WIPO Arbitration and Mediation Center

ARBITRATION AWARD

AGFEO GmbH & Co. KG v. ISDN Benelux BV

Case No. WIPO2007NL23

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

AGFEO GmbH & Co. KG
Bielefeld
Germany

(Plaintiff)

and

ISDN Benelux BV
Aalsmeer
The Netherlands

(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 AGFEO GmbH (the “Plaintiff”) and ISDN Benelux (the “Defendant”) concerning the domain name <agfeo.nl>.

1. The Parties

Plaintiff in these proceedings is AGFEO GmbH & Co. KG of Bielefeld, Germany, represented by Dr. Lambert Grosskopf, Bremen, Germany.

Defendant in these proceedings is ISDN Benelux B.V., Aalsmeer, Netherlands.

2. The Domain Name and Participant

The dispute concerns the domain name <agfeo.nl> (the “Domain Name”). The Participant through which the Domain Name was registered is SpeedXS B.V., Aalsmeer, Netherlands.

3. Procedural History

The Complaint was received by the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2007 per email. On December 6, 2007 the Center notified Plaintiff of deficiencies in the Complaint. An amendment to the Complaint was received by the Center on December 7, 2007 per email and in hardcopy on December 11, 2007.

On December 3, 2007, the Center sent a registry verification request to SIDN to verify the information submitted by Plaintiff with regard to the Domain Name. On December 7, 2007 SIDN transmitted its verification response confirming that Defendant is listed as the registrant and providing the contact details. On December 13, 2007 the Center notified Defendant of the Complaint and the commencement of the arbitration and set the deadline for submission of the Defense on January 2, 2008. On January 4, 2008 the Center notified the Parties that Defendant had failed to comply with such deadline.

The Center appointed Alfred Meijboom, domiciled in Amsterdam, as sole Arbitrator in these proceedings on January 14, 2008. The Arbitrator finds that he was properly appointed. The Arbitrator 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 January 14, 2008, it was noted that Defendant had been dissolved after having been bankrupt, which bankruptcy was concluded on January 8, 2008 for lack of funds to pay the ordinary creditors.

On January 23, 2008, the Center informed Parties on behalf of the Arbitrator that the latter was requesting SIDN to provide further particulars regarding the status of the disputed domain name in view of the apparent bankruptcy and subsequent dissolution of Defendant.

On January 24, 2008, SIDN informed the Center that it regarded the trustee of Defendant to remain competent with respect to the Domain Name so long as SIDN was not notified of the conclusion of the bankruptcy and the dissolution of Defendant. On January 25, 2008 the Center forwarded SIDN’s explanation to Parties.

In the following period the Center, with the Arbitrator’s knowledge and consent, contacted Parties by telephone and e-mail enquire about any possible settlement intentions.

On February 15, 2008, the Center notified the Parties that the Arbitrator was prepared to await the Parties’ wishes with respect to a possible settlement of the dispute, for which reasons proceedings were stayed until February 22, 2008.

By February 22, 2008, neither Plaintiff or Defendant had responded to the notification of February 15, 2008.

On February 27, 2008, the Center informed Parties that the Arbitrator would forward his decision to the Center by February 27, 2008, in accordance with Article 23.2 of the Regulations.

4. Factual Background

Plaintiff is holder of Community Trademark AGFEO, with registration number 4824876, which trademark was registered on August 24, 2007 (the “Trademark”). The Trademark was registered in classes 7 (machines and machine tools; motors and engines; transmissions for machineset al.), 9 (scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity et al.) and 38 (telecommunications; call-relaying; providing access to a global computer network; providing access to information on the internet; providing internet access (software); providing telecommunication connections to a global computer network et al.)

Plaintiff sells telecommunications systems and accessories under the Trademark. Plaintiff is holder of different domain names, including <agfeo.de>, <agfeo.com>, <agfeo.net> and <agfeo.co.uk>.

The Domain Name was registered on March 3, 2000.

5. Parties’ Contentions

A. Plaintiff

Plaintiff stated that it is holder of the Trademark and that it holds trade name rights in the name AGFEO. According to Plaintiff, the Domain Name is identical to the Trademark, and Plaintiff stated that it is impossible that Defendant was not familiar with the Trademark or company name when it registered the Domain Name. In addition, Plaintiff stated that Defendant has registered and used the Domain Name in bad faith. To substantiate this claim, Plaintiff put forward the following arguments.

Plaintiff argued that the Domain Name is likely to cause confusion because it is identical to the Trademark. According to Plaintiff, the top level domain “.nl” must be ignored with regard to this similarity, because the suffix “.nl” is non-distinctive and merely a requirement for the registration of a domain name. Plaintiff argued that the Domain Name is likely to cause confusion and wrongfully suggests an affiliation between Plaintiff’s company and Trademark and Defendant.

Furthermore, Plaintiff stated that Defendant does not have any rights of its own in the Domain Name. It does not hold the Domain Name as a trademark or use it as a trade name, nor is it commonly known under the Domain Name. Further, Defendant does not have a license to use the Trademark or Plaintiff’s company name.

Plaintiff claimed that Defendant has used the website under the Domain Name in the past to promote and sell ISDN telecommunications systems from various manufacturers, including Plaintiff. For this reason it must be concluded that Defendant intends to mislead customers and willfully attempts to dilute the Trademark, thereby increasing its own commercial gain. According to Plaintiff the right to resell Plaintiff’s products does not include the right to register the Trademark as a Domain Name.

Considering what has been stated above, Plaintiff claimed that by registering the Domain Name Defendant has aimed at disrupting Plaintiff’s business. Also, by using the Domain Name to attract internet users for its own commercial gain, thereby creating a likelihood of confusion with the Trademark, Defendant has used the Domain Name in bad faith.

Therefore, in accordance with Article 3 and Article 6.3 sub (9) of the Regulations, Plaintiff requests the Arbitration Tribunal to order that:

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

2. Defendant shall pay the costs of the procedure, including Plaintiff’s cost of legal assistance which at the time of filing of the Complaint amounted to approximately EUR 6,500;

3. 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

Defendant did not submit a Statement of Defence.

6. Discussion and Findings

Jurisdiction and applicable law

Defendant has registered the Domain Name on March 3, 2000, but changed the registration after January 29, 2003, thereby submitting itself to arbitration in relation to claims by third parties that, by registering and/or using the Domain Name, Defendant is infringing a Benelux trademark right (including rights to Community trademarks) or Dutch trade name right pursuant to article 21.2 of the Regulations for Registration of .nl Domain Names. SIDN has submitted records confirming the applicability of the Regulations to the Domain Name. Plaintiff’s submission of the Complaint therefore constitutes a valid arbitration agreement between the Parties.

Considering this, the Arbitrator holds that it has jurisdiction to render an arbitration award pursuant to 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 Plaintiff is not registered or established in the Netherlands and therefore presumably lacks knowledge of the Dutch language, the language of the proceedings shall be English pursuant to Article 17.2 of the Regulations,

In accordance with Article 17.4 of the Regulations the place of arbitration is Amsterdam, the Netherlands.

Admissibility

The Arbitrator checked the mercantile register which confirmed that Defendant was bankrupt; that such bankruptcy was concluded on January 8, 2008 for lack of funds to pay the ordinary creditors; and that Defendant company was dissolved per the same date. The Arbitrator shall therefore first address the admissibility of the Claim.

The fact that Defendant is dissolved for reasons of bankruptcy does not as such render the Complaint inadmissible. In its decision of January 27, 1995 the Supreme Court of the Netherlands ¹ allowed the reopening of liquidation proceedings when it is demonstrated that there are still some assets left to be liquidated. In the present case the Domain Name is a property right in the sense of article 3:6 Civil Code and it therefore constitutes an asset. As Plaintiff asserts that it is entitled to a transfer of the Domain Name as described in Article 3 of the Regulations, the Arbitrator considers the liquidation proceedings of Defendant to be open for the sole purpose of settling the dispute in these arbitral proceedings only. Plaintiff’s Complaint is therefore admissible.

Procedural Considerations

Defendant has failed to submit a Statement of Defence. 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 e.g. 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 above.

It is undisputed that the Domain Name is identical to the Trademark. In this respect, the Arbitrator considers the top level domain “.nl” as irrelevant for the assessment of similarity between the Trademark and the Domain Name, because it is a necessary technical element of a domain name and as such non-distinctive. Therefore the Domain Name is similar to the Trademark.

Plaintiff stated that the Domain Name has been registered and used in bad faith, because it has taken advantage of the Trademark by drawing consumers to its website and by creating a likelihood of confusion. The Arbitrator understands these contentions as Plaintiff claiming that the Domain Name infringes article 9(1) under (a) or (b) of the Community Trademark Regulation. Since the Trademark is valid throughout the whole European Community, including the Netherlands, an infringement of the rights laid down in these provisions would render Plaintiff’s claim allowable.

In absence of a Statement of Defence and considering Article 9.4 of the Regulations, the Arbitrator is only required to establish that Plaintiff’s claims are not baseless or unlawful. Plaintiff claims that Defendant has used the website to sell products from various manufacturers, including Plaintiff, thereby creating confusion with the public by implying a connection between Plaintiff and Defendant, which claim it did not support by evidence. However, the Arbitrator performed limited research in the public internet archives and is satisfied that products and services have indeed been offered on the website under the Domain Name in the past. This use of the Domain Name by Defendant may have created confusion amongst internet users. Since Defendant has not argued otherwise or submitted any basis for lawful use of the Domain Name, Plaintiff’s claim must be considered as not a priori baseless or unlawful.

Plaintiff’s alternative ground of trade name infringement does not need further discussion.

Accordingly, it is concluded that the use of the Domain Name by Defendant infringes Plaintiff’s trademark rights as meant in article 9(1) under (a) and/or (b) CTR. The Arbitrator therefore grants the remedy requested by Plaintiff and orders that Plaintiff shall become holder of the Domain Name instead of Defendant. This award shall replace the form required by SIDN for the Change of the Domain Name Holder.

Plaintiff further requested that Defendant shall pay the costs of these proceedings, including Plaintiff’s costs for legal assistance, which it claimed in amount of approximately EUR 6,500. This amount apparently includes EUR 2,250 for arbitration fees, so that Plaintiff claims costs for legal assistance of approximately EUR 4,250. The Arbitrator does not consider an amount of EUR 4,250 to be prima facie unreasonably high, and shall award it to Plaintiff, together with the costs of the arbitration proceedings of EUR 2,250.

In accordance with article 23.5 of the Regulations, the Arbitrator 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 Arbitrator decides as follows:

1. AGFEO GmbH & Co. KG shall become the holder of the Domain Name <agfeo.nl> instead of ISDN Benelux B.V.;

2. this award shall replace the form required by SIDN for the change of the domain name holder;

3. ISDN Benelux B.V. is ordered to pay AGFEO GmbH & Co. KG the costs of the arbitration proceedings in the amount of EUR 2,250 and Plaintiff’s claimed costs of legal assistance in the amount of EUR 4,250, therefore a total of EUR 6,500;

4. this award is declared enforceable regardless of whether an appeal is lodged;

5. all other claims are rejected.

Alfred P. Meijboom
Sole Arbitrator
Amsterdam

Dated: March 4, 2008

¹ HR 27-1-1995, NJ 1995, 579.