WIPO Arbitration and Mediation Center

ARBITRATION AWARD

Just Eat A/S v. Roberto da Silva

Case No. WIPO2007NL1

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

Just Eat A/S
Gl Kolding Landevej 61
7100 Vejle
Denmark

(Plaintiff)

and

Roberto da Silva
Via Triboniano
20090 Milan
Italy

(Defendant)

Arbitration Tribunal:

Mr H.W. Wefers Bettink
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 Just Eat A/S (the Plaintiff) and Roberto da Silva (the Defendant) concerning the domain name <just-eat.nl>.

1. The Parties

The Plaintiff, Just Eat A/S, is a company incorporated under the laws of Denmark, with its registered office in Vejle, Denmark, represented by Ms. M.H. Kamp from VEREENIGDE in The Hague, The Netherlands.

The Defendant, Roberto da Silva, is a natural person residing in Milan, Italy. The Defendant did not appoint a representative.

2. The Domain Name and Participant

The domain name in dispute is <just-eat.nl> (the ”Domain Name”). The participant is EuroDNS SA with its registered office in Leudelange, Luxembourg.

3. Procedural History

The Complaint was received by the WIPO Arbitration and Mediation Center (the ”Center”) by e-mail on February 16, 2007, and in hardcopy on February 28, 2007. On February 22, 2007, the Center informed the Plaintiff that the Complaint did not satisfy the formal requirements of the Regulations since the Complaint was not submitted in the English language as required by Article 17.2 of the Regulations. On February 27, 2007, the Center received the Complaint by e-mail in the English language.

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 March 2, 2007 in accordance with the 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 communicated to Parties on March 26, 2007.

In accordance with article 10.11 of the Regulations, the Center appointed Wolter Wefers Bettink as sole arbitrator on April 5, 2007. 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.

4. Factual Background

Plaintiff is owner of the community trademark (device) JUST-EAT which was filed on August 22, 2003, for goods in classes 29 (meat, fish, vegetables, ready made dishes, etc.) and 30 (coffee, tea, bread, cereal, etc.) and for services in class 43 (providing food and drink, catering etc.).

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

According to the verification provided by and the whois of SIDN, the Domain Name was registered on November 15, 2004.

5. The contentions of the Parties

A. The Plaintiff

The Plaintiff was established in Denmark in 2001. Among other, it supplies meals which can be ordered online. For this purpose it operates several websites such as “www.just-eat.co.uk”, “ www.just-eat.com” and “www.just-eat.uk”. The Plaintiff has its head office in Denmark and establishments in the United Kingdom, Iceland and Greenland and has plans to establish itself in the Netherlands.

The Plaintiff relies on its rights in the Trademark and its trade name Just-Eat.

The Plaintiff has submitted an exhibit which substantiates that on March 2, 2007 the website “www.just-eat.nl” was used as a parking page for the advertisement of German, Swiss and Denmark food-related websites.

The Plaintiff contends that the registration and use of the Domain Name by the Defendant constitutes a trademark infringement under the Community Trademark Regulation (“CTMR”) since the Defendant had no valid reason to register the Domain Name and by using the Domain Name causes damage to the Plaintiff, while such use takes unfair advantage of and is detrimental to the distinctive character and/or the reputation of the trademark of the Plaintiff. The Plaintiff furthermore contends that the registration of the Domain Name can be deemed a registration in bad faith, due to the multinational character of the Plaintiff and its well-advanced plans to establish itself in the Netherlands.

The Plaintiff therefore requests the Tribunal to find that the Plaintiff shall become the holder of the domain name <just-eat.nl> instead of the Defendant and that the award shall replace the form required by SIDN for the Change of Domain Name Holder, that the Defendant shall be prohibited from registering domain names similar to the contested domain name <just-eat.nl> in the future, increased with a penalty payment of € 5,000 per domain name that is registered being in conflict with this provision and that the Defendant shall pay the costs of the arbitration procedure, including the Plaintiff’s cost of legal assistance which at the time of filing the Complaint amount approximately € 1,800;

The Plaintiff requests that the award, in accordance with Article 23.5 of the Regulations, 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 registered the Domain Name on November 15, 2004. Pursuant to article 21.2 of the Regulations for registration of .nl domain names of SIDN, the Defendant thereby submitted itself to these arbitration proceedings. 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

In accordance with article 17.2 of the Regulations the language of the proceedings is English. In accordance with article 17.4 of the Regulations the place of arbitration is Amsterdam, the Netherlands. The domicile of the Tribunal is Amsterdam, the Netherlands.

Substantive Discussion regarding the Dispute

Trademark Law

According to article 2 of the Regulations, the Tribunal shall decide whether the Domain Name, by registration and/or use, infringes Plaintiff’s Benelux trademark rights (including CTM trademarks) and/or Dutch trade name rights.

Plaintiff has shown that it has rights in the Trademark, i.e. the Community Trademark (device) JUST-EAT.

This CTM is similar to the sign <just-eat.nl> used by Defendant, since (i) the words Just Eat are the most prominent part of the Trademark and (ii) the top level domain ‘nl’ is irrelevant for the assessment of the similarity between the Trademark and the Domain Name.

On the basis of article 9 limb 1 sub b CTMR, a proprietor of a Community Trademark can prevent a third party from using a sign which is identical or similar to its trademark and is used for identical or similar goods or services, if there exist a likelihood of confusion on the part of the public.

The Tribunal is satisfied that Defendant’s use of the Trademark meets the requirements of this provision and thereby infringes upon the Plaintiff’s trademark rights.

The Domain Name is – or was for some time - used for a landing page on which the Defendant had placed content and links to food-related websites, including a website offering online food order services. In this case, the landing page can be described as a -web site that links through to products and services that are related to or compete with the Plaintiff’s products and services and that Complainant neither endorses nor recommends to its customers.

In the view of the Tribunal, such use of the Domain Name may be considered use to distinguish the goods or services offered on the landing page or the websites to which it offers a link. After all, the purpose of a landing page is to lead consumers to websites that offer goods or services that are relevant to what the Defendant thinks visitors to the website under the Domain Name are looking for.

In Ceramicas Casao S.A. en Proarq B.V. v. Lander Bouw Keramiek B.V., WIPO2006NL8, the Tribunal has held that use of a domain name that links through to the Defendant’s own website, where its goods or services are offered, should be considered use to distinguish those goods or services. Likewise, the Tribunal in the present case holds that the use of a domain name to link through to third party websites, whether directly or through a landing page, should be considered as use by the holder of the domain name to distinguish the goods and services offered on those websites.

As the Defendant uses the Domain Name as a landing page for (inter alia) websites providing food ordering services, it uses the Domain Name to distinguish services which are identical to those for which the Trademark has been registered.

In doing so, the Defendant creates a likelihood of confusion among the relevant public. In view of the considerable similarity between the Domain Name and the Trademark and the fact that the Domain Name is used for identical goods and services, consumers using the internet to find food-related services might think that the Domain Name and/or the Defendant’s website under the Domain Name is created or maintained by or in any other way linked to the Plaintiff. It is therefore likely that these consumers are confused when confronted with the Domain Name and, possibly, the website linked to it.

The Tribunal therefore finds that the registration and use of the Domain Name by Defendant is an infringement of Plaintiff’s trademark rights. On the basis of article 9 limb 1 sub b CTMR, Plaintiff can prevent the Defendant to use its Trademark. The criteria of article 2.3 of the Regulations are fulfilled.

The Tribunal shall therefore award the requested remedy that Plaintiff shall become holder of the domain name <just-eat.nl> instead of the Defendant and that this award shall replace the form required by SIDN on the basis of article 24.3 of the Regulations for the change of domain name holder.

In accordance with article 3 of the Regulations, the Plaintiff has requested “a prohibition for the Domain Name Holder to register similar domain names in the future”. It has been well established in previous .nl awards that a general order to prohibit a defendant from registering domain names similar to the contested domain name is not admissible. See for instance Loadit B.V. v. Xiro Unlimited Entertainment B.V., WIPO2006NL3 and Volkswagen AG v. Princa B.V., WIPO2006NL10. The Tribunal understands however that the Plaintiff seeks a remedy that such future domain names shall not infringe the Trademark, which claim will be granted.

Since the claim of Plaintiff is awarded, the Tribunal will award the claimed costs of legal assistance in the amount of € 1,800 on the basis of article 28.8 of the Regulations.

In accordance with article 23.5 of the Regulations, the Tribunal declares this award enforceable regardless of whether an appeal against the award is lodged.

7. Decision

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

1. The Plaintiff shall become the holder of the Domain Name <just-eat.nl> instead of the Defendant;

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. Defendant shall be prohibited from registering domain names similar to Plaintiff’s trademark JUST-EAT, and shall be liable to a penalty of € 5,000 for each violation thereof;

4. Since the claim of the Plaintiff is awarded, the Tribunal will award, on the basis of article 28.8 of the Regulations, the costs of the arbitration procedure in the amount of € 2,250 and the Plaintiff’s claimed costs of legal assistance in the amount of € 1,800, therefore a total of € 4,050;

5. The Tribunal declares this award enforceable regardless of whether an appeal against the award is lodged.

Wolter Wefers Bettink
Sole Arbitrator
Amsterdam

April 24, 2007