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WIPO Arbitration and Mediation Center

ARBITRATION AWARD

Sublimsport Limited v. Henrik Olsen

Case No. WIPO2006NL14

In an arbitration proceeding in accordance with the Regulations for Arbitration on .nl
Domain Names (the “Regulations”)
between:

Sublimsport Limited
107-111 Fleet Street, Suite 503
London EC4A 2AB
Great Britain

(Plaintiff)

and

Henrik Olsen
Kajgaardsvej 6
9970 Strandby
Denmark

(Defendant)

Arbitration Tribunal
Prof. M. de Cock Buning

This arbitration award is rendered by me as arbitrator under the Regulations for Arbitration on .nl Domain Names (“the Regulations”) of the Stichting Internet Domeinnaamregistratie Nederland (“ SIDN”), in a dispute between Sublimsport Limited (the “Plaintiff”) and Henrik Olsen (the "Defendant") concerning the Domain Name <sublimsport.nl>.

 

1. The Parties

The Plaintiff in this proceeding is Sublimsport Limited, London, United Kingdom and with principal place of business in Hamburg, Germany, represented by Ms. L.G. de Gier in Utrecht, the Netherlands.

The Defendant in this proceeding is Henrik Olsen, Strandby, Denmark.

 

2. The Domain Name and Participant

The dispute concerns the Domain Name <sublimsport.nl>. The Participant through which the Domain Name is registered is Talk Active I/S, Nakskov, Denmark.

 

3. Procedural History

The Complaint was received by the WIPO Arbitration and Mediation Center on September 11, 2006 per e-mail and received in hardcopy on September 11, 2006, by the Center.

On September 11, 2006, the Center sent an acknowledgement of receipt to the Plaintiff. On September 11, 2006, the Center sent a registry verification request to SIDN to verify the information submitted by the Plaintiff with regard to the Domain Name. On September 13, 2006, SIDN transmitted its verification response confirming that the Defendant is listed as the registrant and providing the contact details. On September 15, 2006, the Center sent a Complaint Deficiency Notification to the Plaintiff for non-compliance with articles 6.3, 17.2 and 14 of the Regulations, and gave the Plaintiff a term of five calendar days from the date of the aforementioned Complaint Deficiency Notification to cure the above deficiencies in accordance with article 7.2 of the Regulations. The amended Complaint submitted by the Plaintiff was received per email on September 21, 2006, by the Center. On September 27, 2006, the Center notified the Defendant of the Complaint and the Commencement of the Arbitration in accordance with articles 5.5 and 7 of the Regulations.

On October 23, 2006, the Center notified the parties that the Defendant had failed to comply with the deadline indicated in the Notification of Complaint and Commencement of Arbitration Proceeding for the submission of the Statement of Defence.

The Arbitration Tribunal agrees with the Center’s assessment concerning the Complaint’s compliance with the formal requirements in accordance with the requirements of the Regulations and that payment has been properly made.

The Arbitration Tribunal was properly constituted. The arbitrator has submitted a Statement of Acceptance and Declaration of Impartiality and Independence. The appointment of the Arbitration Tribunal was notified on November 2, 2006. Due to unforeseen circumstances the decision due date was extended until December 4, 2006.

 

4. Factual Background

Trademark Rights

The Plaintiff is owner of a Danish trademark Sublimsport, registered and published on August 25, 2005.

The Plaintiff is also owner of a Community trademark Sublimsport, number 004605201, registered and published on November 8, 2006, for the classes 5 (i.a. pharmaceutical and veterinary preparations), 28 (i.a. games and playthings), 41 (i.a. educational services) and 42 (i.a. scientific and technological services and research and design relating thereto), hereinafter referred to as the “Mark”.

Domain Name

The Defendant has registered the Domain Name on September 14, 2005.

 

5. Parties’ Contentions

A. Plaintiff

The Plaintiff has registered the domain name <sublimsport.dk> on May 17, 2001, the domain name <sublimsport.com> on June 21, 2002, and recently the domain name <sublimsport.de>. The Plaintiff uses the websites associated with these domain names for the sale of nutritional supplements on the Internet. The Plaintiff owns the Mark.

The Plaintiff claims that the Defendant acted in bad faith when he registered the Domain Name <sublimsport.nl> (and domain names <sublimsport.co.uk> and <sublimsport.be>), allegedly to obtain financial gain at the expense of the Plaintiff. According to the Plaintiff, the Defendant infringes the Plaintiff’s Community trademark rights pursuant to article 9(1)(a) or at any rate 9(1)(b) of the Community Trademark Regulation (“CTR”) by deliberately linking the above domain names without the Plaintiff’s consent to the website of a Danish competitor of the Plaintiff“ www.bodyman.com”, which offers the same goods and services as the Plaintiff. According to the Plaintiff, such actions cause (a danger of) confusion amongst the public. In addition, the Plaintiff is denied an important means of communication in the Netherlands (and in Belgium and the United Kingdom), because the Defendant has prevented the Plaintiff from having a “.nl” domain name in its own name.

Therefore, the Plaintiff requests that:

1. the Plaintiff shall become holder of the Domain Name instead of the Defendant and the award shall replace the form required by SIDN for the Change of Domain Name Holder;

2. the Defendant be prohibited from registering domain names similar to the Domain Name in the future, liable to a penalty of € 2.500;

3. the Defendant shall pay the costs of the procedure, including the Plaintiff’s costs of legal assistance which at the time of filing of this Complaint amount to approximately € 5.575,42;

4. the award, in accordance with Regulations Article 23.5, be declared enforceable regardless of whether an appeal against the award is lodged.

B. Defendant

The Defendant did not submit a Statement of Defence pursuant to article 9.1 of the Regulations.

6. Discussion and Findings

Jurisdiction and Applicable Law

The Defendant has registered the Domain Name on September 14, 2005. Pursuant to article 21 of the Registration Regulations of SIDN, the Defendant thereby submitted himself 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 (including rights to Community trademarks) or Dutch trade name right. SIDN has submitted records confirming the applicability of thesRegulations to the Domain Name. The Plaintiff’s submission of the Complaint thus constitutes a valid arbitration agreement between the parties.

Considering this, the Arbitration Tribunal holds that it has jurisdiction to render an arbitration award under article 11.2 of the 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

As the Parties are not registered or resident in the Netherlands and the Defendant has no knowledge of the Dutch language, the language of the proceedings is English pursuant to article 17.2 of the Regulations.

Pursuant to article 17.4 of the Regulations the place of arbitration is Amsterdam the Netherlands. The Arbitration Tribunal is domiciled in Amsterdam, the Netherlands.

Procedural Considerations

As stated in paragraph 3 above, which summarizes the procedural history, the Defendant has failed to submit a Defence. Pursuant to article 9.4 of the Regulations the procedure shall nevertheless proceed. It also follows from article 9.4 of the Regulations 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.

Substantive Discussion regarding the Dispute

Reference is made to the facts and contentions summarized in paragraphs 4 and 5 of this award.

According to the registration certificate for the Mark, submitted by the Plaintiff, the status of the Mark is “Registration pending” and not “ Registration published” (see Annex 3 of the Complaint). This means that when the Complaint was submitted, the Mark was not registered. Pursuant to article 6 of the Community Trademark Regulation (“CTR”), the Community trademark is obtained by registration. Therefore Plaintiff was not entitled to a valid Community trademark when Plaintiff submitted its Complaint. However, after having conducted its own investigation 1 in the public register of the Office of Harmonization for the Internal Market (CTM-online), the Arbitration Tribunal has established that in the meantime the Mark has been registered on November 8, 2006, in aforementioned register. Plaintiff is thus entitled to invoke its rights in the Mark.

Taking into account Plaintiff’s assertions and evidence, Defendant’s registration of the Domain Name, which Domain Name is identical or at least highly, and probably confusingly, similar to the Mark, and taking note of article 9 CTR, the Arbitration Tribunal does not consider the Complaint to be baseless. Accordingly, the Arbitration Tribunal will grant the remedy requested by the Plaintiff and will order that the Plaintiff shall become holder of the Domain Name instead of the Defendant. This award shall replace the form required by SIDN for the Change of the Domain Name Holder.

With regard to the remaining remedies requested by Plaintiff, the Arbitration Tribunal finds as follows.

As a general remark the Arbitration Tribunal observes that it does not follow from article 9.4 of the Regulations that the Arbitration 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

In view of the undisputed facts concerning the Defendant’s conduct, both with regard to the Domain Name and with regard to several other domain names, the Arbitration Tribunal issues a prohibition for the Defendant to register, as of the date of the notification of this award, “.nl” domain names similar to the Domain Name. This prohibition shall be liable to a penalty of € 2.500 for each domain name registered in defiance of this prohibition.

Considering that the award is rendered in favour of the Plaintiff and taking into account the undisputed facts concerning the Defendant’s conduct as described in the Complaint, the Arbitration Tribunal awards the Plaintiff’s claim for payment by the Defendant of the administration costs and of the Arbitration Tribunal fee in a total amount of € 2.250. On the Plaintiff’s claim for payment by the Defendant of the costs of the Plaintiff the Arbitration Tribunal awards an amount of € 1.500, which the Arbitration Tribunal considers appropriate in view of the limited complexity of the case and the contents of the Complaint.

The plaintiff has also requested that the Arbitration Tribunal declares 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 Arbitration Tribunal declines to issue such a declaration.

7. Decision

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

1. the Plaintiff Sublimsport Limited shall become the holder of the Domain Name <sublimsport.nl> instead of the Defendant Henrik Olsen;

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

3. the Defendant is prohibited from registering “.nl” domain names similar to the Domain Name <sublimsport.nl> as of the date of the notification of this award, subject to a penalty of €2.500 for each domain name registered in defiance of this prohibition;

4. the Defendant shall pay to the Plaintiff a total amount of € 3.750 (being the administration costs of these proceedings and the Arbitration Tribunal’s fees in the total amount of € 2.250 and € 1.500 as reasonable costs of the Plaintiff’s legal representation);

5. all other and further claims made by the Plaintiff in this procedure are denied.

 

Madeleine de Cock Buning
Sole Arbitrator
Amsterdam

Dated: December 1, 2006

1 Domain Name Case No. WIPO2006NL8 and De Energiebron B.V. v. Econcern B.V., Domain Name Case No. WIPO2006NL7 concerning Arbitration Tribunals who also conducted limited investigation with regard to the status of litigious (Community) trademarks.

2 See Volkswagen A.G. v Prica B.V., Domain Name Case No. WIPO2006NL10, dated September 12, 2006, and 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.

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