WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Verder B.V. v. Lou Mattaliano
Case No. D2007-1687
1. The Parties
The Complainant is Verder B.V., of Vleuten, The Netherlands, represented by Novagraaf Nederland B.V., The Netherlands.
The Respondent is Lou Mattaliano, of United States of America.
2. The Domain Name and Registrar
The disputed domain name <verder.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2007. On November 16, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On November 16, 2007, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On November 20, 2007, 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 November 20, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 10, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2007.
The Center appointed David J.A. Cairns as the sole panelist in this matter on December 24, 2007. 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 Complainant is an international company with branches in many countries. It is the owner of various trademark registrations consisting of or containing the word VERDER, including Benelux registrations Nš 0619285 for the word mark VERDER (first registered on June 1, 1977), and Nš 0531442 for the word VERDER with an arrow motif (registered May 19, 1993) in connection with supplying industrial pumps. The Complainant has also registered several domain names consisting of the trademark VERDER, including <verder.nl>, <verder.info>, <verder.fr>, <verder.de> and <verder.be>.
From April 14, 1997 to February 5, 1998, Lou Mattaliano Jr. (the Respondent) was the President, Treasurer and Member of the Board of Directors of Verder Inc., a Pennsylvania corporation wholly owned by Verder Holding B.V., which is also the sole shareholder of the Complainant.
The disputed domain name was registered by the Respondent on February 20, 1997.
On January 3, 2008, the Panel examined the website at the disputed domain name, and also the websites at <verder.fr> and <verder.nl> owned by the Complainant. The disputed domain name hosted a website described on the homepage as ‘the corporate website of the Verder group’. It included pages devoted to products, company information, corporate divisions and national branches, news jobs, and contact information. The pages relating to corporate divisions and national branches included hyperlinks to the <verder.fr>, <verder.nl> and other Verder websites.
Comparing the “www.verder.com” with the “www.verder.fr” and “www.verder.nl” websites, the Panel notes: (i) the “www.verder.com” website uses the same distinctive layout and colours of the Complainant’s websites, including the trademark motif of an arrow through the word “verder”, the same shade of blue and the same images within the blue border; (ii) the home page of the “www.verder.com” has the same photographs as the Dutch language corporate website at “www.verder.nl”; (iii) the “www.verder.fr” and “www.verder.nl” websites both contain active links to the “www.verder.com” website.
In summary, the “www.verder.com” website appears to be the English language corporate website for the Complainant and its affiliates, and fully integrated within a series of websites of the Complainant and its affiliates.
5. Parties’ Contentions
The Complainant states that the disputed domain name is identical to the trademark VERDER and confusingly similar to other trademarks of the Complainant containing the very distinctive and dominant element VERDER as a prefix, such as VERDERAIR, VERDERFLEX or VERDERGEAR.
The Complainant states that the Respondent has no rights or legitimate interests in respect of the domain name in view of the Complainant’s VERDER trademarks. Further, the Respondent is not commonly known by a name corresponding to the disputed domain name, and the Complainant no longer consents to the Respondent’s ownership of the disputed domain name.
The Complainant states that the domain name was registered and is being used in bad faith, given that (i) the Respondent was a former employee of the Complainant until February 5, 1998; (ii) the disputed domain name had been linked to the Complainant’s website until November 13, 2007, when it suddenly and without warning was removed from the Nameserver and the zonefile was deleted; (iii) the Respondent is now working for a competitor of the Complainant; (iv) the Respondent is knowingly disrupting the business of the Complainant (as competitor of the employer of the Respondent); and (v) there is a risk involved in the disputed domain name being owned by the Respondent that has refused to cooperate in the several attempts to have the disputed domain name voluntarily transferred to the Complainant.
In the light of the above, the Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate.
Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent’s domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant owns the registrations referred to above, including the VERDER trademark.
In determining whether a disputed domain name is identical or confusingly similar to the Complainant’s trademark the relevant comparison involves the second-level portion of the domain name only (here, ‘verder’). Clearly a trademark does not usually include a URL prefix (here, “www”), or a top-level domain name suffix (here, ‘.com’) that are functional elements of a domain name, and the comparison required for the first element of the Policy must exclude these elements. These elements are incapable of performing any distinctive function, and it is well-established that they should not be considered in making this determination (see Sidestep, Inc. v. Anna Valdieri/Marco Ferro WIPO Case No. D2007-0212; Patricia Ann Romance Peterson, Romance Productions Ltd. v. Network Operations Center/Alberta Hot Rods, WIPO Case No. D2006-1431).
On this basis, the Panel finds that the disputed domain name is identical with the Complainant’s VERDER trademark. Accordingly, the first element required by the Policy is satisfied.
B. Rights or Legitimate Interests
The Respondent, a former employee of an affiliate of the Complainant, has for nearly ten years owned the .com domain name for the Complainant’s name and trademark, and has hosted the English language corporate website of the Complainant, apparently with the Complainant’s consent. There is no evidence that the Respondent registered or held the disputed domain name as an agent for the Complainant, and in fact the first registration occurred before the Respondent’s employment relationship with the Complainant.
The Complainant has also apparently consented to the use of its registered trademark, distinctive colour schemes and get-up on the Respondent’s webpage, and to the contents of the website describing the Complainant’s business. The Complainant has linked its own websites to the Respondent’s website, and continues to do so. The Respondent’s website is not an imitation of the Complainant’s corporate website; rather, it has been the genuine corporate website in English.
There is no evidence before the Panel of the terms of the Complainant’s consent to the use of its trademark and other proprietary indicia, or of the arrangements between the parties regarding the content of the “www.verder.com” website. In particular, the Panel has not been informed as to whether the Complainant or the Respondent is responsible for the current content of the “www.verder.com” website. If the Complainant is responsible for the content of the website, then there must be some arrangement with the Respondent regarding access to the website. If the Respondent is responsible for its content, then there must be some arrangement for the provision of material and the regular update of the website over the many years that the Respondent has owned the disputed domain name. There is no information regarding the payment of the costs associated with maintaining the “www.verder.com” website over this period.
The Complainant alleges that on “November 13, 2007, the website of the Complainant has suddenly and without warning been removed from the Nameserver of the domain <verder.com> and the zonefile was deleted. The website can therefore no longer be accessed by using the domain name <verder.com>“. Nevertheless, on January 3, 2008 the Panel accessed the “www.verder.com” website both directly, and from links on the webpages of the Complainant’s websites.
In these circumstances, the Panel turns to consider whether the Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name. In terms of Paragraph 4(c) of the Policy, there is no evidence that the Respondent is commonly known by the disputed domain name, and nor is the Respondent making a legitimate non-commercial or fair use of the domain name.
It remains to be decided whether the Respondent’s use of the disputed domain name qualifies as a bona fide offering of goods or services. The goods and services being offered are those of the Complainant, and there is no mention of the Respondent or any third party, and in particular no attempt to sell any goods or services other than those of the Complainant. In terms of the requirements for a bona fide offering of goods and services as set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the only requirement not satisfied here is that the site does not disclose the relationship between the website owner and the trademark owner. The website does not contain any express misrepresentation of the relationship between the registrant and the trademark owner, but there is an implicit representation that this is a genuine website of the Complainant, authorised by the Complainant.
Paragraph 4(c)(i) requires the Panel to consider whether the Respondent’s use of the disputed domain name was bona fide before notice to the Respondent of the dispute. The Panel finds that the Respondent first had notice of this dispute on notification of the Complainant on November 20, 2007. There is no evidence of any dispute prior to this date. The Complainant states it tried to arrange a voluntary transfer of the disputed domain name on many occasions, but this is not evidence of a dispute.
The Panel finds that until November 13, 2007 the Respondent’s use was with the Complainant’s consent, and therefore bona fide. On November 13, 2007, the content of the “www.verder.com” website disappeared, and the Complainant withdrew its consent, and commenced this proceeding. The question therefore is whether the Respondent’s use of the disputed domain name ceased to be bona fide on November 13, 2007. This in turn depends on the use the Respondent made of the disputed domain name after this time, and whether the Complainant was justified, contractually or otherwise, in the unilateral withdrawal of its consent.
In all the circumstances, the Panel finds that a contract has existed between the parties whereby the Respondent owned this website for the specific purpose of maintaining the Complainant’s website. Neither the Complainant nor the Respondent has disclosed to the Panel the terms of this agreement. The Panel interprets the disappearance of the website at “www.verder.com” on November 13, 2007, the initiation of this proceeding, and the subsequent restoration of the website at “www.verder.com”, complete with links from the Complainant’s own websites, as stages in a contractual dispute. The Panel is not in a position to determine on the evidence whether the Complainant’s withdrawal of its consent was contractually justified.
The factual complexity and uncertainty of this case puts it outside the UDRP Policy. As the Panel states in Oki Data Americas, Inc. v. ASD, Inc, WIPO Case No. D2001-0903 “It is important to keep in mind that the Policy was designed to prevent the extortionate behavior commonly known as cybersquatting. It cannot be used to litigate all disputes involving domain names.” As in Celebrity Signatures International, Inc. v. Hera’s Incorporated Iris Linder, WIPO Case No. D2002-0936, “I recognize without deciding the issue the possibility that Respondent’s current use after objection might be an infringement of Complainant’s rights and that Respondent may no longer be justified in believing its use is permitted after receiving Complainant’s objections. Nevertheless, that possibility involves a dispute that is beyond the scope of this proceeding.” If the Respondent is in breach of its agreement with the Complainant, then the Complainant will have remedies in the appropriate jurisdiction, for breach of contract and trademark infringement.
On the basis of its finding of the existence of a contract between the parties relating to the use of the disputed domain name, the terms of which are unknown, the Panel finds that the Complainant has failed to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Complaint is dismissed.
C. Registered and Used in Bad Faith
The Panel is not required to address this element of the Policy in light of its findings on the second element.
For all the foregoing reasons, the Complaint is denied.
David J.A. Cairns
Dated: January 4, 2008