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WIPO

WIPO Arbitration and Mediation Center

Case No.: WIPO2008NL1

ARBITRATION AWARD
Impact Retail B.V. v. A. Culbertson

Impact Retail B.V.
Tilburg
The Netherlands
(Plaintiff)

and

A. Culbertson
Honolulu
United States of America
(Defendant)

Arbitrator
Tobias Cohen Jehoram

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 Impact Retail B.V. (the Plaintiff) and A. Culbertson (the Defendant) concerning the domain name <radiomodern.nl>.

 

1. The Parties

The Plaintiff, Impact Retail B.V., is a private company with limited liability incorporated under the laws of the Netherlands, with registered office in Tilburg, The Netherlands, represented by Novagraaf, Amsterdam, the Netherlands.

The Defendant, A. Culbertson, is a natural person, residing in Honolulu, United States of America and with an alternative address in Zaandijk, the Netherlands. The Defendant did not appoint a representative.

 

2. The Domain Name and Participant

The domain name in dispute is <radiomodern.nl> (the “Domain Name”). The participant is Internet Service Europe Ltd. with registered office in Roosendaal, the Netherlands.

 

3. Procedural History

The Complaint was received by the WIPO Arbitration and Mediation Center (the “Center”) by e-mail on January 15, 2008 and in hardcopy on January 23, 2008.

On January 15, 2008, the Center acknowledged receipt of the Complaint and requested Registry Verification. On January 17, 2008 the Registry (SIDN) confirmed that the Defendant is the current registrant of the Domain Name.

On January 24, 2008, the Plaintiff was notified of the Complaint and the arbitration proceeding that had commenced against him, in accordance with Articles 5.5, 7.1 and 7.3 of the Regulations.

The Center did not receive a Statement of Defence from the Defendant. Accordingly, the Center notified the Defendant of its default on February 14, 2008.

On March 6, 2008, the Center appointed Tobias Cohen Jehoram 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 Regulations to ensure compliance with article 10.9 of the Regulations.

 

4. Factual background

The Plaintiff is the owner of the following registered Benelux trademarks:

- Benelux registration No. 0153422 (RADIO MODERN word trademark), registered in classes 35, 36, 37 and 42 (inter alia advertising; advising in regard to the purchase and use of electrical and electronic products and other consumer products; giving out warranties on consumer products, maintenance and repair of consumer products; advising in regard to the use of electrical and electronic products and other consumer products), filing date July 3, 1987;

- Benelux registration No. 0157787 (RADIO MODERN word/device trademark) registered in classes 35, 37 and 42 (inter alia advertising; advising in regard to the purchase and use of electrical and electronic products and other consumer products; maintenance and repair of consumer products; advising in regard to the use of electrical and electronic products and other consumer products), filing date December 29, 1987;

- Benelux registration No. 0663735 (RADIO MODERN ELECTRONICS word/device trademark) registered in classes 35, 36, 37 and 42 (inter alia advertising; advising in regard to the purchase and use of electrical and electronic products and other consumer products; giving out warranties on consumer products, maintenance and repair of consumer products; advising in regard to the use of electrical and electronic products and other consumer products), filing date October 29, 1999;

- Benelux registration No. 949102 (MODERN ELECTRONICS word/device trademark), registered in classes 35, 36, 37 and 42 (inter alia advertising; advising in regard to the purchase and use of electrical and electronic products and other consumer products; giving out warranties on consumer products, maintenance and repair of consumer products; advising in regard to the use of electrical and electronic products and other consumer products), filing date October 10, 1999.

The Plaintiff also enjoys trade name rights to the signs RADIO MODERN, MODERN ELECTRONIC and MODERN.NL in the Netherlands.

The Defendant has registered the Domain Name on May 27, 2004.

 

5. Parties’ Contentions

A. Plaintiff

The Plaintiff contends that the sign RADIO MODERN was used by the Plaintiff as trademark and trade name for a retail chain of full range electronics stores, selling consumer electronics, such as televisions, computers, stereo’s, cookers, microwaves, washing machines, DVD-players/recorders, etc., and offering maintenance and repair services for electrical and electronic consumer products, until 2006. From the year 2000 onwards, the name of the retail chain was gradually changed to, firstly, “Modern Electronics”, and later on to “IT’s”, the current name of the stores. In 2006, the last “Radio Modern”- and “Modern Electronics”-stores were renamed to “IT’s”.

The name “Modern.nl” is nowadays used by the Plaintiff as their full service internet shop for consumer electronics. The trademarks and trade names RADIO MODERN were put to genuine use by the Plaintiff in the last five years and might in the future be put to genuine use again, because of the strength of the brand and the value it represents.

Furthermore, the Plaintiff states that the RADIO MODERN and MODERN ELECTRONICS trademarks and trade names have been used in the Benelux intensively in the past decades and that the first use of the trademark and trade name RADIO MODERN in the Benelux started in 1937. In consequence of the long period of use and the intensity of the use of the trademarks, the trademarks have become distinctive in relation to registered services.

The Plaintiff contends that the Defendant infringes the Plaintiff’s trademark rights, in the sense of article 2.20.a and 2.20.b Benelux Treaty regarding the Intellectual Property (BTIP) since the Domain Name is identical to the Plaintiff’s trademark and trade name RADIO MODERN and highly similar to the Plaintiff’s MODERN ELECTRONICS trademark and trade name. The Domain Name is used as a commercial search portal in regard to consumer electronics, such as televisions, computers, washing machines, DVD-players/recorders, etc.

The Plaintiff also contends that there is a likelihood of confusion between the domain name <radiomodern.nl> and the trademarks and trade names RADIO MODERN and MODERN ELECTRONICS. The likelihood of confusion is enhanced by the fact that the trade name MODERN.NL was maintained by the Plaintiff for its internet retail services in connection with consumer electronics.

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

1. The Plaintiff shall become the holder of the domain name <radiomodern.nl> 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 contested domain name <radiomodern.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 this Complaint amount to approximately EUR 3.750,-

4. The award, in accordance with Regulations Article 23.5, 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 May 24, 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 the applicability of these arbitration proceedings to the registration of 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 The Hague, 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 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.

Upon review of the Complaint and its exhibits, the Tribunal finds that the Plaintiff has sufficiently demonstrated its Benelux trademark rights. The Tribunal also finds that the Domain Name is identical to the Plaintiff’s trademark and the trade name RADIO MODERN and that is substantially similar to the Plaintiff’s trademark and trade name MODERN ELECTRONICS.

On the basis of article 2.20.a BTIP, the holder of a trademark can invoke protection against use of an identical sign for identical goods/services. According to article 2.20.b BTIP, the holder of a trademark can also invoke protection against the use of an identical and/or similar sign for similar goods where there exists a likelihood of confusion on the part of the public.

The Domain Name <radiomodern.nl> has been used in relation to services which are identical, or at least highly similar, to those for which the trademark has been registered. The Domain Name has been used by the Defendant as a commercial search portal in regard to consumer electronics, such as televisions, computers, washing machines and DVD-players/recorders, while the trademark has been registered for, inter alia, advertising and advising in regard to the purchase and use of electrical and electronic products and other consumer products. The Domain Name is identical to the Plaintiff’s trademark and trade name RADIO MODERN and it is also being used for identical services.

As there is no evidence that the Plaintiff has consented to use by the Defendant of its trademark(s) as part of the Domain Name, the Defendant, by using the Domain Name, infringes upon trademark rights of the Plaintiff, as set out in article 2.20.a BTIP. The Defendant also infringes the Plaintiff’s trademark rights as set out in article 2.20.b BTIP since the Domain Name is, if not identical, at least substantially similar to the Plaintiff’s trademark and trade name MODERN ELECTRONICS and is being used for identical and/or similar services causing a likelihood of confusion amongst the relevant public. The likelihood of confusion is further strengthened by the fact that the trademark has a reputation in the Benelux.

Therefore, the Tribunal shall award the requested remedy that the Plaintiff shall become 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 the domain name holder.

The Plaintiff has also requested that the Defendant be prohibited from registering domain names similar to the contested domain name <radiomodern.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. The Tribunal understands however that the Plaintiff seeks a remedy that such future domain names shall not infringe one or more trademark(s) or trade name(s) of the Plaintiff, which claim will be granted.

Since the claim of Plaintiff is awarded, the Tribunal will award the Plaintiff’s claim for payment by the Defendant of the administration costs and of the Tribunal’s fee in a total amount of € 2.250,-. On the Plaintiff’s claim for payment by the Defendant of the costs of legal representation the Tribunal awards € 3.750,- which amount the Tribunal considers appropriate in light of the above considerations and circumstances and the effort needed to draft a Complaint that covered all the aspects of the infringement at hand.

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 <radiomodern.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 which infringe on the Plaintiff’s trademark right(s) and/or trade name right(s) in the trademark/name RADIO MODERN,

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.

 

Tobias Cohen Jehoram
Sole Arbitrator
(The Hague)

Date: March 20, 2008, Amsterdam

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