WIPO Arbitration and Mediation Center
ARBITRATION AWARD
Sanutri AG v. Savcenko
Case No. WIPO2006NL16
in an arbitration under the Regulations on .nl Domain Names between:
Sanutri AG
c/o Engel Copera AG
Waldeggstrasse 37
3097 Bern Liebefeld
Switzerland
(Plaintiff)
and
Savcenko
Schnepfenstrasse 8
91555 Feuchtwangen
Germany
(Defendant)
Arbitrator
Alfred P. Meijboom
This arbitral 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 Sanutri AG (the “Plaintiff”) and Savcenko (the “Defendant”) concerning the domain name <cereal.nl>.
1. The Parties
The Plaintiff in these proceedings is Sanutri AG of Bern Liebefeld, Switzerland, represented by Laurent Hourquet of Sanutri AG, Revel, France.
The Defendant in these proceedings is Savcenko, Feuchtwangen, Germany.
2. The Domain Name and Participant
The dispute concerns the domain name <cereal.nl> (the “Domain Name”). The Participant through which the Domain Name was registered is bNamed.net, Wommelgem, Belgium.
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2006 per email. On December 1, 2006 the Center notified the Plaintiff of deficiencies in the Complaint. An amendment to the Complaint was received by the Center on December 11, 2006, per email and in hardcopy on December 13, 2006. On December 14, 2006, the Center sent a further Notification of Complaint Deficiency to the Plaintiff, and gave the Plaintiff five calendar days to cure the deficiencies. On December 15, 2006, the Complaint submitted further amendments to the Complaint per email.
On December 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. SIDN, on December 14, 2006, transmitted its verification response confirming that the Defendant is listed as the registrant and providing the contact details. On December 21, 2006, the Center notified the Defendant of the Complaint and the Commencement of the Arbitration and set the deadline for submission of the Defense on January 10, 2007. On January 18, 2007, the Center notified the parties that the Defendant had failed to comply with such deadline.
The Center appointed Alfred Meijboom, domiciled in Amsterdam, as sole Arbitrator in these proceedings on January 26, 2007. The Arbitration Tribunal finds that it was properly appointed. The Arbitrator has submitted a Statement of Acceptance and Declaration of Impartiality and Independence pursuant to article 10.9 of the Regulations.
Pursuant to article 17.2 of the Regulations, since the Plaintiff and the Defendant are neither registered nor resident in the Netherlands and presumably lack knowledge of the Dutch language, the language of the proceedings is English.
4. Factual Background
Since July 28, 2003, Plaintiff is holder of International device mark No. 687 605, (registered January 27, 1998), which exists of a circle with the word CÉRÉAL and an ear of cereal, and which was also filed for the Benelux (hereinafter “The Trademark”). The Trademark was registered in classes 5 (drugs, pharmaceutical preparations, dietetic substances of medical use, dietetic products of medical use and for clinical food, dietetic supplements of medical use, nutritive dietetic substances for children and food for babies; all above mentioned products at base or container of the cereals) and 30 (flours and ridges preparations of cereals, bread, pastry making and confectionery containing or containing cereals).
Plaintiff’s subsidiary ‘Nutrition et Santé Benelux’ of Brussels, Belgium, distributes Plaintiff’s products, such as energy bars, biscuits and candy, under the Trademark 1 in the Benelux.
Plaintiff is holder of the domain names <cereal.be>, <cereal.info> and <cereal.lu> since December 2000, July 2001 and July 2006 respectively.
The Domain Name was registered on February 2, 2006.
5. Parties’ Contentions
A. Plaintiff
Plaintiff states that it is holder of the Trademark and that the Defendant could not be unaware of the existence thereof. The Domain Name is identical to the Trademark, and Plaintiff has prior rights over Defendant. The similarity between the Trademark and the Domain Name incontestably creates confusion amongst the public.
The Plaintiff argues that the Defendant does not have any right in the Domain Name, as it does not hold title to the Domain Name under any national, Community or international trademark, company name, or sign. The Defendant is further not referred to or known under the Domain Name.
According to the Plaintiff the Domain Name was acquired with the sole objective of resale on an auction site. When the Defendant received a notification of infringement from the Plaintiff on July 31, 2006, the Defendant did not transfer the Domain Name to the Plaintiff, nor indicate any prior rights, or submit reasons which could justify the registration and use by the Defendant of the Domain Name.
In accordance with articles 3 and 6.3 sub (9) of the Regulations, the Plaintiff requests the Arbitration Tribunal to order that:
1. the Plaintiff shall become the holder of the Domain Name instead of the Defendant and that 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 EUR 5,000;
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 EUR 7,000; and
4. in accordance with article 23.5 of the Regulations, the award be declared enforceable regardless of whether an appeal against the award is lodged.
B. Defendant
The Defendant did not submit a Defense.
6. Discussion and Findings
Jurisdiction, Applicable Law and Place of Arbitration
The Defendant has registered the Domain Name on February 2, 2006. Pursuant to article 21.2 of the Regulations for registration of .nl domain names, the Defendant submitted himself to arbitration in relation to claims by third parties that, by registering and/or using the Domain Name, the Defendant is infringing a Benelux trademark right (including rights to Community trademarks) or Dutch trade name right. SIDN has submitted records confirming the applicability of the Regulations 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.
In accordance with article 17.4 of the Regulations the place of arbitration is Amsterdam.
Procedural Considerations
The Defendant has failed to submit a Defense. Pursuant to article 9.4 of the Regulations the proceedings shall proceed and the claim shall be granted unless the Arbitration Tribunal considers the Complaint to be baseless, i.e. in case the Complaint is apparently ill-founded or plainly inadmissible (see Volkswagen AG v. Princa B.V., Case No. WIPO2006NL10 and Sublimsport Limited v. Henrik Olsen, Case No. WIPO2006NL14).
Substantive Discussion regarding the Dispute
Reference is made to the facts and contentions summarized in paragraphs 4 and 5 of this award.
The word CÉRÉAL is a characteristic element of the Trademark, and it is undisputed that this distinctive element of the Trademark is identical to the Domain Name. In this respect, the Arbitration Tribunal considers that the top level domain ‘.nl’ is irrelevant for the assessment of similarity between the Trademark and the Domain Name, just like the use of the accent on the “e”, as the .nl zone file does not accept domain names with special characters. Therefore the Domain Name is similar to the Trademark.
The website under the Domain Name offers the possibility to make a bid to obtain the Domain Name.
Under the header “Plaintiff has trademark and/or trade name rights”, the Complaint asserted that the Domain Name and Trademark are identical, that the Domain Name is confusingly similar to the Trademark, and that the Defendant does not have a right in the Domain Name. The Arbitration Tribunal understands these contentions as the Plaintiff claiming that the Domain Name infringes article 2.20.1 sub (a) or (b) of the Benelux Intellectual Property Treaty (the “BIPT”) , or – in connection with Plaintiff’s assertion that the Defendant lacks a valid right to the Domain Name, which should be understood as the Defendant lacking a valid reason for use of the Domain Name – article 2.20.1 sub (d) BIPT.
In absence of a Defense and considering article 9.4 of the Regulations, the Arbitration Tribunal is only required to establish if the Plaintiff’s claims are not baseless or unlawful. Due to its descriptive character the trademark appears to be relatively generic; however the trademark registration is legally relevant and the Defendant has not argued any basis for lawful use of the Domain Name. Therefore the claim is admissible and not a priori baseless or unlawful as the Plaintiff is holder of the Trademark which is valid in the Benelux and the Defendant registered and used the Domain Name, which is similar to the Trademark as meant in article 2.20.1 sub (b) BIPT, which use may create confusion amongst internet users.
According to article 3 of the Regulations, the Plaintiff may seek “a prohibition for the Domain Name Holder to register similar domain names in the future”. The Plaintiff requested that the Defendant be prohibited from registering domain names similar to the Domain Name in the future. Unlike a trademark, a domain name as such is not a personal right which can be infringed, so that the claim is insufficiently precise. It has been well established in previous .nl awards that an order to prohibit a defendant from registering domain names similar to the contested domain name is not admissible. See Bayerische Motorwerke Aktiengesellschaft v. Autobedrijf Brusselers, Case No. WIPO2006NL2 ; Loadit B.V. v. Xiro Unlimited Entertainment B.V., Case No. WIPO2006NL3 ; Funda N.V. v. RE/MAX Hofstad Makelaars, Case No. WIPO2006NL6, Ceramicas Casao S.A. en Proarq B.V. v. Lander Bouw Keramiek B.V., Case No. WIPO2006NL8 and Volkswagen AG v. Princa B.V., Case No. WIPO2006NL10. The Arbitration Tribunal understands however that the Plaintiff seeks a remedy that such future domain names shall not infringe the Trademark, which claim will be granted.
The Plaintiff did not submit any evidence of the costs of legal assistance which it claimed in amount of approximately EUR 7,000. It does not follow from the Complaint that the Plaintiff used outside counsel to draft, discuss or submit the Claim. For these reasons the Arbitration Tribunal is of the opinion that the claim for the costs of legal assistance is without cause, and it is thus rejected. As the principal claim of the Plaintiff is awarded, the claimed costs of the arbitration proceedings shall be awarded.
The Plaintiff has further requested that the Arbitration Tribunal declare the award enforceable regardless of whether an appeal against the award is lodged. In line with other default decisions under the Regulations (see Consitex S.A. v. Lanificio Ermenegildo Zegna & Figli S.p.A. an d Ermenegildo Zegna International N.V. v. Tatiana Gerolanda, Case No. WIPO2003NL2; Volkswagen AG v. Princa B.V., Case No. WIPO2006NL10; and Sublimsport Limited v. Henrik Olsen, Case No. WIPO2006NL14), taking into account that the Plaintiff did not present specific arguments in support of this request in the Complaint, the Arbitration Tribunal shall not issue such 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. Sanutri AG shall become the holder of the Domain Name <cereal.nl> instead of Savcenko;
2. this award shall replace the deed required by SIDN for the change of the domain name holder;
3. Savenko shall not register domain names which infringe International Trademark No. 687 605 CÉRÉAL of Sanutri AG in the future, subject to a penalty of EUR 5,000 for each domain name registered in violation of this prohibition;
4. Savcenko is ordered to pay Sanutri AG an amount of EUR 2,250 for the administration costs of these proceedings and the Arbitration Tribunal’s fees;
5. all other claims are rejected.
Alfred P. Meijboom
Sole Arbitrator
Amsterdam
Dated: February 6, 2007
1 The Arbitration Tribunal notes that some of the examples of packaging which were submitted by the Plaintiff do not picture the Trademark, but rather a Community device mark No. 4275764 of February 2, 2005, (registered October 18, 2006), which consists in the word CÉRÉAL under a yellow-orange sun-like object. As Plaintiff did not mention this Community trademark in the Complaint, the Arbitration Tribunal shall not consider it in this decision.