WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NV Brouwerij L. Huyghe v. Naomi Hendriks
Case No. DNU2007-0003
1. The Parties
The Complainant is NV Brouwerij L. Huyghe, Melle, Belgium, represented by Nicolas Clarembeaux, ALTIUS CVBA, Belgium.
The Respondent is Naomi Hendriks, Melle, Belgium, representing herself.
2. The Domain Name and Registrar
The disputed domain name <delirium.nu> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2007. On September 17, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On September 18, 2007, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 September 21, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 11, 2007. The Response was filed with the Center on October 11, 2007.
The Center appointed William van Caenegem as the sole panelist in this matter on October 19, 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, Brouwerij L. Huyghe NV is a limited company incorporated in Belgium. The Complainant is the proprietor of the Benelux trademark DELIRIUM, registered on June 7, 2006 for goods and services in classes 25 (clothing and footwear); 32 (beers and other beverages); and 43 (restaurant services, cafes, bars, pubs and hotels) and of a device mark consisting of a representation of a pink elephant against a blue background, incorporating the word “delirium”, registered on March 22, 2007 for the same goods and services.
The Respondent is a Dutch individual.
5. Parties’ Contentions
The DELIRIUM trademark is mainly used to distinguish a unique beer created and launched in 1989. The trademark is also used on or in association with merchandising, the brewery, sponsored events, advertising material, cafes such as “Delirium Cafes” and beer brotherhoods.
The Respondent registered the domain name at issue on June 5, 2007 to express critical views in relation to a lease conflict with a third party other than the Complainant, who is her ex-landlord and is accused of rack-renting, violation of contractual terms, etc. This landlord is a former director and shareholder of the Complainant. However, the Complainant has nothing to do with the lease activities of the landlord complained of, nor with the lease conflict which is the subject of ongoing legal proceedings.
In addition to registering and using a domain name identical to the Complainant’s trademark the Respondent’s website at “www.delirium.nu” hinges on references to the Complainant, its trademarks and/or products. It uses the unusual blue and pink colour combination representing the dominant colours in the Complainant’s labels and advertising. The Respondent uses cartoon representations of a pink panther on its website evoking the pink elephant used in connection with the beer marketed by the Complainant under its DELIRIUM trademark. The Respondent draws Internet traffic to its website by use of the Complainant’s trademark and then gives rise to the impression that the Complainant is involved in the lease conflict, which it is not. In so doing the Respondent tarnishes the Complainant and its trademarks. The cease and desist letter of July 13, 2007 of the Complainant in relation to the website did not elicit a response, but subsequently the Respondent added a section to the website concerning the Latin etymology and significance of the word delirium and how its meaning is relevant to her lease conflict. This modification of the website is an attempt to contest the link with the DELIRIUM trademark and justify registration and use in good faith of the contested domain name.
The domain name is identical to the trademark as the suffix “.nu” is of no consequence. The degree of similarity reinforces the following submissions concerning absence of rights and bad faith. Once the Complainant has established a prima facie case of absence of rights or legitimate interests the burden of proofs shifts to the Respondent to establish such rights or legitimate interests. There is no preparation for or actual bona fide offering of goods or services on the Respondent’s website: it merely expresses critical views concerning a lease conflict with a third party. The Respondent is not known under the name “Delirium”. The non-commercial use made of the domain name is not fair. The Respondent uses the domain name to attract consumers and potential consumers of the Complainant’s products and services to its website, then to tarnish the Complainant and the product marketed under the DELIRIUM trademark, whereas the leasing conflict there referred to has nothing to do with the Complainant. Respondent’s website was modified after the date of the Complainant’s cease and desist letter in an attempt to justify the choice of the domain name by reference to the Latin etymology and current signification of the word “delirium”, maintaining that it fits the contents of the website and that those who peruse the website will be ‘prone to “delirium”’. This justification is not serious as it is clear the domain name was deliberately selected because of its reference to the products marketed by the Complainant. This conclusion is reinforced by the other graphics and verbal allusions on the website, and delirium is in no way a natural or obvious choice of a name for a website where critical views about a lease conflict are expressed. Delirium is not in fact a commonly used term in Dutch in the manner for which the Respondent contends and there are many other more common and non-Latin equivalents available. The real reason for the registration and use of the contested domain name is to benefit from the distinctiveness, goodwill and reputation of the Complainant’s trademark and tarnish that trademark, possibly because the Respondent’s ex-landlord is a former shareholder and former director of the Complainant. Any interest the Respondent might claim is illegitimate.
The list of circumstances in para. 4(b) of the Policy is non-exhaustive. The Respondent must have been aware of the Complainant’s trademark at the time of registration considering the fame of the mark in Belgium and considering the Respondent’s place of residence and content of the website. Such awareness is sufficient to amount to bad faith. The registration and use of the domain name will attract consumers or potential consumers of the Complainant’s products to the Respondent’s website. That their initial belief that they are visiting the Complainant’s website is immediately dispelled by the content of the website does not detract from the initial confusion which itself justifies a finding of bad faith. The Respondent misappropriates the Complainant’s distinctiveness and goodwill to attract Internet users to its website, and the resulting advantage to the Respondent amounts to an unfair appropriation of goodwill because it has not contributed by its own efforts and investment to the establishment or furtherance of the goodwill. The registration and use of the domain name is detrimental to the distinctive character, reputation and goodwill vested in the Complainant’s mark, as it creates the false impression that the Complainant is involved in the lease conflict about which the Respondent expresses very negative views. The Respondent expresses its views through the DELIRIUM trademark and by other references to the Complainant which will rub off on the Complainant. The website wrongfully suggests that the Complainant is involved with the lease conflict or leasing activities of which the Respondent complains on the website. This circumstance ipso facto justifies a finding of bad faith. The a posteriori justification posted on the website on July 31, 2007 reinforces bad faith, as it is unsound per se and delirium is by no means a natural choice of domain name for a website with the relevant content. Moreover the alleged reasons for the choice are irreconcilable with other references to the Complainant on the Respondent’s website. The Respondent can readily express critical views on the ex-landlord by means that do not involve confusing or misleading the public or by taking unfair advantage of the distinctiveness and goodwill of the Complainant’s trademark. Moreover, the use made of the trademark amounts to an infringement of the Benelux Convention for Intellectual Property.
Each of the three conditions of paragraphs 4(a)(i)-(iii) are satisfied. The word delirium is a commonly used Latin word meaning total confusion, insanity and/or chaos. In relation to 4(i), the website “www.delirium.nu” is an educational and informing, non-commercial and non-profit website aiming to warn Dutch people considering renting in Belgium. It fulfills an important social and public function, since rack renting is a hot topic for the increasing number of Dutch people looking for a home in Belgium. In relation to 4(ii), the word delirium is a commonly known Latin word popularly used in Holland for generations. Its continuing use is illustrated by its adoption as the name of popular shows like those of Cirque du Soleil and the Dutch comedian Javier Guzman. It is found in any dictionary or encyclopedia and in every language, and ‘getting a delirium’ is a popular expression. It is not at all known as a brand name or trademark, and will never be so remembered, which is why it was not registered as a domain name other than with the country extension “.be” (e.g. <delirium.com>, <delirium.nl> and a list of others are registered by parties other than the Complainant). It is ridiculous to request transfer of the <delirium.nu> domain name where more obvious domain names such as <delirium.eu> are still available. <deliriumtremens.com> is still available, given that the Complainant’s beer is Delirium Tremens. Since the Complainant shows no interest in these other domain names, it is clear that the Complainant is not interested in obtaining the <delirium.nu> domain name for its own commercial purposes, rather the Complaint is brought in bad faith to harass the Respondent as is defined in the rules. In relation to 4(a)(iii), the Respondent is making a fair use of the domain name. The website has nothing to do with beer, selling beer or other products. It is a non-commercial non-profit website warning potential renters discreetly without mentioning names. It shows pictures and illustrates potential pitfalls by telling the Respondent’s own story concerning renting a dilapidated house with many dangers for seven years from a mean and deceiving landlord. The Complainant is not in fact a separate entity, since the landlord is not a ‘former’ shareholder or director but continues to be the ‘leading man’ and owner of the brewery. He represents himself as the owner of the brewery in public, on the Internet and in newspapers, and it is therefore not the case that the Complainant has done nothing wrong or is not concerned with the lease conflict the subject of the website. The Respondent has been instructed to contact the brewery whenever a problem with the rental property occurred and the Respondent has been in frequent contact with the Complainant over the rental property. The brewery is a small family company and the landlord in fact controls its operations.
The Respondent in its Response further details complaints about the state of the rental property, official declarations concerning its unfitness for human habitation, and legal proceedings against the landlord. Respondent’s publishing of pictures of the property has by its contention offended the landlord who has brought the present Complaint in bad faith and primarily to harass the Respondent and as an act of revenge for the measures that have been forced upon the Complainant in relation to the property. The Panel notes that the Respondent in the context of references to the rental dispute uses the term Complainant to refer to the landlord.
The Respondent does not tarnish the trademark of the Complainant, since the brewery and its products are not mentioned on the website. The website merely provides a general and illustrative example of rack-renting without naming names. The Respondent’s freedom of expression is guaranteed by Dutch law in this regard.
The Respondent then asserts that the trademark DELIRIUM TREMENS, under which one of the Complainant’s beers is sold, is not at all well known, other than in close proximity to the brewery and in the local bars owned by the brewery. The ordinary Belgian and Dutch public does not know the beer brand; the Complainant’s trademark was only registered 19 years after the beer was launched, and this may be explained by the fact that the brand name is very inappropriate and analogous to calling a cigarette brand “Lung Tumor”. The Respondent then refutes Complainant’s contention that the brewery Huyghe has an outstanding reputation by detailing various complaints against it and its cafes, the state of its brewery and brewing processes, and various website references that are critical and condemnatory of the brewery and its beers, in terms of quality and hygiene. The Respondent contends that this illustrates that the brewery of the Complainant in fact has a very bad reputation and given the attacks on its reputation from so many quarters, and that without the discretion shown by the Respondent, the Complainant’s contention concerning the tarnishing of its trademark lacks substance and the Respondent’s contention concerning the real motivation for bringing the administrative proceedings is reinforced. The Respondent makes further allegations concerning the conduct on various occasions of the brewery, her ex-landlord and the Complainant. Adverse incidents are referred to which it is not necessary to detail for present purposes, but which the Respondent contends demonstrate or illustrate the Complainant’s animus against her and further reinforce the submission that the present proceedings are brought to harass the Respondent. The Panel notes again that the Respondent refers to her landlord as the Complainant where the Response deals with the rental dispute. Further illustrative of the harassing nature of the proceedings, according to the Respondent is that although the extension “.nu” means ‘now’ in Dutch and is thus attractive to use in the Dutch speaking sphere, the Complainant had not previously shown any interest in it, nor in the <delirium.com> domain name. The Complainant is not genuinely interested in its Internet presence, and is only interested in obtaining the domain name at issue as a means of harassing the Respondent. The Respondent makes other factual allegations in relation to the landlord whose bearing on these proceedings is not readily discernable and which are potentially defamatory, and which consequently do not merit being detailed here.
The Complainant’s and the Respondent’s website differ not only in content and purpose but also in color, style, graphics, layout, fonts etc. Respondent’s choice of website appearance is intended to illustrate dreams shattered by the cruel reality depicted in the incorporated photographs. The lettering and hyperlink style were chosen for their inherent merits not for similarity to the Complainant’s website. The famous Pink Panther used on the website of the Respondent cannot be compared with the static and hot pink elephant used by the Complainant that nobody has heard of. There is no similarity between the two relevant websites and any visitor to the Respondent’s website will immediately be alerted to the fact that it has nothing to do with beer. A potential visitor searching for delirium on the web could very well be directed to a host of other websites with various country extensions, none of which are connected to the Complainant.
Further the Respondent contends that if the domain name is found identical or confusingly similar to the trademark of the Complainant, then a large number of third parties with domain names incorporating “delirium” but with different extensions would also not be able to exist independently on the Internet.
The reason the Respondent chose, amongst many still available extensions, the “.nu” domain name was that the extension represents “now” in Dutch, and Dutch people are now moving to Belgium to live. The Respondent denies that the domain name was registered and used in bad faith in any of the ways referred to in para 4(a)(iii) of the Policy, based on the various contentions summarized above.
6. Discussion and Findings
A. Identical or Confusingly Similar
The domain name <delirium.nu> only differs from the Complainant’s registered trademark DELIRIUM by the addition of the extension “.nu”. It is well established that the extension alone, whether it be “.com” or “.nu” is of no consequence. It does not serve to distinguish the domain name from the trademark at issue.
The Panel holds that the domain name is identical to the trademark of the Complainant.
B. Rights or Legitimate Interests
The principal issue here falls to be decided under para 4(c)(iii) of the policy: is the Respondent making a legitimate commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Respondent does not use the disputed domain name for a bona fide offering of goods or services, nor is it commonly known by the domain name. There is thus no prima facie evidence of a right or legitimate interest in the domain name on the part of the Respondent. In those circumstances, it falls to the Respondent to establish circumstances that demonstrate the existence of such a right or legitimate interest.
In Thrifty, Inc. and Thrifty Rent-A-Car System, Inc. v. Peter George, WIPO Case No. D2002-0140, the Panel pointed out that “Registration of an ordinary English language word as a domain name, and use of that domain name for that ordinary, English language, non-trademark significance, can be a legitimate interest”. In the present proceedings the Respondent points to the fact that the word “delirium” is a Latin term which is used in many modern languages to support her contention that she selected the term “delirium” as a domain name because it signifies total confusion, insanity and/or chaos, which is descriptive of the situation she found herself in with respect to the events surrounding the rental property featured on the website. The Respondent asserts that the content of the website to which the contested domain resolves is intended as a warning for those moving from Holland to Belgium to rent housing that they might there encounter bad landlords. However, the term “delirium” is not obviously apt to alert Internet users to the purported purpose of the website. Nothing in that term suggests any inherent connection with rental difficulties or disputes, or rental conditions in Belgium, and it is only upon careful perusal of the website by an Internet user, that this alleged reason for or connection with the term “delirium” could become apparent. In fact, not only does the Respondent’s domain name incorporate the Complainant’s trademark, the website to which it resolves also mimics the Complainant’s logo by using the representation of a caricature of a pink animal which evokes the Complainant’s pink elephant device, and a color combination of blue and pink similar to the get-up of the Complainant’s Delirium Tremens beer. The Respondent has done this in circumstances where given the factual information and the serious allegations made on the website, of impropriety by an unidentified landlord in the village where the Complainant’s brewery is situated, there is a real prospect that a user might form the opinion that the Complainant is implicated in the impropriety. Indeed it is quite apparent from the Respondent’s submissions summarized above, that she sees no real distinction between the Complainant and the landlord, whom she contends is still in control of the brewery business.
In these circumstances the Panel is not persuaded that the Respondent is making a legitimate non-commercial use of the domain name without intent to tarnish the Complainant’s trademark. Notwithstanding the choice of the term “delirium” which is identical to the Complainant’s trademark, the associated color scheme and use of a pink animal logo, and the references to the village where the house and the brewery are both situated, nothing in the website indicates that the Complainant (Brouwerij Huyghe NV) is not involved or in any way associated with the rental activities complained of. In those circumstances it cannot be said that the Respondent is merely availing herself of a legitimate opportunity to use a generic and relevantly descriptive term as a domain name in a legitimate non-commercial context. Nor is the domain name at issue being used to express views concerning Complainant’s DELIRIUM branded products. Depending on all the circumstances, a legitimate interest may be found to exist in the ongoing use by a Respondent, of a domain name incorporating a trademark, to freely express criticism of the goods or services offered by a third party under that mark. However, this does not support an assertion that a legitimate interest necessarily exists in the use of a domain name identical to Complainant’s mark in a manner which serves to suggest an association, not qualified or dispelled on the website, between critical posted material and a Complainant.
The Panel notes that where a common word is at issue the legitimate interest of the domain name registrant in acquiring a generic term and that of the trademark owner come into conflict. As pointed out by the Panel in Shirmax Retail Ltd. v. CES Marketing, Inc., (eResolution Case AF-0104): “Where the domain name and trademark in question are generic—and in particular where they comprise no more than a single, short, common term—the rights/interests inquiry is more likely to favor the domain name owner.”, as also cited by the Panel in Rusconi Editore S.p.A. v. FreeView Publishing Inc., WIPO Case No. D2001-0875, where it concluded that the word “donna” being an ordinary Italian term fell within the respondent’s entitlement to own. However, in that case there was no evidence that the respondent was aware of the complainant’s trademark whereas here the Respondent quite clearly was. Furthermore, where the generic term is not indicative of the contents of the website in relation to which it is used by a respondent, the qualified proposition put forward in Shirmax may, as is required here, have to be displaced.
The Panel holds that the Respondent has no rights or legitimate interest in the domain name.
C. Registered and Used in Bad Faith
As to registration in bad faith, it is clear from the contents of the “www.delirium.nu” website that the Respondent was well aware of the Complainant’s business and its trademark. The rental property of which the website complains is in the close vicinity of the Complainant’s brewery and it is abundantly clear from the whole tenor and content of the website, and the material that the Respondent submits in her Response, that the Respondent was well aware of the trademark at the time of registration.
Furthermore, the inference is readily drawn from the website and the material before the Panel that the use of the term “delirium” which bears no obvious relationship to the matters discussed on the relevant website, and the mimicking there of colors and animal logo is not merely coincidental. The choice of the term “delirium” is part of a design to attract Internet users to a website that by those various indicators and by reference to the relevant location of the house, which is close to the brewery, sets out to denigrate the Complainant by the suggested association with the landlord whom the Respondent wishes to criticize.
It is true that the incorporation of a trademark into a domain name can be legitimate where the website to which the domain name resolves offers criticism in good faith about the goods, services or business for which the trademark is registered. However, there are two difficulties with reliance on that proposition in this case. First, the material on the Respondent’s website does not directly relate to criticism of the concerned trademark holder’s goods or services, but is rather reflective of the Respondent’s attempt to tarnish the Complainant with the same brush as the landlord with whom she is in dispute. Secondly, it is in general questionable that use in good faith will be found if the domain name itself does not indicate (for example by also including a pejorative term such as “sucks”) the critical nature of the website the Internet user will arrive at.
In British Nuclear Fuels plc v. Greenpeace International, WIPO Case No. D2001-1318, the Panel agreed with the Decision in WIPO Case D2001-0376, to the effect that the Paragraph 4(b) instances are only illustrative of what may amount to bad faith and not exhaustive. Further the Panelist said that “[…] what the Respondent has done is to select for the Domain Name a name which is not its own, which it knew at the time of registration to be the name and trademark of the Complainant and which it proposed at the time of registration to use in a campaign against the Complainant to cause the Complainant disruption and damage. The Domain Name would be particularly useful for that purpose because it would catch by surprise visitors intending to reach the Complainant’s website”. In the present case there is no explicit reference to the Complainant or its activities on the Respondent’s website, but as the Panel has already noted above, by its use of the Complainant’s trademark and other indicia suggestive of the Complainant, the Respondent has sought to diminish the Complainant by association, initially by ‘catching by surprise’ Internet users, including those intending to reach the Complainant’s website. While the Panel does not in any way suggest that the Respondent is not entitled to express criticism, fair or unfair, of the Complainant or any other person, where the Respondent uses a particular domain name in a manner which relies on confusing, deceiving or misleading Internet users to bring such criticism to their attention, there is sufficient evidence of use in bad faith of that domain name. Furthermore, it cannot be said that the Respondent would, if denied the use of a domain name identical to the Complainant’s trademark, be precluded from publicly and effectively uttering such criticism.
The Panel holds that the contested domain name was registered and used in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <delirium.nu> be transferred to the Complainant.
William van Caenegem
Dated: November 2, 2007