WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vereniging Bovag V. Mr. F. Boersma.
Case No. D2001-0222
1. The Parties
The Complainant is VERENIGING BOVAG a corporation organised under the laws of the Netherlands, having its principal place of business in Bunnik (P.O. Box 1100, 3980 DC) and represented by Mrs. G.M. Bergman, legal counsel, by Mrs. W. Veldhuijzen van Zanten, attorney-at-law, (Boekel De Nerée, P.O. Box 2508, 1000 CM Amsterdam), ("the Complainant").
The Respondent is F. BOERSMA, living and officially registered at Fluitekruid 2, 1391 TJ Abcoude, the Netherlands ("the Respondent").
2. The Domain Name and Registrar
The domain name at issue is <bovag.org>. The home page announces that this will in the short term feature the website of the Bond voor Agrariërs, Keurenplein 36, 1069 CD Amsterdam, Netherlands, tel. 020 – 4100974, fax 020 – 4100975.
The Registrar is Network Solutions, Inc. 505 Huntmar Park Drive, Hundon, Virginia 20170-5139, United States of America.
3. Procedural History
A complaint was submitted electronically with the World Intellectual Property Organisation Arbitration and Mediation Center (The "WIPO Center") on February 12, 2001. The hardcopy under cover of a letter of the same date was received on February 19 , 2001 ("the Complaint"). An Acknowledgement of Receipt was sent by the WIPO Center to the Complainant dated February 14, 2001.
On February 15, 2001, a Request for Register Verification was transmitted to the Registrar. On February 20, 2001, the Registrar confirmed by e-mail that the domain name <bovag.org> is registered with NSI and that the Respondent is the current registrant of that domain name. The Registrar also forwarded the requested Who-Is details.
On February 22, 2001, a Notification of Complaint and Commencement of Administrative Proceedings (the "Commencement Notification") was transmitted to the Respondent and to the Bond voor Agrariërs mentioned on the homepage, setting a deadline of March 14, 2001, for the response to the Complaint.
On March 14, 2001, no response had been received from the Respondent by the WIPO Center.
On March 26, 2001, the WIPO Center sent the Notification of Appointment of the Administrative Panel and Projected Decision Date by email to the parties, in which Wolter Wefers Bettink was appointed as Sole Panelist. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemented Rules.
On April 4, 2001 the Panelist issued Administrative Panel Order No.1 allowing Complainant to file additional documents after which Respondent was allowed to file observations.
On April 9, 2001 Complainant filed a short Statement and 14 Annexes.
On April 19, 2001 the WIPO Center informed the Panelist that no observations had been received from the Respondent.
4. Applicable Rules
Paragraph 4a of the Policy directs that Complainant must prove each of the following:
(i) the domain name in issue is identical or confusingly similar to Complainant's trademark, and
(ii) Respondent has no rights or legitimate interest in respect of the domain name, and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4b of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of the domain name in bad faith for the purpose of paragraph 4a(iii) above.
Paragraph 4c of the Policy sets out, by way of example, three circumstances, each of which, if proven by Respondent, shall demonstrate Respondent's rights or legitimate interest to the domain name for the purpose of paragraph 4a(ii) above.
5. Parties’ contentions
The Complainant states that it owns various registrations of the trademark (logo) BOVAG which were registered in the Benelux in 1986 and 1990. Complainant currently has 12,000 members in the automotive industry who employ 75,000 people. According to an independent study submitted by Complainant, the total recognition percentage of the BOVAG logo is 97%. Similarly, 97% of the public recognised the trade name BOVAG which has been used by Complainant since 1930.
The grounds for the Complaint are:
(1) the domain name <bovag.org> is confusingly similar to the trademarks BOVAG in accordance with Paragraph 4a(i) of the Policy;
(2) the Respondent has no rights or legitimate interest in respect of the domain name <bovag.org> as provided in Paragraph 4a(ii) in connection with Paragraph 4c of the Policy. The Respondent registered the domain name on February 3, 2000;
Respondent in a conversation with Complainant’s counsel in December 2000 alleged that BOVAG was an abbreviation for ‘Bond voor Agrariërs’. Only in January 2001 did the domain name <bovag.org> turn out to connect to a web page announcing the start of a website of the ‘Bond voor Agrariërs’;
the ‘Bond voor Agrariërs’ is not registered with the Dutch Chamber of Commerce. At the address given (Keurenplein 36 in Amsterdam) a company called Yipico B.V. is registered whose director (a certain Bastiaan Roest) previously owned the domain name <bovag.com>. In WIPO Administrative Panel Decision D2000-0901, dated 8 November 2000, Mr Roest was ordered to transfer the domain name <bovag.com> to Complainant;
Complainant submits that Mr Roest, in that case, gave a different explanation for choosing <bovag.com> as a domain name:
"We are in preparation to set-up an internet e-commerce company by the name of BOVAG. This name comes out of the initials of all partners involved. Because of the lawsuit of vereniging BOVAG we had some delay. This [due] to the fact that Network solution has frozen the name during this legal procedure."
Respondent did not react to any of the communications of Complainant in January and February 2001;
Respondent does not have a proper license to use Complainant’s trademarks, nor has Respondent received permission from Complainant to register or use these trademarks in a domain name;
(3) the domain name <bovag.org> was registered in bad faith as provided in Paragraph 4a(iii) in connection with Paragraph 4b of the Policy because Respondent has registered the domain name (i) for the sole purpose of reselling it to the highest bidder; and/or (ii) to prevent Complainant from using the domain name. In addition, Complainant submits that by registering and using the domain name <bovag.org> the Respondent is infringing Complainant’s trademark and trade name rights, is misleading the general public and is trying to profit from the good reputation and standing of Complainant and its trademarks and trade names. Furthermore, Complainant submits that registration and use of the domain name (by Respondent) prevents Complainant from activating its own website under the top-level domain.org. Finally, Complainant submits that Respondent is, by registering and using the domain name intentionally attempting to create the impression that he is a member of Complainant or at least affiliated to Complainant;
Complainant submits that the BOVAG trademarks and trade name are well-known and that Respondent must have known of their existence when he registered the domain name;
Respondent in a telephone conversation in December 2000 offered to sell the domain name to Complainant for "a lot of money" and threatened to sell the name to "an American party" if Complainant was not prepared to pay;
Respondent has not reacted to any of the many other attempts of Complainant to contact him;
Respondent is obviously working together with or somehow connected to Bastiaan Roest, who was ordered in decision D2000-0901, dated November 8, 2000 to assign the domain name <bovag.com> to Complainant.
Since Respondent has not submitted a response to WIPO, Complainant’s contentions are not contested.
6. Due process
Where, as in this case, a Respondent does not submit a response and the file does not contain any communication from the Respondent, the rules of due process require the Panel to verify as much as possible that the Respondent is aware of the present proceedings. The Panel is satisfied, on the basis of the documents in the file, that this is the case.
A hard copy of the complaint, of the letter of Notification of Suspension of Proceedings and of the Additional Evidence were sent by the WIPO Center to the address of the Respondent mentioned under 1. above by courier and by e-mail, to the technical contact by courier and by e-mail and to the address mentioned on the home page under <bovag.org> (see 2. above) by courier and by fax (not successful).
The Panel therefore assumes that the Respondent has received these documents, but has chosen not to respond.
Complainant must provide evidence of all elements of Paragraph 4a. UDRP. Since a decision to transfer or cancel a domain name may have serious consequences for the domain name holder, the evidence should be sufficient in all respects to support such a decision. The absence of a response from Respondent, as in this case, does not discharge the Panel from its duty to establish that the evidence is sufficient.
a. Trademark rights
Complainant has provided copies of the trademark registration certificates and sufficient evidence that the trademark BOVAG is well known in the Netherlands.
b. Identical or confusingly similar
The UDRP does not provide specific guidance on the interpretation of the term ‘confusingly similar’. However, paragraph 15 (a) UDRP Rules provides that the Panel shall decide a complaint in accordance with "any rules and principles of law that it deems applicable".
As the trademarks involved are Benelux trademarks, while both parties are domiciled in the Netherlands, a dispute involving the trademarks and the domain name <bovag.org>, if brought before a competent Dutch court, would be judged in accordance with Benelux trademark law. Since the Benelux Trademark Act recognises the concept of ‘likelihood of confusion’ which is similar to the concept of ‘confusingly similar’ it seems appropriate in this case to use the case law interpretation of this concept as a guide for the interpretation of ‘confusingly similar’. In deciding whether, under the Benelux Trademark Act, there is a likelihood of confusion among the relevant public between a trademark and a domain name, all relevant circumstances have to be taken into account, in particular the distinctiveness of the trademark. As set out above, the BOVAG trademarks are well known. This implies that there is a greater likelihood of confusion between these trademarks and the domain name <bovag.org> than if the trademarks were not well known. Where the trademark is a logo (as are the BOVAG trademarks on which Complainant relies), Benelux trademark law requires that all elements are taken into account, including pictorial and decorative elements, when considering whether there is a likelihood of confusion. Furthermore, if a logo contains a dominating element, this will primarily determine the distinctiveness of the logo. In that case, the greater the similarity between that element and the domain names, the greater the likelihood of confusion. In this case, the logos consist of a picture and the stylized word BOVAG. In view of the visual prominence of the word BOVAG in the logo and of the fact that the trade name BOVAG is renown (it has been used since 1930), it is assumed that the distinctiveness of the logo lies primarily in the word BOVAG. In view of this and the fact that the BOVAG trademarks, as such, are well known, the conclusion must be that the domain name <bovag.org> is confusingly similar with those trademarks.
c. Rights or legitimate interests
Respondent apparently intends to use the domain name for a website for the Bond voor Agrariërs, as is evident from the current web page connected to the domain name. However, this web page was put up only after notification of the Complaint to Respondent, so that this intention does not qualify as an own right or legitimate interest as provided in Paragraph 4.a (ii) UDRP. Moreover, there is reasonable doubt that this Bond voor Agrariërs exists.
Since Respondent has not provided any counter evidence of an own right or legitimate interest, it must be assumed that Respondent has no such right or interest.
d. Bad faith
Complainant has provided evidence that the BOVAG trademarks are well known in the Netherlands. Although the fact that a trademark is well known is in itself insufficient evidence of bad faith it is an indication that Respondent was aware of the BOVAG trademarks when registering the domain <bovag.org>. Respondent has apparently offered the domain name for sale to Complainant for "a lot of money" and threatened to sell it to a third party if no agreement was reached. Together, these facts are sufficient evidence of the bad faith registration and use of the domain name by Respondent in accordance with Paragraph 4b (i) UDRP.
Other circumstances which indicate the bad faith of the Respondent are the fact that he has not responded (after an initial reaction by telephone in December 2000) to any of the communications of Complainant and has not submitted a Response in this case (in spite of being offered two opportunities), as well as his apparent connection to Bastiaan Roest, the losing Respondent in the <bovag.com> case (WIPO D2000-0901).
8. Findings and Decision
Under the UDRP, Complainant ‘must provide evidence’ of all three elements of Paragraph 4a. As set out above, the evidence provided is sufficient. The Panel therefore orders that the registration of the domain name <bovag.org> be transferred to Complainant.
Wolter Wefers Bettink
Dated: May 1, 2001