The Complainant is Pythian Group Inc. of Ottawa, Canada, internally represented.
The Respondent is Alpha Labs B.V. of Venlo, the Netherlands, internally represented.
The disputed domain name <pythian.nl> is registered with SIDN through Realtime Register.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2012. On November 21, 2012, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain name. On November 21, 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 November 26, 2012. In accordance with the Regulations, article 7.1, the due date for Response was December 16, 2012. The Response was filed with the Center on December 14, 2012.
On December 24, 2012, SIDN commenced the mediation process. On January 22, 2013, SIDN informed parties that the dispute had not been solved in the mediation process.
The Center appointed Willem J.H. Leppink as the panelist in this matter on February 1, 2013. 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.
The Panel reviewed the matter and concluded that certain essential information was missing in order for the Panel to make a reasoned decision. Accordingly, at the Panel’s request, the Center, on February 8, 2013 issued the Administrative Panel Procedural Order No. 1 (the “Procedural Order”) with specific instructions to SIDN, the Complainant and the Respondent.
The Panel requested SIDN to provide the historical data on the registration of the Domain Name, i.e. to list inter alia the names of any registrants since the first date of registration, January 22, 2009, and the dates of the respective changes of registrant. SIDN submitted the requested information on February 14, 2013.
The Panel requested the Complainant to provide information on the date on which the Complainant started operating under the name “Pythian” and any entitlement on its part to trademarks under Canadian law. The Complainant filed its submission on February 8, 2013.
According to the Dutch commercial register (Handelsregister) the Respondent has registered the additional trade name “Pythian”. The Panel therefore requested the Respondent to provide (a) information on Pythian B.V. (as this entity does not seem to exist or to have existed); (b) information on when the Respondent has started use of the trade name Pythian; (c) historical data about the addition of the trade name Pythian to the Respondent’s registration at the Dutch commercial register. The Respondent’s submission was received by the Center on February 12, 2013.
Subsequently the Panel decided that the due date for the decision would be extended, which ultimately lead to the date of the present decision. Neither party has used the opportunity to reply to the submissions of the other party.
The following facts are undisputed.
The Complainant is owner of the Community Trade Mark (CTM) trademark (word) PYTHIAN, with registration number 9504903, filed on November 8, 2010 and registered on May 20, 2011 (“CTM Registration”). The CTM Registration covers services in classes 35 and 42. The Complainant is also owner of the Canadian trademark (word) PYTHIAN, filed on March 28, 2001 and registered on July 8, 2003 (“Canadian Trademark”).
The Domain Name was registered in the name of DBA Solutions on January 22, 2009. The Domain Name was registered in the name of Pythian B.V. on August 3, 2009. As of July 3, 2012, the Respondent is the registrant of the Domain Name.
Pythian B.V. is a limited liability company that was affiliated to the Respondent. The shareholders of the Respondent at some point in time decided to transfer the activities of Pythian B.V. to the Respondent and added the trade name Pythian as additional trade name to the commercial register registration of the Respondent.
The Complainant has submitted a poorly substantiated, extremely abbreviated Complaint with some annexes. The substantiation to why the first element under article 2.1 of the Regulations would be met consisted of 8 words, for the second element 50 words and for the third element 36 words.
Based on the Complaint, the annexes and the submission after the Procedural Order, the Panel understands that the Complainant, insofar as relevant, contends the following.
The Complainant is The Pythian Group Inc., a federally-incorporated Canadian corporation, which is operating under the name “Pythian” since September 8, 1997. The Complainant is a global brand in database infrastructure management. It is the owner of the CTM Registration and the Canadian Trademark.
Pythian B.V.’s online presence is limited to a LinkedIn company page that exists in bad faith to confuse buyers.
When Internet users enter the Domain Name <pythian.nl>, they are redirected to the website “www.alabs.nl” which seems to be the website of the Respondent. Among the services the Respondent is offering, there is competing “remote support”. These services of the Respondent are within the same classes, 35 and 42, of the CTM Registration.
The Respondent has informed the Complainant by e-mail of November 20, 2009 that the Complainant could buy the Domain Name for EUR 60,000.
The Panel understands that the Respondent, insofar as relevant, contends the following.
The Respondent, through its shareholders, incorporated Pythian B.V. on May 25, 2009, as indicated by the registration at the Dutch commercial register. Due to the extra costs of having two separate companies, the Respondent decided to move all activities of Pythian B.V. to Alpha Labs B.V. Although the company Pythian B.V. does not exist anymore, the trade name Pythian was kept, but now as a trade name of Alpha Labs B.V.
The CTM Registration was applied for by the Complainant after the Respondent registered the Domain Name. At the time the Respondent registered the Domain Name, the Respondent was not infringing any trademarks.
The LinkedIn company page referring to Pythian B.V. has been removed as of December 12, 2012.
Reference to <alabs.nl> has been removed as of November 26, 2012. Future use of the website does not interfere with the Complainant’s trademark in any way.
The Respondent was not aware of the existence of the Complainant before the Complainant contacted the Respondent. The Respondent felt that it was entitled to compensation for the expenses the Respondent made to start up Pythian B.V.
The Domain Name is still actively used for activities that in no way are related to the Complainant.
The Respondent feels the allegations are false and that it is entitled to use the Domain Name.
According to article 2.1 of the Regulations, for this Complaint to be successful in relation to the Domain Name the Complainant must prove that:
(a) the Domain Name is identical or confusingly similar to a trademark or a trade name, protected under Dutch law in which the Complainant has rights; or 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 Respondent has no rights or legitimate interests in respect of the Domain Name; and
(c) the Domain Name has been registered in bad faith or is being used in bad faith.
The Panel finds that the Domain Name is identical to the CTM Registration. In the assessment of identity or confusing similarity between the Domain Name and the CTM Registration, the country code Top Level Domain “.nl” is not relevant.
The Complainant has therefore established the first element of article 2.1 of the Regulations.
Article 3.1 of the Regulations provides a non-exhaustive list of circumstances in which the Respondent could demonstrate rights or legitimate interests in the Domain Name:
(a) before having any notice of the dispute, the registrant made 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
(b) the registrant as an individual, business, or other organization is commonly known by the domain name; or
(c) the registrant is making a legitimate noncommercial use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish or otherwise damage the relevant trademark, trade name, personal name, name of a Dutch public legal entity or name of an association or foundation located in the Netherlands.
On the record before it, the Panel finds that the Respondent has rights or legitimate interests in the Domain Name.
It appears that, before any notice of the dispute, the Respondent, through its shareholders, incorporated Pythian B.V. and registered “Pythian” as a trade name. In confirmation or anticipation of the use of the trade name, the Domain Name was registered to Pythian B.V. after its incorporation. The activities, trade name and Domain Name have been transferred from Pythian B.V. to the Respondent, an affiliated company, in 2012.
In the absence of any further substantiation to the contrary by the Complainant, the Panel has to assume that Pythian B.V and subsequently the Respondent have been legitimately using, or preparing to use, before any notice of the dispute, the trade name Pythian, as part of which effort it registered the Domain Name, and therefore have a legitimate interest to reflect this trade name in the Domain Name. The fact that a certain company with rights in a name exists in one country does not necessarily prevent another company from using that trade name elsewhere. In the absence of indications in the record that the Respondent chose “Pythian” to capitalize of Complainant rights, the Panel therefore finds that the Respondent has demonstrated rights or legitimate interests in the Domain Name.
The Complainant has therefore not established the second element of article 2.1.
Since the Respondent has a legitimate interest in the Domain Name, it is not necessary for the Panel to consider whether the Domain Name was registered or is being used in bad faith. However, the Panel in any event finds on the record of this case that the Domain Name was not registered or used in bad faith.
The Complainant has only substantiated its bad-faith claim by stating that in November 2009 representatives of the Respondent/Pythian B.V. stated to be prepared to sell the Domain Name to the Complainant for EUR 60,000. In light of the undisputed facts that the Respondent started to use the trade name Pythian and registered the Domain Name months before the Complainant contacted the Respondent and more than a year before the Complainant filed the application that led to the CTM Registration, it cannot be assumed without further evidence that the Respondent acted in bad faith when registering or using the Domain Name.
The third element of article 2.1 has therefore not been met.
For all the foregoing reasons, the Complaint is denied.
Willem J.H. Leppink
Panelist
Date: March 20, 2013