WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hoogendoorn Groep B.V. v. Onno Hoogendoorn
Case No. D2006-1064
1. The Parties
The Complainant is Hoogendoorn Groep B.V., Vlaardingen, The Netherlands, represented by J. van Calsteren, The Netherlands.
The Respondent is Onno Hoogendoorn, Leidschendam, The Netherlands.
2. The Domain Name and Registrar
The disputed domain name <hoogendoorn.com> is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2006. On August 22, 2006, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On August 23, 2006, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (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 August 24, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2006. The Response was filed with the Center on August 30, 2006.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on September 8, 2006. 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.
4. Factual Background
The following information was asserted as fact in the Complaint and remains uncontested.
Complainant and several of its subsidiaries operate under the trade name Hoogendoorn (often followed by a generic term such as “Group”) in The Netherlands.
A subsidiary of Complainant, by the name of Innocom (I.T.) B.V., located at the same address as the Complainant, owns various trademark registrations which include the word HOOGENDOORN, including the word mark comprising of the single element HOOGENDOORN, which is registered under number 0748765 with the Benelux Office for Intellectual Property (formerly known as the Benelux Trademark Office).
The Complainant and/or its subsidiaries own various domain names (and operate websites) which include the element “hoogendoorn”.
Respondent registered the Domain Name on October 20, 1997.
5. Parties’ Contentions
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.
The Complainant contends that the Domain Name is identical and confusingly similar to the Complainant’s trademarks. In addition the Complainant contends that it has rights in various domain names including the element “hoogendoorn” and that the name “Hoogendoorn” is used as part of a company name of one of the subsidiaries of the Complainant.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the Domain Name. In relation to this the Complainant contends:
• The Domain Name is not in use. When this name is typed into the URL-field of an Internet browser, one is immediately linked to the site “www.agroconsultinternational.com/index.asp”. That site has some links on agricultural issues, nothing else. On this site some unsolicited screen pop-ups for promotional purposes appear. The Domain Name is not used for a bona fide offering of goods or services.
• The Respondent’s name is not commonly known. The Respondent has no trademarks with the name ‘Hoogendoorn’ registered. The Respondent has no business with the name ‘Hoogendoorn’, neither any variations on this name. The Respondent is simply an individual. Because the ‘.com’-extensions are meant for commercial companies and not for individuals, the Respondent has no legitimate interest in the Domain Name.
• The Domain Name can be misleading for (potential) clients of the Complainant or its subsidiaries. Therefore the Domain Name has importance for the Complainant or its subsidiaries. The Respondent is not making a fair use of the Domain Name. The Respondent is aware of the existence of the Complainant or its subsidiaries. This is proven by another site of the Respondent (“www.hoogendoorn.org”) where a link to Hoogendoorn Automatisering (a subsidiary the Complainant) is present.
The Complainant contends that the Domain Name was registered and is being used in bad faith. In relation to this the Complainant contends:
• The Respondent has clearly registered or acquired the domain name for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant. A clear indication for this is that the Respondent has acquired the Domain Name and prolonged his registration while he is not using the domain name at all. Some time ago (on February 13, 2001) the Complainant offered Respondent to buy the domain name. The Respondent then asked for an outrageous amount of money, i.e. 100.000 old Dutch Guilders, now EUR 45.378,02) which ended the conversation.
• Complainant registered the domain name <www.hoogendoorn.nl> on January 20, 1997. Shortly after that, Respondent registered the Domain Name on October 20, 1997, clearly anticipating on the fact that in time, the Complainant would want to have that domain name.
The Respondent has submitted an extensive response, which will be discussed below insofar as relevant for the discussion and findings of this decision.
The Respondent is an individual with the surname “Hoogendoorn”. The Respondent has submitted a copy of his driving license which includes this surname.
The Respondent asserts that it is very common practice for people to register domain names which are based upon their name. He also asserts that he is making a legitimate non-commercial use of the Domain Name, by using it for email. It is also being used for a blog at “www.hoogendoorn.com/blog”, which is not placed on the homepage to avoid spam. The Respondent has a homepage with some links on it.
The Respondent contests that he as an individual would not be allowed to register a ‘.com’ domain name. According to the Respondent the ‘.com’ gTLD is open and unrestricted.
The Respondent asserts that he only became aware of Complainant after its legal manager contacted him in 2001 with an unsolicited offer for the disputed domain name. Except from responding to Complainant’s unsolicited offer to purchase the disputed domain name in 2001, he has never offered the disputed domain name for sale. The mere willingness to enter into discussions with the Complainant concerning its interest in purchasing the disputed domain name does not support a claim of bad faith.
The Respondent alleges that the Complainant is using the Policy in bad faith for reverse domain name hijacking.
6. Discussion and Findings
For the Complainant to succeed, it must show that the Respondent meets each of the criteria in the Policy, paragraph 4(a):
(i) the Domain Name is identical or confusingly similar to a trademark 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
The domain name in dispute is <hoogendoorn.com>. Innocom (I.T.) B.V., a subsidiary of the Complainant owns at least one Benelux word mark registration consisting of the sole word HOOGENDOORN. As the ‘.com’ gTLD suffix is incapable of being a distinguishing element in the domain name, the panel finds that the Domain Name in dispute is identical to a trademark in which Innocom (I.T.) B.V. has rights.
However, the Complainant fails to make clear what rights in the trademark the Complainant itself claims to have. The panel recognizes that Innocom (I.T.) B.V. is affiliated to the Complainant, but the Complainant has not asserted and/or substantiated in any way that Innocom (I.T.) B.V. has granted a license, whether implicit or explicit, to Complainant.
On the basis of the foregoing the Panel therefore concludes that the Complainant has failed to show that the Domain Name in dispute is identical or confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent has proven that his surname is Hoogendoorn. It appears that the Respondent registered the Domain Name in order to be identified by his surname, in line therefore with the provision of paragraph 4(c)(ii) of the Policy (Jose de Jesus Velasquez Jimenez v. Velasquez-Perez, CPA, WIPO Case No. D2001-0342). The use of one’s own surname in a domain name corresponds to a legitimate customary practice and is, as a rule, sufficient evidence of a legitimate right or interest in the domain name. The scope of the Policy is limited to cybersquatting. Trademark owners shall not be allowed to use the Policy to dispossess summarily a third party of a domain name reflecting his or her surname (G.A. Modefine S.A. v. A. R. Mani, WIPO Case No. D2001-0537) (also Billerbeck Schweiz AG v. Peter Billerbeck, WIPO Case No. D2001-0825).
Although the ‘.com’ gTLD may originally not have been intended for individuals, this has almost from the beginning of this gTLD never been the practice and the gTLD is indeed also open and unrestricted.
For these reasons the Panel finds that the Respondent succeeded in proving that he is commonly known by the Domain Name and, therefore, has legitimate rights and interests in the Domain Name.
C. Registered and Used in Bad Faith
As the Panelist established that the Respondent has a right and legitimate interest in the Domain Name this third element needs no discussion. Nevertheless the Panelist wishes to add that – beyond exceptional circumstances – it is difficult to imagine that a person with a certain surname would be in bad faith when registering a domain name which simply reflects its own surname. The facts do not show any such exceptional circumstances.
D. Reverse Domain Name Hijacking
Paragraph 15(e) of the Rules provides that the Panel may make a finding that the Complaint is brought in bad faith in circumstances characterized as reverse domain name hijacking. Although arguable, the Panel declines to find that the Complainant used the Policy in bad faith to attempt to deprive the Respondent from using his domain name. The Panel is satisfied that the Complainant was attempting to assert its trademark rights, without bad faith, as it is entitled to do.
For all the foregoing reasons, the Complaint is denied.
Willem J. H. Leppink
Dated: September 22, 2006