The Complainant is Buffalo Boots GmbH of Hochheim, Germany, represented by Marx Van Ranst Vermeersch & Partners, Belgium.
The Respondent is Tijdhof Consulting - R.H.M. Tijdhof of Groningen, the Netherlands, represented by Stichting Univé Rechtshulp, the Netherlands.
The disputed domain name <buffaloshop.nl> (the “Domain Name”) is registered with SIDN through Exsilia Internet.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2012. On July 26, 2012, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On July 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 July 31, 2012. In accordance with the Regulations, article 7.1, the due date for Response was August 20, 2012. The Response was filed with the Center on August 16, 2012.
On August 20, 2012, the Complainant filed a further submission.
On August 21, 2012, SIDN commenced the mediation process. On September 20, 2012, SIDN extended the mediation process until October 20, 2012. On October 19, 2012, SIDN further extended the mediation process until November 19, 2012. On November 8, 2012, SIDN informed parties that the dispute had not been solved in the mediation process.
The Center appointed Tjeerd F.W. Overdijk as panelist in this matter on November 20, 2012. The Panel finds that it was properly appointed. 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.
The Complainant, Buffalo Boots GmbH (hereinafter also: “Buffalo Boots”), incorporated in 1976, focuses on the design, creation and online selling of footwear and other fashion accessories, which are marketed under the trade mark BUFFALO. According to the Complainant the notoriety of the BUFFALO trade mark increased significantly with the popularity of its platform shoes in the nineties. The Complaint is based, amongst others, on the trade marks:
- BUFFALO (word mark): Benelux trade mark with registration number 462592, registered on April 25, 1989;
- BUFFALO (figurative trade mark): Community trade mark with registration number 1495753, registered on March 26, 2001;
- BUFFALO (figurative trade mark): Community trade mark with registration number 2183614, registered on July 7, 2003;
- BUFFALO (figurative trade mark): Community trade mark with registration number 2212819, registered on July 18, 2002.
The Complainant sells its BUFFALO products through an online web shop which can be reached through various country-related domain names, including <buffaloshop.de>, <buffalo-shop.de>, <buffaloshop.be>, <buffaloshop.fr> and <buffaloshop.at>. Apart from its trade marks, the Complainant claims to also use BUFFALO as its trade name.
The Respondent, Tijdhof Consulting - R.H.M. Tijdhof (hereinafter also referred to as “Tijdhof”), supports organizations in the deployment and use of ICT. The Respondent has registered the Domain Name on October 20, 2007. At the date of commencement of this proceeding, Tijdhof was using the Domain Name for a web shop for Buffalo NAS products, produced by the Buffalo Group (“www.buffalo-technology.com”) a global manufacturer of storage, multimedia, and wireless networking products for the home and small business headquartered in Japan. NAS (Network Attached Storage) is a storage system for (computer) data which is connected on a network.
The Complainant argues that the trade mark and trade name BUFFALO have to be compared with the Domain Name.
The Domain Name consists of the trade mark BUFFALO with the addition of the word “shop”. The Complainant’s trade mark and trade name has been incorporated in its entirety as part of the Domain Name. Based on established case law under the Regulations, the addition of a generic or descriptive term such as “shop” does not eliminate the similarity with the trade mark. Moreover, the term “shop” adds to the confusion as it describes the activity of Complainant under its trade mark. For these reasons the Domain Name should be considered confusingly similar to the trade marks and trade name of the Complainant.
The Complainant states that the Respondent does not have rights to or legitimate interests in the Domain Name, because the Respondent has no intellectual property right in the identifier BUFFALO. Likewise, the Respondent’s name, trade name and/or company name have nothing to do with the word “buffalo”. The Respondent is therefore not commonly known by the Domain Name as an individual, business or other organization.
The Complainant notes that the Respondent stated in its letter of May 29, 2012, that it registered the Domain Name in order to sell BUFFALO products from the Buffalo Technology company and proposed to sell the Domain Name to the Complainant for EUR 10,000. Contrary to its first statement that <buffaloshop.nl> is registered for the sale of BUFFALO products, the Respondent has not made any demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. This is evidenced by the fact that until May 14, 2012, the Domain Name had never been used. On June 7, 2012, the Domain Name was still resolving to a “Server Default Page” announcing that “hosting for this domain is not configured or there’s no such domain registered in Plesk”. The Complainant attached as Annex to the Complaint a screenshot of the aforementioned default page, dated June 7, 2012.
Furthermore, the Complainant requested the Respondent to provide evidence that it substantially invested in a web shop dedicated to the sale of products from the Buffalo Technology company and that it received a proper license from the latter to do so. The Respondent never answered this request. Moreover, the Complainant notes, that under the Uniform Domain Name Dispute Resolution Policy (UDRP) and the Regulations, if the Respondent indeed uses the Domain Name to resell Buffalo Technology products, the Respondent must: actually offer goods or services associated with the mark, use the Domain Name to sell only goods or services associated with the mark, accurately disclose the reseller’s relationship with the mark holder and refrain from “cornering the market” on relevant domain names. The Complainant states that amongst others, the Respondent never published, disclosed or clarified its relationship with the Buffalo Technology company and that it appears to resell hardware devices from many different brands.
Only after having received letters from the Complainant, the Respondent made the Domain Name redirect to a pre-existing web shop at “www.tcshop.nl”. The Complainant notes in this regard that the criteria under article 3.1(a) of the Regulations only take into consideration the investments and use made “before having received any notice of the dispute”. According to the Complainant, the redirection link was only created after the Complainant advised the Respondent that it refused to pay the price of EUR 10,000. The Complainant contends that this clearly demonstrates commercial use of the Domain Name, which is illegitimate under article 3.1(a) and 3.1(b) of the Regulations.
The Complainant also argues that the Domain Name has been registered or is being used in bad faith, based on article 3.2 of the Regulations. The Complainant is a famous shoe manufacturer and seller whose official website is accessed via, amongst others, the domain name <buffaloshop.de> and the Respondent should have reasonably been aware of this fact prior to the registration of the Domain Name on October 20, 2007. When the Complainant contacted the Respondent, the latter immediately offered to sell the Domain Name for a price of EUR 10,000. This demonstrates that the Domain Name has been registered or used primarily for the purpose of selling, renting or transferring it to the Complainant, as referred to in article 3.2(a) of the Regulations.
The Respondent redirected the Domain Name to an online web shop at “www.tcshop.nl”, after having been contacted by the Complainant. Therefore it seems obvious that the Respondent tries to disrupt the Complainant’s activities, (article 3.2(c) of the Regulations) or at least, uses the Domain Name for commercial gain, by attracting Internet users to a website of the registrant or other online location through the likelihood of confusion which may arise with the trade marks, trade names and the other domain names of the Complainant (article 3.2(d) of the Regulations).
Based on the above, the Complainant requests the Panel to decide that the Complainant shall become the registrant of the Domain Name.
The Respondent states that there is no confusion arising from the use of the domain name <buffaloshop.nl>, because the Respondent’s products have a completely different target group. Confusion between BUFFALO for shoes and clothing on the one hand and <buffaloshop.nl> for data storage products on the other could hardly arise because the target group is so different. In addition, an online search for the word “buffalo” results in 392 million hits. According to the Respondent, this means that people will always add another word to “buffalo” in the search field, such as “clothing” or “network storage”, in order to arrive at the site with the products they are looking for.
According to the Respondent, the UDRP and .nl decisions quoted by the Complainant are not applicable because in these cases no defense had been raised by the respondents.
With regard to legitimate interests in the Domain Name, the Respondent states that the Domain Name is used for the sale of NAS products with the BUFFALO trade mark of the Buffalo Group. The Respondent contends it has been active for quite some time in the sale of a variety of hardware products via the Internet. The Respondent became aware that the sale of products is more successful via niche shops for different target groups, than offering the products for sale through a general website. At the time of filing of the Response by the Respondent, the Respondent maintained two further web shops operational under the following domain names: <callvoip.nl> and <fritzshop.nl>. The Respondent states that it decided to postpone the development of other web shops because the web shops have been developed independently from each other, each with its own management environment. Adding more niche shops would involve a substantial management burden and a high degree of inefficiency. The Respondent therefore chose to have a “completely new multi shop platform” developed in which the web shop at <tcshop.nl> is “presented centrally with various niche web shops under it”. The Respondent states that this project is carried out by the company MediaCT.
The Respondent has instructed MediaCT to design a new multi shop that includes the various niche shops. According to the Respondent, the instructions for this multi shop were given shortly before the Complainant filed the Complaint, and therefore action to actually start using the Domain Name was not merely taken after the Complainant contacted the Respondent.
The Respondent contends that there is no bad-faith registration or use of the Domain Name. The Complainant claims that the Respondent only registered the Domain Name with a view to selling it to the Complainant for a price in excess of the transfer value. The Respondent states that if this would have been its real intention, it would have obviously offered the Domain Name for sale much sooner after the registration of the Domain Name in 2007.
The Respondent further contends that the Buffalo clothing brand is not widely known in the Netherlands. Furthermore, the Respondent claims that there are many businesses operating under the name “Buffalo”, or which make use of the word “buffalo”. It is therefore not obvious that the Respondent only registered the Domain Name with the aim of selling it to the Complainant. The proposal to sell the Domain Name was only in response to the Complainant’s demand to transfer the Domain Name.
The Respondent states that it did not register the Domain Name in order to obstruct the Complainant from using it.
For these reasons the Complaint should be rejected.
On August 20, 2012, the Complainant filed a further submission. The Complainant claims its further submission should be allowed because the Respondent submitted a document as Annex to the Response (a letter from MediaCT to the Respondent dated February 1, 2012), which was unknown to the Complainant and its representative, and because the Respondent raised new arguments based on that document. For the sake of completeness, the Panel will allow the Complainant’s further submission. In the circumstances of this case Panel chose not to invite the Respondent to submit a reply.
In its further submission, the Complainant states that the assessment of likelihood of confusion between the Domain Name and the Complainant’s trade mark must be made without any consideration of the website to which the former resolves, and therefore, without considering the goods that are sold via the said website. The Complainant bases its statement on UDRP case law (Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698).
Furthermore, the niche sub web shops are actually created by framing parts of the initial web shop at <tcshop.nl>. The Respondent registered domain names composed of third parties’ trade marks, with the generic term “shop”, in order to better “target” the visitors of its web shop. The Respondent does not have the right to do so just because it sells products of that trade mark. The Complainant states that it is obvious that the Respondent has never received any authorization or license from the relevant trade mark owner. The Domain Name improperly suggests that the website operated under it is the official website of the respective trade mark owner or, at least, of acknowledged and/or authorized affiliates (Research In Motion Limited v. One Star Global LLC, WIPO Case No. D2008-1752).
The Complainant contends that the Respondent’s statement that its strategy has always been to register many third-party trade mark-based domain names to divert Internet users to its web shop, is a clear situation of use in bad faith.
In addition, the website development does not demonstrate any investment or real preparation to use the Domain Name at all, merely improvements of the already existing “TC Shop”. Moreover, such use would not be in connection with a bona fide offering of goods or services.
Based on article 2.1 of the Regulations, complaints may be submitted by any party which asserts and establishes that:
a) a domain name is identical or confusingly similar to:
i) a trade mark, or trade name, protected under Dutch law in which the complainant has rights; or
ii) a personal name registered in the General Municipal Register (“gemeentelijke basisadministratie”) of a municipality in the Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in the Netherlands under which the complainant undertakes public activities on a permanent basis; and
b) The registrant has no rights to or legitimate interests in the domain name; and
c) The domain name has been registered or is being used in bad faith.
With regard to these requirements the Panel considers the following.
The Complainant argues that the Domain Name is confusingly similar to trade mark and trade name BUFFALO.
The Panel concurs with the view of the Complainant that the addition of the word “shop” is insufficient to obviate confusing similarity between the Domain Name and the trade mark and/or trade name. The word “shop” does not have a distinctive meaning, and many domain names contain that word. For this reason, the element “buffalo” in the Domain Name needs to be compared to the trade mark BUFFALO and the likelihood of Internet user confusion needs to be assessed only on the basis of the similarity between this dominant element in the Domain Name and the trade mark. In this respect, the Domain Name would be associated in the public’s mind with the Complainant’s trade mark so that confusion is likely. The addition of the generic term “shop” does not prevent confusion (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206; LEGO Juris A/S v. M. Moench, WIPO Case No. DNL2009-0052).
It is also established case law that the top level domain “.nl” may be disregarded in assessing the similarity between the Domain Name on the one hand and the invoked trade marks on the other hand (Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).
In view of the foregoing, the Panel finds that the Domain Name is confusingly similar to the trade mark pursuant to article 2.1(a) of the Regulations.
In accordance with paragraph 3.1 of the Regulations, a respondent may demonstrate its rights to or legitimate interests in the domain name by proving, on a non-exhaustive basis, any of the following circumstances:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organisation) has been commonly known by the domain name, even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue, or a personal name, or a name of a Dutch public legal entity or a name of an association or foundation located in the Netherlands.
The Panel finds, on the evidence, that the Respondent (as an individual, business or other organisation) has not been commonly known by the Disputed Domain Name.
However, the Respondent has shown that it made preparations to use the Domain Name in connection with a bona fide offering of goods or services under a different trade mark owned by a third party (BUFFALO for data storage equipment). The Panel finds that this qualifies as a legitimate interest under article 3.1 of the Regulations. This finding is not altered by the fact that the Domain Name was not in actual use at the time the Complainant sent its first request for transfer of the Domain Name to the Respondent, because the Respondent has sufficiently shown that:
- it has been operating a web shop (“www.tcshop.nl”) in a time period starting well before the commencement of the dispute, at which it offers for sale a wide of variety products (including hardware) of different brands in the area of Wireless Networking, Voice over IP, VPN-solutions and data storage;
- not only did it register the Domain Name, but well before the commencement of the dispute it also registered “shop.nl”- domain names for other brands that are relevant in connection with the aforementioned commercial activities, e.g. <yealinkshop.nl> and <grandstreamshop.nl>;
- BUFFALO appears to be an established brand for data storage equipment, including so-called Network Attached Storage solutions;
- it had a bona fide intention to use the Domain Name for a bona fide offering of products under the BUFFALO trade mark owned by Melco Holdings, Inc., a holding company for the Japan-based Buffalo Group and has been making actual preparations to develop various web shops (referred to by the Respondent as “niche web shops”) under the aforementioned domain names for computer and/or networking equipment, as is evidenced by a letter dated February 1, 2012 (before the first notice of the dispute) from its service provider (“Internet en Marketing Bureau”) MediaCT, which includes a confirmation for the realisation of a web shop specifically for BUFFALO NAS equipment under the Domain Name.
Moreover, the Respondent can now be considered to be making use of the Domain Name for a bona fide offering of goods.
In asserting bad faith on the part of the Respondent, the Complainant invokes established UDRP case law that a reseller of branded goods can be making a bona fide offering of goods or services and thus have a legitimate interest in the domain name if the use fits certain requirements, also known as the Oki Data criteria (see in this respect Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903).1 These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trade marked goods and the site accurately disclosing the registrant’s relationship with the trade mark owner. The respondent must also not try to corner the market in domain names that reflect the trade mark.
It should be noted at this point that, whether or not the Respondent’s use of the Domain Name would comply with the Oki Data requirements, it is highly questionable this would be a relevant factor for the present dispute.2 The Respondent’s compliance with the Oki Data requirements could be a relevant issue if the underlying Complaint would have been filed by Melco Holdings, Inc., who owns the BUFFALO trade mark for the BUFFALO NAS equipment, but it is not relevant in relation to a different BUFFALO trade mark like the one owned by the Complainant (cf. article 6:163 of the Dutch Civil Code which sets forth that there is no obligation to repair the damage on the ground of a tortious act if the violated standard of behaviour does not intend to offer protection against damage as suffered by the injured person (Schutznorm doctrine).
It is also in view of this doctrine that the Panel does not find it relevant whether or not the Respondent has ever received any authorization or license from the trade mark owner for the BUFFALO NAS equipment or whether or not the Domain Name improperly suggests that the website operated under it is the official website of the respective trade mark owner or of acknowledged and/or authorised affiliates.
Also, because the Respondent has sufficiently shown that it makes a bona fide offering of branded products of other hardware manufacturers, the Panel cannot follow the Complainant in its view that the Respondent’s strategy to register many third-party trade mark-based domain names to divert Internet users to its web shop as such reflects bad faith, or that there is any other kind of use in bad faith.
The Complainant has not presented any other evidence that undermines the bona fides of the Respondent’s use. Accordingly, the Panel finds that the Respondent has a legitimate interest in the Domain Name.
In connection with the element of rights or legitimate interests, the Complainant has also argued that the Respondent lacks rights or legitimate interests because it made an offer for the Complainant to buy the Domain Name for a substantial price. It indeed appears that, through its legal counsel, the Respondent offered to sell the Domain Name for a sum of EUR 10,000. In the opinion of the Panel, this fact could have been a relevant factor if there had been no or insufficient evidence of a legitimate interest on other grounds. However, given the fact that the Respondent already had a legitimate interest before it offered the Domain Name for sale, the mere fact that such an offer had been made by the Respondent in the course of settlement negotiations, does not by itself lead to a finding of absence of rights or legitimate interests (see, e.g., Doka Nederland B.V. v. Media Village B.V., WIPO Case No. DNL2010-0009).
For the above reasons and on the evidence presented, the Panel finds that the Complainant has failed to establish that the Respondent has no rights or legitimate interests in the Domain Name for purposes of the Policy. Accordingly the Complaint fails.
In light of the above finding of a legitimate interest through bona fide use, it is unnecessary for the Panel to make a separate assessment with regard to the third element.
For all the foregoing reasons, the Complaint is denied.
Tjeerd F.W. Overdijk
Panelist
Date: January 7, 2013
1 This decision has been confirmed to be of relevance for the Regulations inter alia in Seiko EPSON Corporation v. ANEM Computers / ANEM, WIPO Case No. DNL2010-0024 (regarding inter alia the domain name <deepsonspecialist.nl>).
2 If this Panel were called upon to apply the Oki Data test in this context, it would reach the following conclusions, based only on the record of the present case and without prejudice to any formal determinations to be made.
Although the Respondent does not claim to be (and may in fact not be) an authorized reseller of BUFFALO NAS equipment, it is using the web shop at the Domain Name to sell products under this brand for which the rights of the owner of the BUFFALO trade mark have been exhausted. The website does not claim any specific relationship with the owner of the BUFFALO trade mark for the BUFFALO NAS equipment. The website discloses that the Respondent is the website owner and that the products are sold by the Respondent and not by the trade mark owner Melco Holdings.
The Respondent has not claimed to be an official or authorized reseller and the Complainant has argued that this would be a relevant factor in connection with the purported legitimate interest. However, the predominant view amongst UDRP panels is that the Oki Data criteria are capable of applying regardless of whether or not a respondent is an authorised distributor (Volvo Trade mark Holding AB v. Auto Shivuk, WIPO Case No. D2005-0447; Daimler AG v. William Wood, WIPO Case No. D2008-1712; IVECO S.p.A. v. Zeppelin Trading Company Limited, WIPO Case No. D2008-1725; ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc., WIPO Case No. D2008-0936; Magma Products Inc. v. Herb Halling, WIPO Case No. D2007-0995; Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227).
As regards the requirement that the site must accurately disclose the registrant’s relationship with the trade mark owner, the Panel notes that the Domain Name is used to link through to a page on the website of TC Shop (“www.tcshop.nl/advanced_search_result.php?keywords=buffalo”) that may be considered to sufficiently disclose that the Respondent is the website owner and that the products are sold by the Respondent and not by the Buffalo Group (or Melco Holdings) who owns the trade mark BUFFALO for BUFFALO NAS equipment.
Lastly, the Respondent also cannot be considered to be trying to corner the market in domain names that reflect the trade mark of the Complainant.