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WIPO

 

WIPO Arbitration and Mediation Center

ARBITRATION AWARD

Volkswagen AG v. Princa B.V.

Case No. WIPO2006NL10

In an arbitration
under the Regulations on
.nl Domain Names
between:

Volkswagen AG
Berliner Ring 2
D-38436 Wolfsburg
Germany

(Plaintiff)

and

Princa B.V.
Koning Davidlaan 25
6564 AC
Heilig Landstichting
The Netherlands

(Defendant)

Arbitration Tribunal:

Mr Tjeerd F.W. Overdijk
Amsterdam

 

This arbitration award is rendered by me as arbitrator under the Regulations for Arbitration on .nl Domain Names (“the Regulations”) of the Stichting Internet Domeinregistratie Nederland (“SIDN”), in a dispute between Volkswagen AG (the Plaintiff) and Princa B.V. (the Defendant) concerning the domain name <vw.nl>.

 

1. The Parties

The Plaintiff, Volkswagen AG, is a company incorporated under the laws of Germany, with its registered office in Wolfsburg, Germany, represented by Mr. Koch from HK2 Rechtsanwälte in Berlin, Germany.

The Defendant, Princa B.V., is a limited liability company incorporated under the laws of the Netherlands, with its registered office in Heilig Landstichting, the Netherlands. The Defendant did not appoint a representative.

 

2. The Domain Name and Participant

The domain name in dispute is <vw.nl> (the “Domain Name”).

It follows from the exhibits submitted by the Plaintiff that, before the Domain Name was transferred to the Defendant, the Domain Name was previously registered by Bees B.V., with Mr. W. de Witte as administrative contact. On November 17, 2004, the Domain Name was transferred through Stelso, a sole trader’s business owned by Mr. B.J.L. Stenssen in Beuningen, the Netherlands. Stelso is a so-called ‘Participant’ (accredited registrar listed with SIDN), and acted as intermediary in the conclusion of the registration agreement between Princa B.V. and SIDN.

 

3. Procedural History

The Complaint was received by the WIPO Arbitration and Mediation Center (the “Center”) by e-mail on July 18, 2006, and in hardcopy on July 20, 2006.

The Center verified that the Complaint met the formal requirements of article 7 of the Regulations. The Tribunal agrees with the Center’s assessment that the Complaint is in compliance with the formal requirements. The Complaint was notified on July 21, 2006, in accordance with Regulations, articles 5.5 and 7.1.

No Statement of Defence was submitted to the Arbitration Tribunal by the Defendant, and the notification of Defendant Default was notified to Parties on August 11, 2006.

In accordance with article 10.11 of the Regulations, the Center appointed Tjeerd F.W. Overdijk as sole arbitrator on August 29, 2006. The Tribunal finds that it was properly constituted. The Tribunal has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with article 10.9 of the Regulations.

On September 12, 2006, the Center received a letter from Princa B.V., dated August 17, 2006, stating: “This is to inform you about the fact that the economical ownership of the domain vw.nl has been transferred per commercial contract as of March 24 th 2006 from Princa BV to: Bwin Technologies Ltd.” The letter furthermore provided an address as well as the contact details of the contact person in the Netherlands. Finally the letter noted that “Considering the amount of marks registered with the letters VW (as listed in annex no. 30) and although we cannot speak for Bwin Technologies Ltd. or Mr. Hendrik F. Hendriks we are almost sure that a friendly arrangement can be negotiated for the transfer of the vw.nl domain to one of the registered mark holders.”

 

4. Factual Background

The Plaintiff is the owner of the following registered trademarks for the sign VW:

Community trademarks (CTM):

- CTM No. 001354216 (word mark), registered for classes 4, 7, 9, 12, 14, 16, 18, 25, 35, 36, 37, 38, 39, 40, 41, 42, filing date October 20, 1999;

- CTM No. 002700623 (word mark), registered for classes 35, 43, 44, 45, filing date May 17, 2002;

- CTM No. 000703983 (figurative mark), registered for classes 1 – 42, filing date December 12, 1997;

International Trademarks (IRs):

- IR No. 197406 (word mark), registered for class 12, registered December 22, 1956, amongst others designated for the Benelux;

- IR No. 728196 (word mark) registered for classes 7, 12, 16, 28, 35, 36 - 42, registered October 21, 1999, amongst others designated for the Benelux;

- IR No. 708041 (figurative mark), registered for classes 1 – 42, registered date July 2, 1998, amongst others designated for the Benelux;

- IR No. 623168 (figurative mark), registered for classes 1 – 9, 11, 12, 14, 16 – 18, 20 – 22, 24, 25, 27, 28, 34, registered February 18, 1994, amongst others designated for the Benelux;

- IR No. 564504 (figurative mark), registered for classes 35 – 37, 39, 41, 42, registered November 14, 1990, amongst others designated for the Benelux;

- IR No. 468790 (figurative mark), registered for classes 37, 39, 40, registered March 20, 1982, amongst others designated for the Benelux;

The above referenced trademarks owned by the Plaintiff will hereafter be referred to as “the Trademark”.

On January 18, 2005, the Plaintiff sent a letter with an accompanying “Cease and Desist Declaration” to the previous registrant, Bees B.V. In this letter the Plaintiff demanded, amongst others, that Bees B.V. cease and desist from using the domain name <vw.nl> and that Bees B.V. transfer the <vw.nl> domain to the Plaintiff, with a penalty of

€ 10.000 in case of violations. The letter was returned because Bees B.V. was unknown to the postal service. Consequently, the Plaintiff sent the letter to Mr. W. de Witte. Mr. de Witte responded for the Defendant, Princa B.V., in its facsimile of February 14, 2005, and informed the Plaintiff “We are not infringing any domain of Volkswagen AG, because vw.nl (VerzekeringsWinkel.nl) is not owned by Volkswagen.”

In this letter the Defendant stated that it was willing to transfer the Domain Name to the Plaintiff for an amount of € 75.000. The Plaintiff responded by a letter to the Defendant dated February 23, 2005, and insisted on transfer of the Domain Name.

Mr. de Witte responded for the Defendant by facsimile of February 25, 2005, stating that he was willing to transfer the Domain Name to the Plaintiff for an amount of € 55.000.

From the exhibits submitted by the Plaintiff it can furthermore be inferred that the website “ www.vw.nl”:

- on April 20, 2005 consisted of one page stating: “ This site is under construction.”

- on July 14, 2005, showed various banner advertisements for amongst others Volkswagen cars;

- since September 2005, regularly showed amongst others various Google advertisements for Volkswagen products;

- since December 2005, showed the heading “Voordeel Warenhuis”, including the sub category “ Volkswagen Voordeel”;

- contains amongst others metatags for the signs “Volkswagen” and “VW”;

- contains texts which are not visible for the visitor (e.g. white letters against white background) which function as keywords for search engines and which comprise product names of the Plaintiff, such as Volkswagen, Polo and New Beetle.

 

5. The contentions of the Parties

The Plaintiff

The Plaintiff contends and has submitted various exhibits to substantiate that Volkswagen as well as its products are well-known all over the world and that Volkswagen is one of the biggest car manufacturers worldwide. The Plaintiff contends that the VW trademarks can be considered as well-known trademarks within the meaning of article 6bis of the Paris Convention, article 9 (1) c of the Community Trademark Regulation (“CTRM”) and article 13A(1) c of the Benelux Trademark Act (“ BTA”) (since September 1, 2006, article 2.20 (1) c of the Benelux Intellectual Property Treaty (BIPT)).

Furthermore, the Plaintiff states that “VW” has also been used as a trade name in the Netherlands in the sense of article 1 Trade Name Act (“TNA”).

The Plaintiff contends, in summary, that the Defendant, by registering and using the domain <vw.nl> infringes upon its trademark rights (articles 13A(1)a, b, c and d BTA, now article 2.20 BIPT, and article 9 (1) a, b and c CTMR and upon its trade name rights (article 5 and 5a of the TNA) and requests the Arbitration Tribunal to find that:

The Plaintiff shall become the holder of the domain name <vw.nl> instead of the Defendant and that the award shall replace the form required by SIDN for the Change of Domain Name Holder;

The Defendant shall be prohibited from registering domain names similar to the contested domain name <vw.nl> in the future, liable to a penalty of € 5.000 for each such domain name registered;

The Defendant shall pay the costs of the arbitration procedure, including the Plaintiff’s cost of legal assistance;

The award shall be declared enforceable regardless of whether an appeal against the award is lodged.

B. The Defendant

The Defendant did not submit a Defence.

 

6. Discussion and Findings

Jurisdiction and Applicable Law

The Defendant became the owner of the Domain Name on November 17, 2004. The change of ownership has been recorded in the register of .nl Domain Names with effect from that date. Pursuant to article 21.2 of the Registration Rules 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 or Dutch trade name right. SIDN has submitted records confirming the applicability of these arbitration proceedings to the Domain Name. The Plaintiff’s submission of the Complaint thus constitutes an arbitration agreement between the parties. This arbitration agreement cannot be deemed to lead to the determination of legal consequences which are not at the free disposal of the parties in the sense of article 1020.3 Dutch Code of Civil Procedure and therefore forms a valid basis for this arbitration. Considering this, as well as the legal basis of the Complaint under – inter alia – Benelux trademark law, the Tribunal has jurisdiction to render an arbitration award under article 11.2 Regulations.

Language and Place of the Proceedings

The Plaintiff is not resident or registered in the Netherlands. The Complaint has been filed in English, which makes it plausible that the Plaintiff does not have knowledge of the Dutch language. Therefore, in accordance with article 17.2 of the Regulations the language of the proceedings is English. In accordance with article 17.4 Regulations the place of arbitration is Amsterdam, the Netherlands. The domicile of the Arbitration Tribunal is Amsterdam, the Netherlands.

Procedural Considerations

As stated in paragraph 3 which summarizes the procedural history the Defendant failed to submit a Defence. Pursuant to article 9.4 of the Regulations the procedure shall nevertheless proceed and the Arbitration Tribunal shall rule on the basis of the Complaint. It also follows from article 9.4 that the award to be rendered shall grant the remedy except if the Arbitration Tribunal considers the Complaint to be baseless, i.e. in case the Complaint is apparently ill-founded or plainly inadmissible.

The Arbitral Tribunal has not considered the letter from the Defendant dated August 17, 2006, as it has been received by the Center after the conclusion of the written phase of the Procedure (Article 18.1 of the Regulations).

Substantive Discussion regarding the Dispute

Trademark Law

Reference is made to the facts and allegations summarized in paragraph 4 of this award.

Upon review of the Complaint and its exhibits, the Tribunal finds that the Plaintiff has sufficiently demonstrated its rights in the Trademark, both at EU level and in the Benelux. The Tribunal also finds that the Domain Name is identical or at least highly similar to the Trademark and trade name. The registration and the various forms of use of the Domain Name which have been supported by various exhibits, constitute use of the Trademark within the meaning of article 9 (1) sub a and b CTMR and article 2.20 (1) sub a and b BIPT (formerly article 13A(1) sub a and b BTA). This also applies to the present-day use of the Domain Name, under which the website “www.vw.nl” opens with the text “Welkom bij VoordeelWarenhuis!” 1 , followed by three advertisements for Volkswagen-related products and services, which constitutes use for products and services similar to the products and services for which the Trademark has been registered.

Taking into account the procedural guideline presented by article 9.4 of the Regulation, the Tribunal also accepts the notoriety claim which has been made by the Plaintiff with ample supporting facts and documentary evidence. The use of the Domain Name for dissimilar goods – such as use of the Domain Name as an advertising platform for magazines – also constitutes trademark infringement within the meaning of article 9 (1) sub c CTMR and article 2.20 (1) sub c BIPT (formerly article 13A(1) sub c BTA).

In the opinion of the Tribunal the Complaint cannot be considered baseless with respect to these infringement claims. Accordingly, the Tribunal will grant the remedy requested by the Plaintiff and will order that the Plaintiff shall become the holder of the Domain Name instead of the Defendant.

As regards the remaining remedies requested by the Plaintiff, the Tribunal finds as follows.

As a general remark the Arbitral Tribunal observes that it does not follow from article 9.4 of the Regulations that the Tribunal is under an obligation to grant each and every one of the remedies sought in the same manner as requested by the Plaintiff 2 .

The request to declare that the award shall replace the form required by SIDN for the change of the Domain Name Holder will be granted as it is in accordance with article 3:300 of the Dutch Civil Code and presents an effective means for execution of the judgment and for which the Plaintiff has a reasonable interest given the fact that the Defendant did not submit a Defence.

The Tribunal will not grant an order to prohibit the Defendant from registering domain names similar to the contested domain name. The Plaintiff has no entitlement to protection of the Domain Name as such. The protection should be against the use of domain names or other signs which are infringing one or more trademark(s) or trade name(s) of the Plaintiff. In any event, the Tribunal finds insufficient justification to make such an order in the present circumstances. The Trademark consists of only two letters (V and W). The order sought will no doubt lead to delimitation issues and it would be highly doubtful whether the scope of protection of the Trademark would be such that it also extends to a wide range of variations with three or more letters, such as <vwh.nl> or <pvw.nl>.

Costs

The Plaintiff requested the Tribunal to give a cost award for an amount of € 3.098,00 which amount represents the actual costs incurred for filing the Complaint. The Defendant has not contested that the amount of costs for legal assistance made by the Plaintiff is reasonable. However, it can be seen from the ‘Honorarrechnung’ submitted by the Plaintiff that the fees have been calculated on the basis of a so-called Gegenstandswert in the amount of € 250.000. The question arises what should be the relevance of the German RVG in regard to a dispute which should be decided on the basis of Dutch law. Given the fact that a plaintiff under the Regulation may seek the assistance of any counsel, including non-Dutch counsel anywhere in the world, there is no objection in principle against the application of foreign standards in respect of cost awards, even though Dutch law is applicable. On the other hand, would the Plaintiff have sought the assistance of Dutch counsel the costs of drafting the Complaint might not have been less than the fees charged by the Plaintiff’s representative.

A further aspect which is relevant is the fact that the Plaintiff’s trademark rights have obviously been infringed in bad faith. In view of the Plaintiff’s earlier communications and the trademark’s notoriety, the Defendant ought to have been well aware of the Plaintiff’s trademark rights. By nevertheless accepting transfer of the Domain Name and offering to transfer the Domain Name only for very substantial amounts, the Defendant has deliberately taken the risk that the Plaintiff would initiate these arbitration proceedings.

Considering that the award is rendered in favour of the Plaintiff and taking into account the obvious, if not indeed deliberate, character of the infringement, the Tribunal awards the Plaintiff's claim for payment by the Defendant of the administration costs and of the Tribunal's fee in a total amount of € 2.250,00. On the Plaintiff's claim for payment by the Defendant of the costs of legal representation the Tribunal awards € 2.500.-, which amount the Tribunal considers appropriate in light of the above considerations and aspects and the effort needed to draft a Complaint that covered all the aspects of the infringement at hand.

The Plaintiff has also requested that the Tribunal declare the award enforceable regardless of whether an appeal against the award is lodged. In view of the default nature of this case and taking into account that the Plaintiff did not present specific arguments in support of this request in the Complaint, the Tribunal declines to issue such a declaration.

7. Decision

 

With reference to article 3 Regulations and the facts and findings set out above, the Tribunal decides as follows:

1. The Plaintiff Volkswagen AG shall become the holder of the Domain Name <vw.nl> instead of the Defendant Princa B.V.

2. With respect to the deed required by SIDN for the change of the Domain Name Holder the Tribunal declares that, to the extent necessary, this award shall replace this deed;

3. Princa B.V. shall pay to the Plaintiff a total amount of € 4.750,00 (being the administration costs of these proceedings and the Tribunal’s fees, in a total amount of € 2.250,00 and € 2.500,00 as reasonable costs of Plaintiff’s legal representation);

4. Rejects all other claims.

 

 

Tjeerd F.W. Overdijk
Sole Arbitrator
Amsterdam

 

September 12, 2006

 

 

1Translation in English: ‘welcome at VoordeelWarenhuis’, whereby ‘ VoordeelWarenhuis’ can be translated as ‘discount department store’

2See Consitex S.A. Lanificio Ermenegildo Zegna & Figli S.p.A. Ermenegildo Zegna International N.V. v Mattia Gerolanda, Domain Name Case No. WIPO2003NL1, dated October 17, 2003, (concerning the domain name ). .

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