's Trademark, because the Domain Name incorporates the Trademark in its entirety. The Domain Name differs from the Trademark only in that the Trademark is followed by a generic or descriptive term, namely "shop". The addition of such a generic or descriptive term does not eliminate the confusing similarity with the Trademark (see, in particular: Seiko EPSON Corporation v. ANEM Computers / ANEM, WIPO Case No. DNL2010-0024, in which case the word "shop" was considered descriptive and generic).

Therefore, the Panel finds that the Domain Name is confusingly similar to the Trademark. The Complainant has thus established the first element of article 2.1 of the Regulations.

B. Rights or Legitimate Interests

The Respondent has asserted that it is a reseller of Tesa products, which the Complainant has not disputed.

Only under specific circumstances may a reseller of trademarked goods have a legitimate interest in a domain name incorporating the trademark. Pursuant to the above mentioned UDRP panel decision in
Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the use of a trademark in a domain name by an authorized sales agent of trademarked goods may be considered a bona fide offering of goods, constituting a legitimate interest, if several requirements are met. In later UDRP and .NL panel decisions, the same has been acknowledged in respect of such use by an (unauthorized) reseller, such as the Respondent (see, amongst others: Maison Louis Latour v. Jos Beeres Wijnkoperij, WIPO Case No. DNL2011-0074; and Seiko EPSON Corporation v. ANEM Computers / ANEM, WIPO Case No. DNL2010-0024).

The referenced requirements include, at minimum, the following: (1) the Respondent must actually offer the goods and services at issue; (2) the website must sell only the trademarked goods; (3) the website must accurately and prominently disclose the registrant's relationship with the trademark holder; and (4) the Respondent must not try to "corner the market" in domain names that reflect the Trademark.

The Panel notes that the website under the Domain Name, before notice of the dispute, prima facie met three of the above requirements, but not the requirement that it has to accurately and prominently disclose the Respondent's relationship with the Complainant. The Trademark is prominently displayed (several times) on the homepage of the website of the Respondent. The Respondent also uses the Trademark in conjunction with the words "Outlet Shop" creating the impression that the Respondent is an authorized sales agent of the Complainant even though this is not the case. Such impression is reinforced by the use of the same word and colors (white, red and blue) as the (figurative) Trademark of the Complainant. Therefore the Respondent, for purposes of the Regulations, has not been using the Domain Name for a bona fide offering of goods or services.

The Panel notes that the Respondent, upon receipt of the Complainant's warning letter(s), made efforts to bring its website in conformity with the (minimum) requirements for use of a domain name incorporating the Trademark. However, it is well-established that a panel takes into account pre-notification content (see Microsoft Corporation v. GooHoo, WIPO Case No. DNL2013-0029 and the cases cited therein). In any event, as further noted below, the website at the disputed domain name in its current format would not meet the Oki Data criteria.

Based on the foregoing, the Panel is of the opinion that the Respondent has no rights to or legitimate interests in the Domain Name under the Regulations.

C. Registered or Used in Bad Faith

The registrations of the Trademark predate the Domain Name's registration by several years, even decades. As the Respondent has registered the Domain Name <tesashop.nl> and is selling the Complainant's Tesa products on the website to which the Domain Name refers, the Panel deems it certain that the Respondent was aware of the Complainant's Trademark when registering the Domain Name. Moreover, the Panel assumes – and it has not been disputed by the Respondent – that the Trademark of the Complainant is a well-known trademark and the Complainant owns rights thereto effective and enforceable in the Netherlands, while the Domain Name is in the ".nl" domain, the website linked to it is in the Dutch language, the Respondent is established and runs its business in the Netherlands and the website also offers goods under the Trademark.

The Respondent has, upon receipt of the warning letter(s) on behalf of the Complainant indicating its rights and concerns, made efforts to bring its website in conformity with the (minimum) requirements for use of a domain name incorporating the Trademark. However, while the Domain Name incorporates the Trademark, and thereby attracts Internet users to the website of the Respondent, both the former and current website do not sufficiently disclose the Respondent's relationship with the Complainant. Therefore, the Panel must conclude that the Domain Name is being used by the Respondent for commercial gain, by intentionally attracting Internet users to its website, through the likelihood of confusion with the Complainant's Trademark as to the source, sponsorship, affiliation or endorsement of the Respondent's website. This constitutes evidence of bad faith in terms of the Regulations (article 3.2(d)) (see: Seiko EPSON Corporation v. ANEM Computers / ANEM, WIPO Case No. DNL2010-0024; and Taylor Made Golf Company, Inc. v. Lotom Group S.A., WIPO Case No. DNL2010-0067).

The Panel notes two further considerations. First, the website at the disputed domain name displays several links to other commercial websites (e.g., "www.shavingspecialist.nl" and "www.weledastore.nl"). Second, the Respondent appears to have offered the Domain Name to the Complainant, which might be further evidence that the Domain Name is registered or used by the Respondent in bad faith, in the circumstances mentioned in article 3.2 sub a 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 <tesashop.nl> be transferred to the Complainant.

Willem Hoorneman
Panelist
Date: November 26, 2014