The Complainant is Ocean Accessories LLC of Guilford, Connecticut, United States of America, represented by Russchen Advocatuur, the Netherlands.
The Respondent is Wic B.V. of Raamsdonksveer, the Netherlands, represented by Zomer Advocaten, the Netherlands.
The disputed domain name <swobbit.nl> is registered with SIDN through Ocen.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2012. On March 29, 2012, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain name. On March 30, 2012, SIDN transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 3, 2012. In accordance with the Regulations, article 7.1, the due date for Response was April 23, 2012. The Response was filed with the Center on April 20, 2012.
On April 24, 2012, SIDN commenced the mediation process. On May 24, 2012, SIDN extended the mediation process until June 23, 2012. On June 20, 2012; SIDN further extended the mediation process until July 23, 2012. On July 20, 2012 SIDN informed parties that the dispute had not been solved in the mediation process.
The Center appointed Alfred Meijboom as the panelist in this matter on August 8, 2012. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.
In accordance with article 17.2 of the Regulations, the language of the proceeding will be English.
The Complainant produces, markets, and distributes maritime maintenance products. It holds an International Registration for the trademark SWOBBIT with registration number 1041688, registered on June 2, 2010 in class 21 for, inter alia, drying mops, brushes and cleaning tools, with designation European Community, based on United States trademark registration number 2866234 of July 27, 2004.
The Respondent sells various products, mostly for maritime use, including cleaning products. The Respondent has been a reseller of the Complainant’s products in the past. The disputed domain name was registered by the Respondent on April 15, 2002.
The Complainant contends that the disputed domain name is identical to its trademark SWOBBIT. It argues that the Respondent does not have rights or legitimate interests in the disputed domain name, as the Complainant has not authorized the Respondent to register the disputed domain name and the Respondent has linked the disputed domain name to its website at “www.wicbv.nl”, which offers competing products, after the distribution contract between the Complainant and the Respondent had been terminated. After the Complainant had summoned the Respondent, it ceased such linking, but the Respondent refused to transfer the disputed domain name to the Complainant.
The Complainant argues that the Respondent has registered the disputed domain name in bad faith, because it did not ask the Complainant for permission to register the disputed domain name whereas it was aware or should have been aware of the Complainant’s rights. The Respondent uses the disputed domain name in bad faith because after the distribution agreement between the parties had been terminated, it continued to use the disputed domain name for its company website to promote competing goods. According to the Complainant, this constitutes a violation of trademark law within the meaning of article 9(1) of the Community Trademark Regulation.
The Respondent contends that it has been an exclusive distributor for SWOBBIT marked products from 2001 until November 2009. In 2001, Mr. Varga, the legal predecessor of the Complainant, unconditionally approved the registration of the disputed domain name in the name of Respondent. Thereafter, Mr. Varga sold the business to Calderon, which sold it to the Complainant. The Complainant extended the exclusive distributorship with the Respondent in 2008 and implicitly accepted the Respondent’s use of the disputed domain name.
The Respondent has a legitimate interest in the disputed domain name because it has a large quantity of SWOBBIT products on stock, for which it plans to launch a sales campaign using the disputed domain name. The reason the Respondent has a large quantity of SWOBBIT products on stock is that it was forced to terminate the distribution agreement with the Complainant because the Complainant breached the exclusivity arrangements under the agreement. The Respondent has not yet launched a sales campaign for these products because it has given priority to setting up a business for its own new product line. It has offered to transfer the disputed domain name to the Complainant several times, under the condition that the Complainant would take back the stock of SWOBBIT products. The Complainant has however refused to do so and wanted to acquire the disputed domain name without taking responsibility for the termination of the distribution agreement. Therefore, the Respondent alleges that it is the Complainant who is acting in bad faith and not the Respondent. The Respondent had prior approval from Mr. Vargas to register the disputed domain name and has used the disputed domain name legitimately for years before the Complainant’s trademark was registered in the European Union.
Article 2.1(a) of the Regulations requires that the Complainant demonstrates that the disputed domain name is identical or confusingly similar to a trademark or trade name protected under Dutch law, in which the Complainant has rights.
In the present case the Complainant has sufficiently demonstrated that it holds rights in the word mark SWOBBIT, which also enjoys protection in the Netherlands. Article 2.1(a) of the Regulations does not require that the trade mark or trade name is registered prior to the disputed domain name. This may however be of relevance with respect to article 2.1(c) of the Regulations, which refers to registration or use of the disputed domain name in bad faith.
As it is well established that top level domain extensions such as “.nl” may not be considered in the assessment under article 2.1(a) of the Regulations (e.g., Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008), the disputed domain name is identical to the Complainant’s trademark SWOBBIT.
The Panel therefore finds that the disputed domain name is identical to the Complainant’s trademark within the meaning of article 2.1(a) of the Regulations.
A reseller of branded products may have a legitimate interest in a domain name which consists of the product’s trademark. However, established case law under the Regulations (e.g., General Electric Company v. V.O.F. Aquacombi, WIPO Case No. DNL2008-0042; Akzo Nobel Coatings International B.V. v. E. Kroon, WIPO Case No. DNL2009-0003; and Honda Nederland B.V. v. Hode BV, WIPO Case No. DNL2010-0077) requires that:
1. the reseller actually offers trademark products and/or - services under the domain name;
2. on the website that is linked to the domain name, only products and services that bear the trademark owner’s trademark are sold;
3. the relationship, or absence thereof, with the trademark owner is clearly indicated on the website that is linked to the domain name; and
4. the trademark owner is not barred from using its trademark as a domain name (which may be the case if the reseller has registered a large amount of obvious domain names).
In this case, the Panel finds that the Respondent does not comply with these requirements. The Complainant has submitted evidence that the disputed domain name resolved to the Respondent’s own website which offered competing products. Its current lack of any offer on the website under the disputed domain name since a number of years does not suggest a right or legitimate interest either.
The Panel therefore finds that the Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of article 2.1(b) of the Regulations.
The Complainant has argued that the Respondent has registered the disputed domain name in bad faith, since it did not ask the Complainant’s permission to register the disputed domain name, while it was or should have been aware of the Complainant’s rights. The Panel finds, however, that this does not constitute proof of registration in bad faith, as at the time of the registration of the disputed domain name the Complainant did not own any trademark rights within the meaning of article 2.1(a) of the Regulations. Whether the Complainant’s legal predecessor has approved, tacitly or otherwise, the registration of the disputed domain name by the Respondent may therefore remain unconsidered.
The Panel therefore finds that in the present case there is no proof of registration in bad faith.
As regards the use of the disputed domain name in bad faith, the Complainant argues that the use of the disputed domain name by the Respondent violates Community trademark law. In this respect it should be noted that the Regulations do not offer the same protection as trademark law, and are only meant to deal with excesses such as domain name hijacking, on the basis of a limited set of rules. If a complainant wishes to address other forms of trademark infringement, it may do so before a regular court (Akzo Nobel Coatings International B.V. v. E. Kroon, WIPO Case No. DNL2009-0003).
Even so, the Panel does find that there is proof that the Respondent has used the disputed domain name in bad faith, because the Respondent has linked the disputed domain name to its website at “www.wicbv.nl” which offers products that compete with the Complainant’s products. The Respondent has also indicated that it has used the disputed domain name in order to try to force the Complainant to take back its remaining stock of SWOBBIT products, as the Complainant had allegedly breached the former distribution agreement between the parties. If the Respondent is of the opinion that the Complainant has breached the parties’ agreement and should therefore take back the remaining stock, it should make a case before a regular court. In the context of cyber squatting, the Panel is of the opinion that using the disputed domain name to enforce contractual rights unrelated to such domain name, does not take away the bad faith found to exist in using the disputed domain name for a website which offers competing products.
Therefore, the Panel finds that the Respondent has used the disputed domain name in bad faith.
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the disputed domain name <swobbit.nl> be transferred to the Complainant.
Alfred Meijboom
Panelist
Date: August 20, 2012