WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sara Lee/DE N.V. v. http://www.eurotier.com
Case No. D2002-1072
1. The Parties
The Complainant is Sara Lee/DE N.V., of Vleutensevaart, the Netherlands, represented by Erien Groot of SLDE Corporate Trademarks Department, of Utrecht, the Netherlands.
The Respondent is http://www.eurotier.com, of Missionof Mission, Canada.
2. The Domain Name and Registrar
The disputed domain name is <douweegberts.com> ("the Domain Name") registered with Tierra Net Inc., dba Domain Discover ("Domain Discover").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the the "Center") on November 22, 2002. On November 26, 2002, the Center transmitted by email to Domain Discover a request for registrar verification in connection with the Domain Name. On November 28, 2002, Domain Discover transmitted by email to the Center its verification response. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 2, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2002. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on December 25, 2002.
The Center appointed Christopher P. Tootal as the sole Panelist in this matter on January 17, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On January 20, 2003 (as the Panelist was about to deliver a decision), the Center received an e-mail from a person named Bee Jay, who claimed to have been in hospital and requested an extension for filing "my reply". It seemed (see para. 5A. (vi) Below) that Bee Jay might be the owner of the Domain Name, and accordingly the Panelist granted an extension of time to February 12, 2003.
On February 14, 2003, Bee Jay sent a Response to the Center by e-mail. On February 18, 2003, the Panelist issued a Procedural Order in the following terms:
"The Panelist has decided to admit the statement from Bernardus Jacobus Van Etten ("Bee Jay") into these proceedings, despite the fact that it was submitted two days beyond the granted extension of time.
The Complainant is invited to submit any reply it may wish to make by February 28, 2003. Additionally, the Panelist requests that all past correspondence between the parties beparties be fully disclosed to the Panelist, as the Panelist believes there may have been previous e-mail communications except for the exchange of e-mails which forms Annex 11 to the Complaint."
The Panelist also requested Bee Jay to provide (by the same above-mentioned date) a more detailed explanation of the following matters:
(1) What is the connection between him and the nominal Respondent, http:www.eurotier.com, and how he claims ownership of the domain name <douweegberts.com>.
(2) The identity of the Mr. Douwe Egberts who is said to have asked Bee Jay to "look after a domain for him" - it would be helpful if any correspondence with Mr. Egberts could be exhibited.
(3) Details of any active websites including "douweegberts" which are not related to the Complainant.
On February 27, 2003, the Center received by e-mail a further submission from Bee Jay and on February 28, 2003, a Reply from the Complainant.
4. Factual Background
(a) The Complainant is the owner of many hundreds of trade marks and trade marktrademark applications for DOUWE EGBERTS ("the Trademark"), either simpliciter or in stylized form. An early registration of DOUWE EGBERTS in The Netherlands dates from 1944.
(b) The Domain Name was registered on July 2, 2001.
5. Partiesí Contentions
The Complainant asserts, inter alia, as follows:
(i) The first use of the name DOUWE EGBERTS goes back to 1753 when Egbert Douwes started his grocery shop.
(ii) The Trademark has been used extensively by the Complainant, mainly in respect of coffee and products and services related to coffee, for example coffee machines, coffee creamer etc. DOUWE EGBERTS is a well known brand in the consumer as well as in the industrial market in many countries all over the world.
(iii) DOUWE EGBERTS is a famous brand and the name DOUWE EGBERTS is for the Complainantís customers synonymous with quality products.
(iv) In the Netherlands, the brand awareness for DOUWE EGBERTS is almost 100%. Products containing the name DOUWE EGBERTS are sold in more than 90% of the supermarkets. More than 150 million consumer packs are sold, yearly. The Trademark has been used on coffee packaging for more than 100 years.
(v) The Domain Name is linked to the site <internetten.com>, a dating site. DOUWE DOUWE EGBERTS as a registered name or trademark of the Respondent is not mentioned on this site nor on the sites linked to this site.
(vi) The Respondent appears to be aware of the existence of the Complainant and their rights to the Trademark since the Respondent contacted the Complainant to discuss the forwarding of received e-mails. The Complainant relies on an e-mail dated January 15, 2002, from one Bee Jay, whose e-mail address is given as email@example.com. The email is in the following terms:
"Hi Els well, I do receive any and all, e-mails what get sent to my domain http://www.douweegberts.com and many times Iíve got no time to send it back or fwd. So I thought perhaps I can set up a server for you and redirect all the e-mail to your address see the explanation below
douweegberts.com Email forwarding
With email forwarding, all email that is sent to addresses at your domain will be automatically forwarded to an existing email account. Email addressed to firstname.lastname@example.org, email@example.com , or even firstname.lastname@example.org will be forwarded to the destination email address supplied by you. email@example.com."
In the Response dated February 13, 2003, Bee Jay asserted, inter alia, the following:
(i) "I do register Domains for clients from all over the world and I have designers and servers also all over the world."
(ii) He met a Mr. Douwe Egberts in 2001. He states "Douwe instructed me the register the domain which I did in Good Faith, I did Emphasize that he can not sell the domain for a large some of money even to his rich Uncle, and also he would not be able to sell any of the product which his Uncle sells, Douwe fully agreed and I am been looking after the domain ever since".
(iii) Douwe Egberts is a normal common first and last name in The Netherlands, and "there have been about Ø5 people showing interest and claiming that their name is also Douwe Egberts".
(iv) There are over 500 domain names that bear the word "douweegberts". "These are just a FEW of the domains out there that bear the word "Douweegberts". Not all of them are existing sites, but all are domain names owned by companies and individuals other than your Complainant".
(v) The Domain Name was not registered and used in bad faith. He is "not in the business of buying and selling domain names".
C. Bee Jayís reply to Procedural Order
The further submission by Bee Jay did little to address the 3 matters raised in the Procedural Order:
(i) On the connection between him and the individual Respondent, he states:
"Iím also the owner of http://www.eurotier.com which I registered and started cosmetic in different layers, Iíve sold that company but I still help and assisting the new owns with the developing and it is in connection of Mr. Thomas Park."
He provides no explanation as to how he claims ownership of the Domain Name.
(ii) He does not reply on the question of the identity of the Mr. Douwe Egberts, other than to send to the Center what appears to be a typed-up version of a letter dated June 27, 2001 to Bee Jay, which ends (also typed) "Douwe". As the letter is in Dutch (the language of these proceedings is English) this Panelist can only speculate as to its contents.
(iii) He does not attempt to answer the request for details of active websites including "douweegberts" which are not related to the Complainant. Instead, he lists some 180 unrelated domain names of which he says "we are the owner".
D. Complainantís Reply
The Complainant submits, inter alia, as follows:
(i) The Response of Bee Jay should not be taken into account.
(ii) As far as it is aware, Douwe Egberts is not a common first and last name, either in the Netherlands or in any other country in the world.
(iii) The domain names the Complainant has found on the Internet containing DOUWE EGBERTS are owned by the Complainant or by companies belonging to the Sara Lee group of companies.
(iv) The Complainant has also supplied 21 pages of e-mails passing to or from Bee Jay and/or the Domain Names. In part these reveal how e-mails intended for individuals within the Complainantís group of companies came to be wrongly addressed. Two e-mails from Bee Jay are of interest:
(a) On January 21, 2002 (in response to a request for the assignment of the Domain Name):
"It is unfortunate but the domain name is reserved for Douwe Egberts in Begiem (sic), and at this time he and I havenít got time for the website for at least 2-3 yearsÖ.".
(b) On May 17, 2002, Bee Jay said:
"I have spoken to the Egberts Family regarding your position and desire to acquire the domain http://www.douweegberts.com. They have related to me that they would like to sell the domain since they are unable to fund the original purpose intended for the domain.
Regrettably, I had to tell them that this was not possible or legal since to sell a trademarked name to the trademark owner is a show of bad faith and is illegal. I strongly advised them that they cannot do this. At this point, we are all unsure as to the future of this domain."
6. Discussion and Findings
The evidence in this administrative proceeding as to the identity and activities of the Respondent is very limited, and the Panelist is far from satisfied as to who owns the Respondent.
The onus is, however, on the Complainant to prove each of the three elements set out in paragraph 4(a) of the ICANN policy, as follows:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
As to element (i) the Domain Name is clearly identical to the Trademark.
B. Rights or Legitimate Interests
As to element (ii) of paragraph 4(a) of the ICANN Policy, Bee Jay has suggested that the Domain Name was registered for a Mr. Douwe Egberts. The Panelist is not satisfied that such a person exists, and in the absence of any convincing evidence, it is plain that neither the Respondent nor Bee Jay have themselves any rights or legitimate interests in the Domain Name. There is nothing to suggest that any of the circumstances mentioned in paragraph 4(c) of the ICANN Policy apply (i.e. before notice of the dispute preparation to use the Domain Name, being commonly known by the Domain Name or making a legitimate non-commercial or fair use of the Domain Name) apply to Bee Jay or the Respondent. Accordingly, the Panelist concludes that the Complainant has established element (ii).
C. Registered and Used in Bad Faith
So far as element (iii) is concerned it is sufficient that the Complainant demonstrates that one of the four circumstances mentioned in paragraph 4(b) of the ICANN Policy applies.
Paragraph 4(b)(iv) of the Policy can be paraphrased in the third person as follows:
"by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [his] web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of [Respondentís] web site or location, or of a product or service on [Respondentís] web site or location."
The matter referred to in paragraph 5A.(v) above tends to suggest that those behind the Respondent had the intention of attracting people looking up the Domain Name to the dating site referred to, and presumably the dating site is operated for commercial gain. This is evidence of an activity which falls within paragraph 4(b)(iv) of the Policy.
It is in respect of the issue of "bad faith" that the evidence in this case is otherwise very limited. However, given the reputation of the Trademark, it is difficult to see how the Domain Name could have been registered and used in good faith. Accordingly, the Panelist concludes that the Respondent registered and has been using the Domain Name in bad faith.
In the light of the findings in paragraph 7 above, the Panelist concludes that:
- the domain name <douweegberts.com> is identical to the trademark DOUWE
EGBERTS of the Complainant;
- the Respondent has no rights or legitimate interests in the domain name;
- the domain name has been registered and is being used in bad faith.
Therefore, in accordance with Paragraph 4(i) of the Policy the Panelist orders that the Domain Name <douweegberts.com> be transferred to the Complainant, Sara Lee/DE N.V.
Christopher P. Tootal
Dated: March 13, 2003