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WIPO

WIPO Arbitration and Mediation Center

ARBITRATION AWARD

E-Plus Mobilfunk v. W. Parami

Case No. WIPO2007NL26

In an arbitration
under the Regulations on
.nl Domain Names
between:

E-Plus Mobilfunk GmbH & Co. KG
Germany

(Plaintiff)

and

W. Parami
The Netherlands

(Defendant)

Arbitration Tribunal

Mr Remco M.R. van Leeuwen

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 E-Plus Mobilfunk GmbH & Co. KG (the Plaintiff) and W. Parami (the “ Defendant”) concerning the domain name <vibe-mobile.nl>.

 

1. The Parties

The Plaintiff, E-Plus Mobilfunk GmbH & Co. KG, is incorporated under the laws of Germany, with its registered office in Düsseldorf, Germany, represented by Stibbe Lawyers in Amsterdam, The Netherlands.

The Defendant, W. Parami, is a natural person residing in Rotterdam, The Netherlands. The Defendant did not appoint a representative.

 

2. The Domain Name and Participant

The domain name in dispute is <vibe-mobile.nl> (the “Domain Name”). The Participant is Active 24, with its registered office in Amsterdam, The Netherlands.

 

3. Procedural History

The Complaint was received by the WIPO Arbitration and Mediation Center (the Center) by e-mail on December 17, 2007, and in hardcopy on December 19, 2007.

The Center verified that the Complaint met the formal requirements of Article 7 of the Regulations. The Arbitration Tribunal agrees with the Center’s assessment that the Complaint is in compliance with the formal requirements.

The Center formally notified the Defendant of the Complaint and the proceedings commenced on December 24, 2007 in accordance with Articles 5.5, 7.1 and 7.3 of the Regulations.

The Defendant reacted to the notification of the Complaint (on other matters than its substance) by e-mail of December 27, 2007 and the Center acknowledged the receipt of the Defendant’s e-mail on December 28, 2007.

No Statement of Defence was submitted to the Arbitration Tribunal by the Defendant. The notification of Defendant’s default was communicated to Parties on January 14, 2008.

In accordance with Article 10.11 of the Regulations, the Center appointed Remco M.R. van Leeuwen as sole Arbitrator on January 24, 2008.

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.

 

4. Factual Background

The Plaintiff is the owner of the Benelux trademark VYBE MOBILE, which was filed on September 25, 2006 and registered on December 7, 2006 for among others electrical and scientific apparatus (class 9), advertising and business services (class 35), communications and services (class 38), education and entertainment services (class 41) and scientific and technological services (class 42).

According to the verification provided by and the Whois of SIDN, the Domain Name was registered on July 8, 2005.

 

5. Parties’ Contentions

Plaintiff

The Plaintiff contends that:

- the Defendant as the holder of the Domain Name infringes on the Plaintiff’s Benelux trademark VYBE MOBILE;

- the Defendant’s current website “www.vibe-mobile.nl” was created on February 11, 2007, therefore after the application date of the Benelux trademark VYBE MOBILE on September 25, 2006, which was substantiated by an exhibit that was submitted by the Plaintiff;

- the infringing use of the Domain Name by the Defendant started after the application date of the Plaintiff’s trademark, since according to the Plaintiff the “Record last Updated” of September 26, 2006 mentioned in the Whois of SIDN, usually means the date of transfer of a domain name to the current domain name holder, in this case the Defendant.

The Plaintiff therefore requests the Arbitration Tribunal to find that:

1. 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;

2. the Defendant shall be prohibited from registering domain names similar to the contested Domain Name in the future, liable to a penalty of EUR 50.000,-;

3. the Defendant shall pay the procedural costs, including the Plaintiff’s costs of legal assistance which at the time of filing of this Complaint amount to approximately EUR 1.000,-;

4. 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.

Defendant

The Defendant did not submit a Statement of Defence.

 

6. Discussion and Findings

Jurisdiction and Applicable law

The Defendant registered the Domain Name on July 8, 2005. Pursuant to Article 21.2 of the Regulations for registration of .nl domain names of SIDN, the Defendant thereby submitted itself to these arbitration proceedings. SIDN has submitted records confirming the applicability of these arbitration proceedings to 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 Arbitration Tribunal has jurisdiction to render an arbitration award under Article 11.2 of the Regulations.

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 Arbitration Tribunal is Amsterdam, the Netherlands.

Defendant default

As stated in paragraphs 3 and 5 of this award, the Defendant failed to file a Statement of Defence. Article 9.4 of the Regulations provides that, should the 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.

Findings

Upon review of the case file, the Arbitration Tribunal holds that the Plaintiff has sufficiently demonstrated its rights in the Benelux trademark VYBE MOBILE. The Arbitration Tribunal also finds that the Domain Name is highly similar to the Benelux trademark VYBE MOBILE. Although the Arbitration Tribunal deems that the Plaintiff’s substantiation of its claim of trademark infringement leaves to be desired and not all of the Plaintiff’s contentions are relevant to the evaluation of this case, taking into account Article 2.20, section 1 of the Benelux Convention for Intellectual Property (“BCIP”) and the absence of any defence of the Defendant, the Arbitration Tribunal does not consider the Complaint to be baseless. Accordingly, the Arbitration Tribunal grants the remedy and orders that, as requested, the Plaintiff shall become the holder of the Domain Name instead of the Defendant.

With respect to the remaining remedies requested by the Plaintiff, the Arbitration Tribunal interprets 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 the Plaintiff.

In accordance with Article 3 of the Regulations, the Plaintiff has requested that the Defendant shall be prohibited from registering domain names similar to the contested domain name <www.vibe-mobile.nl> in the future, liable to a penalty of EUR 50.000,-. Unlike a trademark, a domain name is not a right which can be infringed as such, so the Arbitration Tribunal holds this claim insufficiently precise and, within its discretion under Article 9.4 of the Regulations, declines to issue such prohibition. However, the Arbitration Tribunal understands that the Plaintiff seeks a remedy that such future domain names shall not infringe the Benelux trademark VYBE MOBILE, which claim shall be granted. The Arbitration Tribunal sets the penalty at a lesser amount and subject to a maximum.

Taking into account all circumstances, including the limited amount requested, the Arbitration Tribunal shall award the procedural costs, including the costs of legal assistance in the amount of EUR 1.000,-, which the Plaintiff had demanded, on the basis of Article 28.8 of the Regulations.

The Plaintiff has also requested that the Arbitration Tribunal declares the award enforceable regardless of whether an appeal against the award is lodged. Considering the default nature of this case and taking into account the absence of specific arguments for this request in the Complaint, the Arbitration Tribunal, within its discretion under Article 9.4 of the Regulations, declines to issue such declaration.

 

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. E-Plus Mobilfunk GmbH & Co. KG shall become the holder of the domain name <vibe-mobile.nl > instead of W. Parami;

2. this award shall replace the form required by SIDN for the change of the domain name holder;

3. W. Parami shall not register domain names which infringe the Benelux trademark VYBE MOBILE of E-Plus Mobilfunk GmbH & Co. KG in the future, subject to a penalty of EUR 5.000,- for each domain name registered in violation of this prohibition, with a maximum of EUR 50.000,-;

4. W. Parami is ordered to pay E-Plus Mobilfunk GmbH & Co. KG a total amount of EUR 3.250,-, which includes EUR 2.250,- for the administration costs of these proceedings and the Arbitration Tribunal’s fees, and EUR 1.000,- for legal assistance;

5. All other claims are rejected.

 

Remco M.R. van Leeuwen
Single Arbitrator
Amsterdam

Dated: February 7, 2008

 

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