WIPO Arbitration and Mediation Center
ARBITRATION AWARD
LEGO Juris A/S v “A.W.E. van Harten; Belastingadvies- en Adm.Kntr.”
Case No. WIPO2007NL8
In an arbitration
under the Regulations on
.nl Domain Names
between:
LEGO Juris A/S
Koldingvej 2
7190 Billund
Denmark
(Plaintiff)
and
“A.W.E. van Harten; Belastingadvies- en Adm.Kntr.”
Oregondreef 29
3565 BE Utrecht
The Netherlands
(Defendant)
Arbitration Tribunal:
Mr. R.M.R. van Leeuwen
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 LEGO Juris A/S (Plaintiff) and “A.W.E. van Harten; Belastingadvies- en Adm.Kntr.” (Defendant) concerning the domain name <bionicle.nl>.
1. The Parties
Plaintiff, LEGO Juris A/S, is a company incorporated under the laws of Denmark, with its registered office in Billund, Denmark. Plaintiff is represented by Melbourne IT Corporate Brand Services AB of Sweden.
Defendant, “A.W.E. van Harten; Belastingadvies- en Adm.Kntr.”, is a company incorporated under the laws of The Netherlands, with its principal place of business in Utrecht, The Netherlands. Defendant is represented by Mr. A.W.E. van Harten of COEURS Belastingadviseurs Utrecht B.V. in Utrecht, The Netherlands.
2. The Domain Name and Participant
The domain name in dispute is <bionicle.nl> (the “Domain Name”). The participant is Net Ground B.V. with its registered office in Rijswijk, The Netherlands.
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center (the “Center”) by e-mail on July 13, 2007, and in hardcopy on July 16, 2007.
The Center verified that the Complaint met the formal requirements of Article 7 of the Regulations. On July 17, 2007, SIDN confirmed to the Center the status of the Domain Name, the identity of Defendant as the current registrant, the identity of the participant and the applicability of the Regulations. SIDN further confirmed that it had locked the Domain Name registration and that the Domain Name will remain locked during the pending arbitration proceeding in accordance with Article 8 of the Regulations. The Arbitration Tribunal agrees with the Center’s assessment that the Complaint is in compliance with the formal requirements.
In accordance with Articles 5.5, 7.1 and 7.3 of the Regulations, the Center formally notified the Defendant of the Complaint, and the proceedings commenced on July 19, 2007. The last date for sending the Statement of Defence to Plaintiff and to the Center was August 8, 2007.
On July 20, 2007, by email, in the Dutch language, Defendant requested the Center an extension of the deadline for submission of its Statement of Defence until August 31, 2007, due to a stay abroad. At the same day the Center replied that the Regulations do not as such provide the Center with authority to grant extensions of the time line for filing a Statement of Defence. However, in case Plaintiff would agree to an extension of the submission date for the Statement of Defence, the Center would proceed to issue the extension requested. Furthermore, the Center communicated that if Defendant would submit the Statement of Defence after its due date, pursuant to the Regulations it would be at the discretion of the Arbitration Tribunal to be appointed to decide whether to accept it or not. Also, the Center indicated that in accordance with Article 17.2 of the Regulations, the language of this procedure is English.
On July 23, 2007, by letter (also sent by email), in the Dutch language, from Defendant to the Center, the Defendant lodged an objection to the English language of the proceedings and requested again an extension of the deadline for submission of its Statement of Defence until September 15, 2007. On July 24, 2007, the Center replied that the Regulations do not as such provide the Center with authority to grant extensions of the time line for Defence or to determine a different language of proceeding from that prescribed by Article 17 of the Regulations. The Center noted that the Arbitration Tribunal to be appointed has authority to conduct proceedings as it deems fit within the provisions of the Regulations.
Defendant did not submit a Statement of Defence before or on August 8, 2007 (the due date). On August 20, 2007, the Center notified the Parties that Defendant had failed to comply with the deadline for the submission of the Statement of Defence. In this Notification of Defendant’s default the Center also indicated that, in accordance with Article 9.4 of the Regulations, the case would nevertheless proceed and the Arbitration Tribunal to be appointed would need to rule on the basis of the Complaint, granting the remedy requested, except if the Arbitration Tribunal would consider the Complaint to be baseless. Pursuant to Article 10.1 of the Regulations, the Center sent to the Parties a list of three potential arbitrators from the Pool of Arbitrators.
On August 23, 2007, Defendant filed a ‘Verweerschrift’ (Statement of Defence), written in Dutch and objecting mainly to the English language of the proceedings.
On August 24, 2007, the Center replied to Defendant (copied to Plaintiff), with reference to Article 16 of the Regulations, that the Center would forward the submission to the Arbitration Tribunal to be appointed and that it would be at the sole discretion of the Arbitration Tribunal whether to consider it or not.
In accordance with Article 10.11 of the Regulations, the Center appointed Remco M.R. van Leeuwen as sole Arbitrator on August 31, 2007.
The Arbitration Tribunal finds that it was properly constituted. The Arbitration 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.
On September 7, 2007, the Arbitration Tribunal rendered a Procedural Order allowing Defendant to re-file and amend its original submission, since such submission did not meet the requirements of Article 9.2, under (1) and Article 17.2 of the Regulations. On September 20, 2007, Defendant filed its amended submission, which again is written in Dutch and objects mainly to the language of the proceedings, namely English.
4. Factual Background
Plaintiff is, among others, the owner of the Community Trademark BIONICLE, No. 1671668, which was filed on May 23, 2000 and registered on July 12, 2001 for goods in the classes 9, 16, 25 and 28 and services in the class 41, hereinafter referred to as: the “Community Trademark”.
According to the verification provided by and the Whois of SIDN, the Domain Name was registered on March 24, 2003.
5. Parties’ Contentions
A. Plaintiff
Plaintiff, based in Denmark, and its licensees, collectively the LEGO Group of Companies, are the owners of BIONICLE marks in over 30 countries. The BIONICLE marks are extensively used in connection with (the construction of) toys and other BIONICLE branded products. The BIONICLE line is the LEGO Group’s biggest-selling theme and has been so since its introduction in 2001 in the Netherlands and elsewhere.
Plaintiff relies in particular on its rights in the Community Trademark.
Plaintiff contends, in summary, that the registration and use of the Domain Name by Defendant constitutes a trademark infringement, since the Domain Name is identical or at least highly, and confusingly, similar to the Community Trademark. Plaintiff furthermore contends that the likelihood of confusion includes an obvious association with Plaintiff’s well-known BIONICLE mark. Any person seeing the Domain Name, without being aware of the content, would likely think that the Domain Name is in someway connected to Plaintiff (“initial interest confusion”). Plaintiff furthermore contends that the registration of the Domain Name can be deemed a registration in bad faith, due to it’s well-known and reputed Community Trademark with a substantial and widespread reputation throughout the Community. By using the Domain Name Defendant is not making a legitimate non-commercial or fair use without intent for commercial gain, but is misleadingly diverting consumers for its own commercial gain.
Plaintiff claims that in response to its cease and desist letter, Defendant stated that the Domain Name was meant for a non commercial fan site, but still requested EUR 3.000,-- to transfer the Domain Name. In September 2006, following another letter from Plaintiff, Defendant launched a site under the Domain Name and initially the site was non commercial, later on the nature of the site changed to contain sponsored links. The website under the Domain Name offers ‘ Google ads’ links. Some of these links lead to sites selling BIONICLE products and others lead to sites selling entirely different products. On the Google info page “What is ads by Google”, among other things, the following is stated: “Serve Google ads on your website and earn more money” and “ when site visitors click on these ads, Google pays you”.
Plaintiff therefore requests the Arbitration Tribunal to find that:
- 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;
- The Defendant shall be prohibited from registering domain names similar to the Domain Name in the future, liable to a penalty of EUR 5.000,--;
- The Defendant shall pay the costs of the procedure, including the Plaintiff’s cost of legal assistance which at the time of filing the Complaint amount to approximately EUR 3.000,--; and
- 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. Defendant
On September 20, 2007, Defendant filed an amended submission. This amended submission is written in Dutch and objects mainly to the English language of the proceedings.
6. Discussion and Findings
Jurisdiction and Applicable Law
Defendant registered the Domain Name on March 24, 2003. Pursuant to Article 21.2 of the Regulations for registration of .nl domain names of SIDN, Defendant thereby submitted itself to these arbitration proceedings. SIDN has submitted records confirming the applicability of these arbitration proceedings to the Domain Name. 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 the Community Trademark Regulation (“CTMR”), 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. Plaintiff is not resident or registered in the Netherlands and it is sufficiently plausible that Plaintiff does not have knowledge of the Dutch language. The fact that LEGO Nederland B.V. and LEGO Benelux B.V. are situated in the Netherlands and, according to Defendant, these companies are related to Plaintiff, does not change this fact. LEGO Nederland B.V. and LEGO Benelux B.V. are not the Plaintiff in this case and are not the owner of the Community Trademark.
In accordance with Article 17.4 of the Regulations, the place of arbitration is Amsterdam, the Netherlands. The domicile of the Arbitration Tribunal is Amsterdam, the Netherlands.
Discussion
As noted above, Defendant filed an amended submission. In addition to the above-mentioned violation of Article 17.2 of the Regulations, such amended submission still did not meet the requirements of Article 9.2 sub (1) of the Regulations. The Arbitration Tribunal notes that Article 9.4 of the Regulations provides that, should Defendant fail to submit a Statement of Defence, the case shall nevertheless proceed and the Arbitration Tribunal shall rule on the basis of the Complaint; it also follows from Article 9.4 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. However this may be, the Arbitration Tribunal notes that in any event the Defendant in its amended submission has chosen, notwithstanding an extended opportunity to do so, basically not to address the substance of the present case.
Upon review of the case file, the Arbitration Tribunal holds that Plaintiff has sufficiently demonstrated its rights in the Community Trademark and the fact that the Community Trademark is well-known in the sense of Article 9 (1) sub (c) CTMR.
The Arbitration Tribunal further finds that the Domain Name is identical to the Community Trademark, since the top level domain ‘.nl’ is irrelevant for the assessment of the similarity between the Community Trademark and the Domain Name. The use of sponsored links on the website under the Domain Name should be considered as use by the Domain Name holder to distinguish the goods and services offered on those websites 1 . These goods and services are partly similar and partly dissimilar to Plaintiff’s goods and services under the Community Trademark.
The Arbitration Tribunal finds that, by registering and using the Domain Name, which for the purposes of this case is identical to Plaintiff’s Community Trademark, Defendant appears to have unfairly profited from the repute of such Community Trademark in the course of trade without having a valid reason to do so. The Arbitration Tribunal is satisfied that Defendant’s use of the Domain Name meets the requirements of Article 9 (1) sub (a), sub (b) and sub (c) CTMR and thereby infringes upon Plaintiff’s trademark rights. Accordingly, the Arbitration Tribunal will grant the remedy requested by Plaintiff and will order 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.
Remaining remedies
As to the remaining remedies requested by Plaintiff, the Arbitration Tribunal interprets the default provision of Article 9.4 of the Regulations, as not obliging the Arbitration Tribunal to grant in full each and every one of the remedies sought by Plaintiff 2 .
According to Article 3 of the Regulations, Plaintiff has requested “a prohibition for the Domain Name Holder to register similar domain names in the future”. Unlike a trademark, a domain name is not a right which can be infringed as such, so that this 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 3 . The Arbitration Tribunal understands, however, that Plaintiff seeks a remedy that such future domain names shall not infringe the Community Trademark, which claim shall be granted.
Taking into account all circumstances, the Arbitration Tribunal will award the procedural costs, including EUR 3.000,-- for the costs of legal assistance.
According to Article 23.5 of the Regulations, Plaintiff has further requested that the Arbitration Tribunal declares the award enforceable regardless of whether an appeal against the award is lodged. In view with the default nature of this case and the other default decisions under the Regulations and taking into account that Plaintiff did not present specific arguments in support of this request in the Complaint, the Arbitration Tribunal declines to issue such a declaration 4 .
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. LEGO Juris A/S shall become the holder of the Domain Name <bionicle.nl> instead of “ A.W.E. van Harten; Belastingadvies- en Adm.Kntr.”;
2. This award shall replace the deed required by SIDN for the change of the domain name holder;
3. “A.W.E. van Harten; Belastingadvies- en Adm.Kntr.” shall not register domain names which infringe the Community Trademark BIONICLE, No. 1671668, of LEGO Juris A/S in the future, subject to a penalty of EUR 5.000,-- for each domain name registered in violation of this prohibition;
4. “A.W.E. van Harten; Belastingadvies- en Adm.Kntr.” is ordered to pay LEGO Juris A/S a total amount of EUR 5.250,--, which includes EUR 2.250,-- for the administration costs of these proceedings and the Arbitration Tribunal’s fees, and EUR 3.000,-- for legal assistance;
5. All other claims are rejected.
Remco M.R. van Leeuwen
Single Arbitrator
Dated: October 2, 2007
1 See Just Eat A/S v. Roberto da Silva, Case No. WIPO2007NL1.
2 See for instance : Betafence Holding N.V. and Betafence N.V. v. S. Wichers, Case No. WIPO2007NL4, Sanutri AG v. Savcenko, Case No. WIPO2006NL16, Sublimsport Limited v. Henrik Olsen, Case No. WIPO2006NL14, Volkswagen AG v. Princa B.V., Case No. WIPO2006NL10, Lonsdale Sports Limited v. Florisco Holding B.V. and Floris Wyers, Case No. WPO2005NL3 and Consitex S.A. v. Lanificio Ermenegildo Zegna & Figli S.p.A. and Ermenegildo Zegna International N.V. v. Mattia Gerolanda, Case No. WIPO2003NL1.
3 See for instance: Betafence Holding N.V. and Betafence N.V. v. S. Wichers, Case No. WIPO2007NL4, General Cardiac Technologie Inc. v. Exim Holland B.V., Case No. WIPO2007NL3, Just Eat A/S v. Roberto da Silva, Case No. WIPO2007NL1, 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.
4 See for instance: Sublimsport Limited v. Henrik Olsen, Case No. WIPO2006NL14; Volkswagen AG v. Princa B.V., Case No. WIPO2006NL10; and Consitex S.A. v. Lanificio Ermenegildo Zegna & Figli S.p.A. and Ermenegildo Zegna International N.V. v. Tatiana Gerolanda, Case No. WIPO2003NL2.