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WIPO

 

WIPO Arbitration and Mediation Center

ARBITRATION AWARD

Keukenconcurrent Nederland B.V. v. Daniel Fuehrer

Case No. WIPO2007NL6

In an arbitration proceeding in accordance with the Regulations for Arbitration on .nl
Domain Names (the “Regulations")
between:

Keukenconcurrent Nederland B.V.
Havenweg 30
5145 NJ Waalwijk
The Netherlands

(Plaintiff)

and

Daniel Fuehrer
Gustav Heinemannstrasse 15a
35440 Linden
Germany

(Defendant)

Arbitration Tribunal
Mr. Tjeerd F.W. Overdijk
Amsterdam

This arbitration award is rendered by me as arbitrator under the Regulations for Arbitration on .nl Domain Names (the “Regulations") of the Stichting Internet Domeinnaamregistratie Nederland (“ SIDN"), in a dispute between Keukenconcurrent Nederland B.V. (the “Plaintiff") and Daniel Fuehrer (the “Defendant") concerning the Domain Name <keukenconcurent.nl>.

 

1. The Parties

The Plaintiff, Keukenconcurrent Nederland B.V., is a company incorporated under the laws of The Netherlands, with its registered office in Waalwijk, The Netherlands, represented by Mr. C.J. van Dijk, Attorney-at-Law (“advocaat") in Ede, the Netherlands.

The Defendant in this proceeding is Daniel Fuehrer, Linden, Germany. The Defendant did not appoint a representative.

 

2. The Domain Name and Participant

The dispute concerns the Domain Name <keukenconcurent.nl> (the “Domain Name"). The Participant through which the Domain Name is registered is EuroDNS, Leudelange, Luxembourg.

 

3. Procedural History

The Complaint was received by the WIPO Arbitration and Mediation Center on June 18, 2007 per e-mail and received in hardcopy on June 26, 2007, by the Center.

On June 19, 2007, the Center sent an acknowledgement of receipt to the Plaintiff. On June 19, 2007, the Center sent a registry verification request to SIDN to verify the information submitted by the Plaintiff with regard to the Domain Name. On June 22, 2007, SIDN transmitted its verification response confirming that the Defendant is listed as the registrant and providing the contact details. On July 6, 2007, the Center sent a Complaint Deficiency Notification to the Plaintiff for non-compliance with article 17.2 of the Regulations, and gave the Plaintiff a term of five calendar days from the date of the aforementioned Complaint Deficiency Notification to cure the above deficiency in accordance with article 7.2 of the Regulations. After the Plaintiff requested the Center on July 26, 2007 for a longer term to cure the above deficiency, the Plaintiff was allowed to comply with article 17.2 of the Regulations ultimately on August 15, 2007. The amended Complaint submitted by the Plaintiff was received by the Center per email on August 10, 2007 and received in hardcopy on August 15, 2007. On August 17, 2007, the Center notified the Defendant of the Complaint and the Commencement of the Arbitration in accordance with articles 5.5 and 7 of the Regulations and set the deadline for submission of the Statement of Defence on September 6, 2007.

On September 10, 2007, the Center notified the parties that the Defendant had failed to comply with this deadline.

The Arbitration Tribunal agrees with the Center’s assessment concerning the Complaint’s compliance with the formal requirements in accordance with the requirements of the Regulations and that payment has been properly made.

In accordance with article 10.11 of the Regulations, the Center appointed Tjeerd F.W. Overdijk as sole arbitrator on September 18, 2007. 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 Center to ensure compliance with article 10.9 of the Regulations.

 

4. Factual Background

Trademark and Trade Name Rights

The Plaintiff is the owner of a Benelux word/figurative trademark KEUKENCONCURRENT with registration number 788776, registered and published on January 13, 2006, for the classes 11 (i.a. apparatus for lighting, heating, cooking, refrigerating, water supply) 19 (i.a. building materials and movable constructions (mainly non-metallic or non-metallic) i.a. for use for construction, maintenance and repair of kitchens), 20 (furniture, mainly kitchen furniture and parts thereof, as far as not included in other classes) 35 (i.a. commercial mediation in purchase and sale of kitchens), 37 (assembly, furnishing, installation, maintenance and repair of kitchens), hereinafter referred to as the “Trademark".

Through research ex officio it has become clear to the Arbitration Tribunal that the Plaintiff operates its business for the sale and assembly of kitchens and accessories under the trade name “ Keukenconcurrent" since 1998. Currently, the Plaintiff has a network of over 30 outlets in the Netherlands.

Domain Name

The Domain Name has been registered by the Defendant (or the previous owner of the Domain Name) on June 29, 2005.

 

5. Parties’ Contentions

A. Plaintiff

The Plaintiff contends that on March 13, 2007:

- the Domain Name was linked directly to the website “www.sedoparking.de/keukenconcurent.nl". The Arbitration Tribunal understands from the Complaint that the website “www.sedoparking.de" facilitates the service of ‘parking’ domainnames. Through linking a domain directly to a website that delivers such a service the registrant can profit from his idle domain name by offering advertising space.

- the website “www.sedoparking.de/keukenconcurent.nl" showed various hyperlinks to commercial sites related to competitors of the Plaintiff that offer kitchens and kitchen equipment.

- the website “www.sedoparking.de/keukenconcurent.nl" indicated these hyperlinks as ‘sponsored links’.

The Plaintiff is the owner of the domain name <keukenconcurrent.nl>, which has been registered on January 12, 1999, on which a range of kitchens of various brands are offered. The Plaintiff contends, in summary, that the Defendant, by registering the Domain Name <keukenconcurent.nl> as a misspelt version of the Trademark, has wilfully infringed on the Benelux trademark rights and tradename rights of the Plaintiff (articles 2.20, s. 1 ss. b and d BIPT; article 5 Dutch Tradename Act (“TnA")). The Plaintiff contends that this usage may lead to confusion amongst the public, with the risk of association with the Trademark. Furthermore, the use of this domain name, according to the Plaintiff, can be considered to be ‘digital’ usage of a trade name. By using the “digital trade name" “Keukenconcurent" which is almost identical to the trade name “Keukenconcurrent" the Defendant contravenes articles 5 and 5a of the TnA. The plaintiff contends that use of the misspelt tradename is a wilful attempt to cause confusion amongst the public. The Plaintiff requests the Arbitration Tribunal to decide that:

1. the Plaintiff shall become holder of the Domain Name instead of the Defendant and 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 Domain Name in the future, liable to a penalty of € 10.000 on each occasion that the Defendant contravenes this prohibition;

3. the Defendant shall pay the costs of the procedure, including the Plaintiff’s costs of legal assistance.

B. Defendant

The Defendant did not submit a Statement of Defence pursuant to article 9.1 of the Regulations.

 

6. Discussion and Findings

Jurisdiction and Applicable Law

The Defendant has registered the Domain Name on June 29, 2005. Pursuant to article 21 of the Registration Regulations of SIDN, the Defendant thereby submitted to these arbitration proceedings in relation to claims by third parties that the registration and/or use of the registered Domain Name by the Domain Name Holder infringes a Benelux trademark right or Dutch trade name right. SIDN has submitted records confirming the applicability of these Regulations to the Domain Name. The Plaintiff’s submission of the Complaint thus constitutes a valid arbitration agreement between the parties.

Considering this, the Arbitration Tribunal holds that it has jurisdiction to render an arbitration award under article 11.2 of the Regulations, noting that the legal consequences of these proceedings are at the free disposal of the parties in the sense of article 1020 s. 3 of the Dutch Code of Civil Procedure.

Language and Place of the Proceedings

As the Defendant is not registered or resident in the Netherlands and, to the knowledge of the Tribunal, has no knowledge of the Dutch language, the language of the proceedings is English pursuant to article 17.2 of the Regulations.

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.

Procedural Considerations

As stated in paragraph 3 above, which summarizes the procedural history, the Defendant has failed to submit a Statement of Defence. Pursuant to article 9.4 of the Regulations the procedure shall nevertheless proceed and the Arbitration Tribunal shall rule on the basis of the Complaint. It also follows from article 9.4 of the Regulations 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.

Substantive Discussion

Reference is made to the facts and contentions summarized in paragraphs 4 and 5 of this award.

The Trademark has been registered in the form of a logo/device mark. The Plaintiff does not own a word mark. Given the fact that the Plaintiff runs its business since 1998, this raises the question whether the Plaintiff is able to claim trademark protection for the word “ keukenconcurrent". Moreover, a further question is whether the Domain Name could be said to infringe the Trademark, as the Domain Name has been registered well before the registration date of the Trademark.

However, given the widespread and longstanding use of the name “Keukenconcurrent", both as regular trade name and as domain name, the Plaintiff made sufficiently plausible that it has acquired trade name rights in the name “Keukenconcurrent".

The Defendant made use of the Domain Name for the purpose of directly linking it to a website containing various hyperlinks to websites of companies (competitors of the Plaintiff) offering kitchens and kitchen-related products and services. Such use of a domain name may be viewed as use of a trade name for a business selling kitchen equipment or kitchen appliances or promoting the sale of kitchen equipment and appliances. As it has been argued by the Plaintiff and taking into account the Plaintiff’s assertions and evidence, such use of the Domain Name can be said to infringe and/or to create confusion with the trade name of the Plaintiff.

Therefore, the Arbitration Tribunal does not consider the Complaint to be baseless. The mere registration by Defendant of the Domain Name, misspelling the word ‘keukenconcurrent’ by just one letter, indicates that the defendant deliberately seeks to take advantage of the possibility that consumers who wish to visit the website of the Plaintiff accidentally, through typographical error, arrive at the website under the Domain Name. The present case therefore clearly presents an example of ‘typosquatting’ which can be objected to under the Arbitration Rules for the Top Level Domain “ .nl". Accordingly, the Arbitration Tribunal will grant the remedy requested by the Plaintiff and will order that the Plaintiff shall become holder of the Domain Name instead of the Defendant. The request to declare that the award shall replace the form required by SIDN for the change of the Domain Name Holder will be granted as it is in accordance with article 3:300 of the Dutch Civil Code and presents an effective means for execution of the award, for which the Plaintiff has a reasonable interest given the fact that the Defendant did not submit a Defence.

With regard to the remaining remedies requested by the Plaintiff, the Arbitration Tribunal finds as follows.

In accordance with article 9.4 of the Regulations the Arbitration Tribunal notes that it is not held to grant each and every one of the remedies sought in the same manner as requested by the Plaintiff. 1

The Plaintiff has requested that the Defendant be prohibited from registering domain names similar to the domain name <keukenconcurrent.nl> in future. Regardless of the fact that the domain name in the Plaintiff’s prohibition request, presumably unintentionally, does not correspond to the exact domain name in this case (including one letter “r" only), 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. 2 The Tribunal understands however that the Plaintiff seeks a remedy that such future domain names shall not infringe its trade name, which claim will be granted.

Considering that the award is rendered in favour of the Plaintiff and taking into account the undisputed facts concerning the Defendant’s conduct as described in the Complaint, the Arbitration Tribunal awards the Plaintiff’s claim for payment by the Defendant of the administration costs and of the Arbitration Tribunal fee in a total amount of € 2.250. On the Plaintiff’s claim for payment by the Defendant of the costs of the Plaintiff the Arbitration Tribunal awards an amount of € 1.500, which the Arbitration Tribunal considers appropriate in view of the limited complexity of the case.

 

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. the Plaintiff Keukenconcurrent Nederland B.V. shall become the holder of the Domain Name <keukenconcurent.nl> instead of the Defendant Daniel Fuehrer;

2. with respect to the deed required by SIDN for the change of the Domain Name Holder the Arbitration Tribunal declares that, to the extent necessary, this award shall replace such deed;

3. the Defendant is prohibited from registering “.nl" domain names which are confusingly similar to the trade name “Keukenconcurrent" as of the date of notification of this award, subject to a penalty of €2.500 for each domain name registered in contravention of this prohibition;

4. the Defendant shall pay to the Plaintiff a total amount of € 3.750 (being the administration costs of these proceedings and the Arbitration Tribunal’s fees in the total amount of € 2.250 and € 1.500 as reasonable costs of the Plaintiff’s legal representation);

5. all other and further claims made by the Plaintiff in this procedure are denied.

Tjeerd F.W. Overdijk
Sole Arbitrator
Amsterdam

Dated: October 8, 2007

1 See Sublimsport Limited v. Henrik Olsen, Domain Name Case No. WIPO2006NL14, dated: December 1, 2006, Volkswagen A.G. v Princa B.V., Domain Name Case No. WIPO2006NL10, dated September 12, 2006, and Consitex S.A.. Lanificio Ermenegildo Zegna & Figli S.p.A. Ermenegildo Zegna International N.V. v. Mattia Gerolanda, Domain Name Case No. WIPO2003NL1, dated October 17, 2003.

2 See General Cardiac Technologie Inc. v. Exim Holland B.V., Domain Name Case No. WIPO2007NL3, dated June 12, 2007 Just Eat A/S v. Roberto da Silva., Domain Name Case No. WIPO2007NL1, dated April 24, 2007, Volkswagen A.G. v Princa B.V., Domain Name Case No. WIPO2006NL10, dated September 12, 2006.

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