WIPO Arbitration and Mediation Center
Case No. WIPO2004NL5
ARBITRATION AWARD
In an arbitration under the
Regulations for Arbitration on .nl Domain Names
between:
eBay Inc.
San José
California
United States of America
(Plaintiff)
and
JustDesign B.V.
Amersfoort
The Netherlands
(Defendant)
Arbitral Tribunal:
Paul L. Reeskamp
Representative of the Plaintiff:
Mr. P.H. Blok
Houthoff Buruma
Amsterdam
The Netherlands.
Representative of the Defendant:
A. Roose
Amersfoort
The Netherlands
1. The Parties
Plaintiff
The Plaintiff is eBay Inc., a company incorporated under the laws of the state of California, USA, having its principal place of business at San José, California, USA. The Plaintiff is represented by Mr. P.H. Blok, Houthoff Buruma, Amsterdam, The Netherlands.
Defendant
The Defendant is JustDesign B.V., a company incorporated under the laws of the Netherlands, with its registered offices at Amersfoort, The Netherlands represented by A. Roose, Amersfoort, The Netherlands.
Van Dalen
Inspectie- en Adviesbureau J. van Dalen B.V., with its registered offices at Amersfoort, The Netherlands (‘Van Dalen’), represented by J. van Dalen, Amersfoort, The Netherlands, has submitted a document titled ‘Statement of Defense’ on November 2, 2004. Van Dalen states that Defendant has registered the Domain Name on Van Dalen’s behalf and that Defendant and Van Dalen entered into an agreement on August 8, 2004 (Annex 1 to Van Dalen’s ‘Statement of Defense’) by which Van Dalen is obliged to hold Defendant harmless against all responsibilities and financial consequences’ (alle verantwoordelijkheden en financiële gevolgen) of Defendant’s registration of the Domain Name. Although this document is titled ‘Statement of Defense’, the document does not explicitly say whether Van Dalen wishes to join or intervene, in the meaning of Article 21 of the Regulations for Arbitration on .nl Domain Names (‘Regulations’), or merely enlighten the case. Therefore, the Tribunal has taken note of the submission by Van Dalen, but the Tribunal does not, as argued by the Plaintiff, consider such submission to be a request to join the case as a party.
2. The Domain Name and Participant
The Domain Name under dispute is
The Participant through which the Domain Name is registered is Global Riot, Hierden, The Netherlands.
3. Procedural History
The Complaint has been filed in accordance with the requirements of the Regulations on October 14, 2004.
The acknowledgement of Receipt of the Complaint has been sent to the Plaintiff, by the Center on October 15, 2004.
On October 15, 2004, the Center has sent a Request for Registry Verification to SIDN.
On October 15, 2004, SIDN has sent the Registry Verification, informing the Center:
- that JustDesign was the then current registrant of the Domain Name;
- that Global Riot is the Participant;
- what the contact details of JustDesign are (administrative contact and technical contact);
- that the Domain Name was registered on August 9, 2004, and hence that the Regulations apply to the Domain Name;
- that the Domain Name will remain locked during these Arbitration Proceedings in accordance with Article 8 Regulations.
According to the Complaint Plaintiff made a payment of € 2,250.-- to the Center by bank transfer on October 13, 2004. This is proper payment under Article 28 Regulations.
The Tribunal agrees with the Center’s assessment that the Complaint is in compliance with the formal requirements.
The Statement of Defense has been submitted by the Defendant on November 2, 2004, and hence in due time (Article 9 Regulations).
As noted above, on November 2, 2004, Van Dalen submitted a document titled ‘Statement of Defense’.
On November 8, 2004, the Center acknowledged receipt of the Defendant’s Statement of Defense and Van Dalen’s document titled ‘Statement of Defense’, and allowed parties to select a single arbitrator out of three suggested arbitrators.
On November 11, 2004, Plaintiff submitted an ‘Additional Submission’ in which it reacted to Van Dalen’s submission and in which Plaintiff adjusted its claims, which Additional Submission has been sent to Defendant and Van Dalen by the Center on November 12, 2004.
On November 12, 2004, Defendant submitted a response to Plaintiff’s ‘Additional Submission’.
Between November 9, 2004, and November 12, 2004, the Parties exchanged various e-mails with the Center.
On November 16, 2004, in accordance with Article 10.11 Regulations, the Parties have been informed by the Center that Paul L. Reeskamp is appointed as single arbitrator and that he has submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center in compliance with Article 10.9 Regulations. The Tribunal holds that it has been appointed properly.
4. Factual Background
Trademarks rights
Plaintiff is the proprietor of the following trademarks rights:
- Benelux trademark registration EBAY registered with the Benelux trademark office under number 642707, filing date December 22, 1998, registered for services in classes 35, 38 and 42;
- Community trademark EBAY registered with the Office for Harmonization in the Internal market under number 825802, filing date May 15, 1998, registration date January 4, 2000, registered for ser-vices in class 42;
- the Community trademark EBAY registered with the Office for Harmonization in the Internal market under number 001029198, filing date December 24, 1998, registration date June 22, 2000, registered for goods and services in classes 14, 16, 25 and 35;
- Community trademark EBAY, registered with the Office for Harmonization in the Internal market under number 001238617, filing date July 12, 1999, registration date October 24, 2000, registered for goods and services in classes 9, 28 and 41.
Domain Name and website
Defendant has registered the Domain Name
Claims
In its ‘Additional Submission’ Plaintiff eventually filed the following (adjusted) claims:
1. Plaintiff shall become the holder of the Domain Name
2. Defendant and Van Dalen BV shall be prohibited from registering domain names similar to the contested Domain Name
3. Defendant and Van Dalen BV are jointly and severally liable to pay the costs of the proceedings, including Plaintiff’s costs of legal assistance which at the time of filing of the Complaint amounted to approximately € 5.013,75;
4. the award, in accordance with Article 23.5 Regulations, shall be declared enforceable regardless of whether an appeal against the award is lodged.
5. Parties’ Contentions
A. Plaintiff (Complaint, October 14, 2004)
According to the Complaint Plaintiff stated – as far as relevant for these proceedings – that:
a. by registering and using the Domain Name Defendant has registered a sign that is (almost) identical to Plaintiff’s trademark EBAY, without having a legitimate reason to do so; is diluting the distinctiveness of Plaintiff’s trademarks; and is taking unfair advantage of the repute of Plaintiff’s trademark since it attracts internet users who are looking for Plaintiff’s services. Hence, Defendant has infringed Plaintiff’s Benelux trademark rights in the sense of Article 13A (1) d Benelux Trademark Act (‘BTA’);
b. as far as it should be considered that Defendant has used the Domain Name for services dissimilar to the services Plaintiff’s Benelux trademark has been registered for, Plaintiff opposes this on the ground of Article 13A (1) c BTA for reasons set out above under a;
c. Defendant’s registration and use of the Domain Name which is (almost) identical to Plaintiff’s trademark can be opposed on the ground of Article 13A (1) a and/or b BTA;
d. Defendant’s registration and use of the Domain Name can be opposed on the ground of Article 5 and 5a Dutch Trade Name Act.
B. Defendant (Statement of Defense, November 2, 2004)
According to its Statement of Defense Defendant stated – as far as relevant for these proceedings – that:
a. it registered the Domain Name upon the request of its client Van Dalen;
b. since the Domain Name was available at the date of registration it assumed that Plaintiff had no interest in it;
c. the claim as filed against Defendant should be dismissed since Defendant entered into an agreement with Van Dalen by which Van Dalen has an obligation to hold Defendant harmless from any claims relating to the registration of the Domain Name;
d. Van Dalen has offered to transfer the Domain Name to Plaintiff;
e. Plaintiff’s claim that Defendant shall pay Plaintiff’s costs for legal assistance, should be dismissed since Defendant and Van Dalen would have voluntarily cooperated to transfer the Domain Name if Plaintiff had requested so, however Plaintiff has chosen not to enable Defendant to do so and instantly initiated these arbitration proceedings.
C. Van Dalen (‘Statement of Defense’, November 2, 2004)
Van Dalen’s document titled ‘Statement of Defense’ holds the same statements as Defendant’s Statement of Defense. Besides, Van Dalen has stated that:
a. it rejects Plaintiff’s claim that it shall pay the costs of these arbitration proceedings;
b. it has sent to Plaintiff the form for transfer of the Domain Name.
D. Plaintiff (Additional Submission, November 11, 2004)
In its Additional Submission Plaintiff responded to the Statement of Defense and Van Dalen’s Submission and asserted – as far as relevant for these proceedings– that:
a. the agreement entered into between Defendant and Van Dalen does not release Defendant from being the Domain Name Holder as meant in Article 1 sub I Regulations and as such the Defendant remains liable for the registration and use of the Domain Name;
b. Van Dalen has not responded to Plaintiff’s letter dated November 5, 2004, to immediately have Defendant return a signed form for the transfer of the Domain Name and to sign a cease and desist statement;
c. therefore, Plaintiff still has a legitimate interest in pursuing these arbitration proceedings;
d. Defendant and Van Dalen should be ordered to pay the costs of the proceedings, including Plaintiff’s costs for legal assistance at the time of filing the Complaint;
e. it was necessary for Plaintiff to arrange for the locking of the Domain Name registration by initiating these arbitration proceedings before contacting Defendant with a view to the fact that Plaintiff has tried to obtain the Domain Name by amicable settlement twice but that the Domain Name was transferred to a third party or cancelled after Plaintiff contacted the (then) Domain Name holder;
f. in its Additional Submission Plaintiff adjusted it claims mainly to the purpose that its initial claims should be awarded against Van Dalen as well.
E. Defendant (Response to Additional Submission, November 12, 2004)
In its ‘Response to Complainant’s Additional Submission’ Defendant stated that:
a. if Plaintiff had returned the transfer forms as sent by Van Dalen it would be ‘by now probably holder of it’;
b. Plaintiff wants a settlement only if Defendant and Van Dalen pays all costs as claimed by Plaintiff, which they do not feel responsible for;
c. it is still willing to transfer the Domain Name to Plaintiff provided it fills out the concerned forms;
d. once the Domain Name is transferred Defendant is willing to sign the cease and desist statement as requested by Plaintiff;
e. if ‘WIPO’ concludes so it will pay the costs of arbitration.
6. Discussion and Findings
Jurisdiction and Applicable Law
The Defendant has registered the Domain Name on August 9, 2004. Pursuant to Article 21 Registration Regulations of SIDN, the Defendant thereby submitted itself to these arbitration proceedings in relation to claims by third parties that by registering and/or using the registered Domain Name, the Domain Name Holder is infringing a Benelux trademark right. SIDN has submitted records confirming the applicability of these arbitration proceedings to the Domain Name. The Plaintiff’s submission of the Complaint thus establishes a valid arbitration agreement between the parties. Considering this, as well as the legal basis of the Complaint under – inter alia – Benelux trademark law, the Tribunal holds that it has jurisdiction to render an arbitration award under Article 11.2 Regulations, noting that the legal consequences of these proceedings are at the free disposal of the parties in the sense of Article 1020.3 Dutch Code of Civil Procedure.
Language and place of the proceedings
In accordance with Article 17.2 Regulations the language of the proceedings is English.
In accordance with Article 17.4 Regulations the place of arbitration is Amsterdam, the Netherlands.
Trademark infringement
The Tribunal holds it as a fact of general knowledge that Plaintiff’s trademark EBAY is a well-known trademark in the meaning of Article 13A (1) c BTA and/or Article 9 (1) c Community Trademark Regulation.
Plaintiff’s statement that Defendant and Van Dalen – who instructed Defendant – have infringed Plaintiff’s Benelux trademark rights as meant in Article 13A (1) d BTA by registering and using the Domain Name, has not been contested by either Defendant or Van Dalen.
The Tribunal holds that the registration by Defendant on Van Dalen’s instruction and the use by Defendant of the Domain Name which is (almost) identical to Plaintiff’s well-known trademark EBAY should be considered as an infringement of Plaintiff’s Benelux trademark rights. As Plaintiff has put forward, by doing so Defendant has unfairly profited from the repute of Plaintiff’s trademark in the course of trade without having a valid reason to do so. Plaintiff is entitled to oppose this on the ground of Article 13A (1) d BTA:
i) as far as it regards the mere registration of the Domain Name by Defendant, since Defendant thus has enabled itself and apparently Van Dalen to profit from the repute of Plaintiff’s well-known trademark in the course of trade, which in itself qualifies as the use of a sign similar to Plaintiff’s trademark for purposes other than to identify the origin of goods and/or services offered by Defendant and/or Van Dalen;
ii) as far as it concerns the subsequent use Defendant has made of the Domain Name by promoting its services on the website directly linked to the Domain Name, which also qualifies as use of a sign similar to Plaintiff’s trademark for purposes other than to identify the origin of Defendant’s (and/or Van Dalen’s) services, by which Defendant has actually unfairly profited from the repute of Plaintiff’s well-known trademark.
In light of the above, the Tribunal does not see a need to separately address the further grounds rased by the Plaintiff to oppose the registration and/or use of the Domain Name.
Costs
The discussion between the Parties has mainly focused on the issue whether Defendant should be ordered to pay the costs of these proceedings and the costs Plaintiff has made for legal assistance for these proceedings.
Defendant’s defense in this respect holds in essence that it cannot be ordered to pay these costs since Plaintiff has instantly initiated these arbitration proceedings without first trying an amicable settlement.
There are two conflicting principles here. On the one hand under Article 28.8 Regulations the Tribunal should in principle order a Party against which it has rendered an award to pay these costs. On the other hand, according to Annex 4 of the Regulations, the Tribunal should – inter alia – take into account whether the Plaintiff has made sufficient efforts to settle the dispute amicably.
The Tribunal will order Defendant to pay the costs of these proceedings (arbitrator fees and administrative costs) and the reasonable costs for legal assistance made by Plaintiff, since the Plaintiff’s trademark rights have been obviously infringed in bad faith. Defendant should have been well aware of Plaintiff’s trademark rights taking into account that Plaintiff’s trademark EBAY is well-known. By nevertheless registering and using the Domain Name, Defendant has deliberately taken the risk that Plaintiff would initiate these arbitration proceedings without first trying an amicable settlement, with all costs thereto incurred by Plaintiff. Taking into account the bad faith nature of the trademark infringement, the Tribunal deems it justified that Plaintiff did not want to run the risk that the Domain Name would be transferred to a third party and instead has chosen to instantly initiate these proceedings by submitting its Complaint thus effecting locking the Domain Name. The alternative way to lock the Domain Name would have been through the Dutch Civil Courts, which could have well resulted in the same or even higher costs for legal assistance.
The Tribunal rejects Defendant’s statement that it may have assumed Plaintiff not to have interest in the Domain Name on the mere ground that Plaintiff had not registered it.
The fact that Van Dalen has offered to arrange for the transfer of the Domain Name to Plaintiff does not alter the Tribunals’ view on this point, since this offer was made after Plaintiff submitted its Complaint and Plaintiff is not requesting the payment of any costs for legal assistance except those incurred at the time of filing its Complaint.
Since the Defendant has not contested that the amount of costs for legal assistance made by Plaintiff are reasonable and since the Tribunal deems it plausible that the actual costs as claimed are incurred, it will order Defendant to pay the costs claimed by the Plaintiff (Article 28.8 Regulations and Annex 4 Regulations).
Enforceable regardless appeal
The Tribunal notes, inter alia, Defendant’s willingness, expressed in its submissions, to transfer the Domain Name to the Plaintiff. Therefore, pursuant to Article 23.5 Regulations and in line with Plaintiff’s request, this Tribunal finds it reasonable to order the award enforceable regardless of whether an appeal will be lodged.
7. Decision
With a view to Article 3 Regulations and the facts and findings set out above, the Tribunal decides as follows:
1. eBay Inc. shall become the holder of the Domain Name
2. JustDesign B.V. shall be prohibited from registering domain names similar to Plaintiff's trademark eBay as far as valid for the Benelux in the future, liable to a penalty of € 5,000.-- or each violation and/or € 1,000.-- for each day that any such violation continues;
3. JustDesign B.V. shall pay to the Plaintiff a total amount of € 7,000.-- (being the administration costs of these proceedings and the Tribunal’s fees, in a total amount of € 2,250.-- and € 4,750.-- as reasonable costs of Plaintiff’s legal representation);
4. with reference to Article 23.5 Regulations, this award is enforceable regardless of whether an appeal will be lodged.
Paul L. Reeskamp
Arbitrator
Amsterdam, The Netherlands
Dated: November 30, 2004