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WIPO

WIPO Arbitration and Mediation Center

ARBITRATION AWARD

Aereco SA v. Koston Gelderland BV

Case No. WIPO2007NL14

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

Aereco SA
9 allée clos des charmes - Collégien
FR-77615
Marne-La-Vallée
France

(Plaintiff)

and

Koston Gelderland BV
Flevolaan 66
1382 JZ
Weesp
Nederland

(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 AERECO SA (the Plaintiff) and KOSTON GELDERLAND BV (the Defendant) concerning the domain name <aereco.nl>.

 

1. The Parties

The Plaintiff, Aereco SA, is a company incorporated under the laws of France, with registered office in Marne-La-Vallée Cedex 3, France, represented by Mr. William Lobelson of Germain & Maureau, Lyon.

The Defendant, Koston Gelderland BV, is a company incorporated under the laws of the Netherlands, with registered office in Weesp, The Netherlands. The Defendant did not appoint a representative.

 

2. The Domain Name(s) and Participant(s)

The disputed domain name is <aereco.nl> (the “Domain Name”). The participant is 12Register.com - domeinnamen voor providers, with registered office in Zwolle, The Netherlands.

 

3. Procedural History

The Complaint was received by the WIPO Arbitration and Mediation Center (the “Center”) by e-mail on July 30, 2007, and in hardcopy on July 31, 2007.

On August 1, 2007, the Center acknowledged receipt of the Complaint and requested Registry Verification. On August 6, 2007, the Registry (SIDN) confirmed that the Defendant is the current registrant of the Domain Name.

On August 10, 2007, the Center notified the Plaintiff of a deficiency in the Complaint. On August 16, 2007, the Amended Complaint was received by the Center by e-mail, and in hardcopy on August 17, 2007.

On August 21, 2007, the Defendant was notified of the Complaint and the arbitration proceeding that had commenced against him, by means of post/courier, facsimile and e-mail.

The Center did not receive a Statement of Defence from the Defendant. Accordingly, the Center notified the Defendant of its default on September 12, 2007.

On September 19, the Center appointed Wolter Wefers Bettink as sole arbitrator, in accordance with article 10.11 of the Regulations. 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.

The Tribunal is satisfied that payment, according to article 28.1 of the Regulations, was properly made.

The Tribunal notes that the Plaintiff was notified of a deficiency of its Complaint on August 10, 2007. Pursuant to article 7.2 of the Regulations, a Plaintiff has five days for amending any deficiency of a Complaint. The Tribunal notes that the Plaintiff submitted its amended Complaint to the Center on August 16, 2007, thereby exceeding the term. Article 31.1 of the Regulations provides that the Tribunal may, in cases of breach of the Regulation, draw the conclusions it deems fit. In view of the fact that Plaintiff was but one day late, while no Statement of Defence was submitted, the Tribunal will proceed with judging the merits of the case; as no prejudice was caused, further costs appear unnecessary.

 

4. Factual Background

The Plaintiff has registered the international trademark AERECO, designated for, amongst others, the Benelux, on September 30, 1999, under registration number 72178, for goods and services in class 11 (ventilation installations and apparatus for buildings; air filtering and conditioning installations; exhaust fans; air volume controllers).

The Defendant has registered the Domain Name on November 10, 2004.

 

5. Parties’ Contentions

A. Plaintiff

The Plaintiff contends that it is a manufacturer of ventilation equipment for the renovation market on the one hand and the building construction market on the other hand.

According to the Plaintiff, the Plaintiff and the Defendant have had a business relationship for many years. The Defendant has been the sole distributor of AERECO products in The Netherlands on the renovation market.

On August 4, 1989, the Defendant registered the figurative mark AERECO in the name of the Plaintiff. According to the Plaintiff, this demonstrates that the Defendant acknowledged that the AERECO trademark was the property of the Plaintiff.

The Plaintiff contends that it has set very stringent rules concerning the use of its house mark AERECO addressed to its distributors. According to the Plaintiff, those rules provide that the Plaintiff shall be the owner of any domain name comprising the trademark AERECO.

The Plaintiff contends that the Defendant registered the Domain Name without seeking the consent of the Plaintiff. According to the Plaintiff, the Domain Name resolves to the Defendant’s own website where AERECO products are sold. This website also features a link to the website “ www.slimventileren.nl”, where competing products are sold.

The Plaintiff has submitted to the Tribunal correspondence between the Plaintiff and the Defendant consisting of letters dated February 18, 2005, October 10, 2006, December 13, 2006, January 15, 2007 and March 20, 2007.

According to the Plaintiff, these letters provide that the Defendant makes transfer of the Domain Name to the Plaintiff conditional upon the Defendant obtaining exclusivity for the distribution of all AERECO products in the Netherlands.

The Plaintiff contends that the Defendant infringes the Plantiff’s trademark rights, in the sense of article 2:20 paragraph 1 sub (a), sub (b) Benelux Convention on Intellectual Property, since:

1. the Domain Name is identical, or at least confusingly similar to the AERECO trademark, as the extension “.nl” is deemed irrelevant;

2. the Defendant registered the Domain Name in its own name without the Plaintiff’s consent;

3. the Defendant uses the website under the Domain Name not only to promote the Plaintiff’s goods, but also to link to another website (“www.slimventileren.nl”), where products identical to those of the Plaintiff but not originating from the Plaintiff are being offered for sale.

The Plaintiff has requested that the Arbitration Tribunal appointed in this proceedings issue a decision that:

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

2. The Defendant be prohibited from registering domain names similar to the contested domain name <aereco.nl> in the future;

3. The Defendant shall pay the costs of the procedure, including the Plaintiff’s cost of legal assistance which at the time of filing of this Complaint amount to approximately € 6.000,=;

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

B. Defendant

The Defendant has not submitted a Statement of Defence to the Center.

 

6. Discussion and Findings

Jurisdiction and Applicable Law

The Defendant registered the Domain Name on November 10, 2004. Pursuant to article 21.2 of the Regulations for registration of .nl domain names of SIDN, the Defendant thereby submitted to these arbitration proceedings. SIDN has submitted records confirming acceptance by Defendant of 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 of the 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

Since the Defendant has not submitted a Statement of Defence, The Tribunal will, pursuant to article 9.4 of the Regulations, assess the case on the basis of the Complaint. The Tribunal shall allow the claims of the Plaintiff, unless the Plaintiff’s claims appear ungrounded or unlawful to the Tribunal.

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

The Tribunal is satisfied that the Defendant’s use of the trademark meets the requirements of this provision and thereby infringes upon the Plaintiff’s trademark rights, for the reasons set out below.

The Plaintiff has shown that it has rights in the international trademark AERECO, designated for the Benelux.

On the basis of article 2:20 paragraph 1 and sub a Benelux Convention on Intellectual Property (BCIP), the proprietor of a trademark shall be entitled to prevent all third parties not having its consent from using in the course of trade any sign which is identical with the trademark in relation to goods or services which are identical with those for which the trademark is registered.

The Tribunal finds that the use of the sign <aereco.nl> can be considered ‘use for the purposes of distinguishing goods or services’, as the Domain Name is used for a website on which ventilators are advertised. As was held in Just Eat A/S v. Roberto da Silva, WIPO2007NL1 and Ceramicas Casao S.A. en Proarq B.V. v. Lander Bouw Keramiek B.V., WIPO2006NL8, use of a domain name for a website on which goods or services are advertised or offered for sale can be considered as use to distinguish the goods or services offered on the website under that domain name.

The Domain Name <aereco.nl> is identical with the Plaintiff’s trademark AERECO. It is well established that the top level domain ‘.nl’ is irrelevant for the assessment of similarity or identity between the trademark and the Domain Name (see Ouders Online, District Court of Amsterdam, September 20, 1996, IER 1996, p. 44; Cisco-Linksys LLC v. Paintlife B.V., WIPO2004NL3 (<linksys.nl>), Just Eat A/S v. Roberto da Silva, WIPO2007NL1 (<just-eat.nl>); Betafence Holding N.V. en Betafence N.V. v. S. Wichers, WIPO2007NL4 (<betafence.nl> and <bekafor.nl>)).

The sign <aereco.nl> has been used in relation to goods or services which are identical with those for which the trademark has been registered. The Domain Name has been used by the Defendant in relation to ventilation equipment, while the trademark has been registered for, inter alia, ventilation equipment.

As there is no evidence that the Plaintiff has consented to use by the Defendant of its trademark as part of the Domain Name, the Defendant, by using the Domain Name, infringes upon the trademark rights of the Plaintiff, as set out in article 2:20 paragraph 1 and sub (a) BCIP. Therefore, the Tribunal shall award the requested remedy that the Plaintiff shall become the holder of the Domain Name 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.

The Plaintiff has also requested that the Defendant be prohibited from registering domain names similar to the contested domain name <aereco.nl>.

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; Volkswagen AG v. Princa B.V., WIPO2006NL10; and Just Eat A/S v. Roberto da Silva, WIPO2007NL1. 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 € 6.000,=, including € 2.250,= for the costs of the arbitration proceedings, on the basis of article 28.8 of the Regulations.

In accordance with article 23.5 of the Regulations, the Tribunal declares this award enforcable 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 <aereco.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 the Plaintiff’s trademark AERECO;

4. Since the claim of the Plaintiff is granted, the Tribunal awards, 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 € 3.750,=, therefore a total of € 6.000,=;

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

 

Wolter Wefers Bettink
Sole Arbitrator
Amsterdam

Dated: October 3, 2007

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