Complainant is Freisinger Fensterbau GmbH, with its registered office at Ebbs, Austria (“Complainant”), represented by Ruschke Madgwick Seide & Kollegen, Germany.
Respondent is Ludwig Haeussler GmbH, with its registered office at Speyer, Germany (“Respondent”).
The disputed domain name <optiwin.nl> is registered with SIDN via United-Domains AG (the “Domain Name).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2009 (email) and March 24, 2009 (hardcopy). On March 18, 2009 the Center transmitted by email to SIDN a request for registration verification in connection with the Domain Name. On March 19, 2009 SIDN transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center on March 26, 2009 that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 26, 2009 (email) and March 31, 2009 (hardcopy). The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”). Complainant filed the Complaint in English. Respondent did not reply to the English Complaint. In accordance with article 16 of the Regulations, the Center provisionally decided that the Complaint would be accepted in the English language as both Complainant and Respondent are located outside the Netherlands and Complainant filed the Complaint in English.
In accordance with the Regulations, articles 5.1 and 15.5, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 27, 2009. In accordance with the Regulations, article 7.1, the due date for Response was April 16, 2009. The Respondent did not submit any reply. Accordingly, the Center notified the Respondent's default on April 17, 2009.
The Center appointed Willem J.H. Leppink as the panelist in this matter on April 21, 2009. The Panelist finds that the Panelist was properly appointed. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 8.2.
On April 22, 2009, Complainant asked the Center whether there was a possibility to suspend the proceedings as it seemed that Complainant and Respondent had reached a final settlement regarding all domain issues, including this case. The Center informed Complainant that it would be up to the Panelist's discretion, as the Panelist has already been appointed, to decide whether to suspend the proceedings or to render a Decision. The Panelist granted a suspension of the proceedings pursuant to article 18.3 of the Policy in order to offer the Parties the possibility to reach an amicable settlement. The parties were ordered to advise the Panel on May 1, 2009 at the latest whether they have reached such a settlement. In absence of such notification the Panel would forward its decision to the Center by May 12, 2009. On May 4, 2009, Complainant informed the Center that Complainant and Respondent were not able to reach an amicable settlement. Therefore, the Panel forwarded its decision to the Center by May 12, 2009.
Complainant is a company that offers windows, outdoors and glazing facades for low-energy and passive houses.
Respondent is a family-owned company with its business specialized in a high-insulating window system Energate. Respondent uses the Domain Name. Accordingly to the publicly available WhoIs information of SIDN, the Domain Name was registered on September 16, 2005.
Trade mark and trade name rights
Complainant has claimed to be the proprietor of CTM trade mark registration with number 3833183 for the device mark OPTIWIN, filed on May 13, 2004. Complainant has submitted a copy of this registration.
Complainant stated that the Domain Name of Respondent is identical to above mentioned trade mark registration.
Respondent has no rights or legitimate interests in the Domain Name
Complainant argued that Respondent has no rights or legitimate interests in the Domain Name.
Complainant stated that it filed its trade mark registration on May 13, 2004. This registration was made more than a year before Respondent's registration of the Domain Name. Subsequently, Complainant stated that the trade mark registration is continuously been used for goods and services claimed (in particular windows) ever since.
Furthermore, Complainant argued that Respondent is a direct competitor of Complainant. In summer 2005, Respondent applied for joining the OPTIWIN group (an association founded by Complainant with the aim to bundle the expertise of medium sized window construction companies) by filing the application form containing Respondent's company profile. In autumn 2005, Respondent left the association and on September 16, 2005 the Domain Name was registered by Respondent. Besides, Respondent uses the Domain Name to offer identical and similar goods and services (in particular windows). If an Internet user enters the website “www.optiwin.nl”, he is redirected to Respondent's own website “www.energate.com” where Respondent offers windows. Complainant has submitted a printout of the website “www.energate.com” and a printout of the “Impressum” on that website, which, according to Complainant, proves that “www.energate.com” is indeed Respondent's website. Respondent's use of the Domain Name can not be considered as a bona fide offering of windows due the fact that Respondent became acquainted with the OPTIWIN group in summer 2005 and due to the fact that Complainant's trade mark is older and has been used ever since its filing date.
Subsequently, Complainant stated that Respondent has not been commonly known by the Domain Name due to the fact that Complainant's trade mark is older and Respondent is not making a legitimate non-commercial or fair use of the Domain Name without the intent for commercial gain. On the contrary: Respondent offers windows through the Internet and attracts visitors by using the Domain Name.
Complainant pointed out that it has contacted Respondent several times at exhibitions and other occurrences to settle this matter. Complainant has attached a letter of September 5, 2008 by Complainant's representative to Respondent dealing with these issues. Respondent never reacted to this letter, and an amicable and reasonable solution could not be reached.
Complainant stated that the Domain Name has to be considered as have been registered and being used in bad faith by Respondent for a couple of reasons.
Complainant first argued that during the last meeting between Complainant and Respondent the latter has offered to sell the Domain Name and the domain names optiwin.lu/ .be/ .dk/ .se/ .co.uk for EUR 20,000.-- which is disproportional to the costs for obtaining the domain name registrations.
Subsequently, Complainant stated that by using the Domain Name, Respondent, which is a window manufacturer, intentionally attempts to attract Internet users for commercial gain, to Respondent's website by creating a likelihood of confusion with the Complainant's older trade mark registration as to the products on Respondent's website, i.e. windows.
The Respondent did not reply to the Complainant's contentions.
Article 7.4 of the Regulations provides that, in the event that a respondent fails to submit a response, the complaint shall be granted, unless the panelist considers it to be without basis in law or fact.
According to article 2.1 of the Regulations, the requested remedy shall be granted if a complainant asserts and establishes each of the following:
(a) that the domain name is identical or confusingly similar to
I. a trade mark, or trade name, protected under Dutch law in which the complainant has rights;
II. a personal name registered in a Dutch municipal register of persons (‘gemeentelijke basisadministratie'), or a name of a Dutch public legal entity or a name of an association or foundation located in the Netherlands under which the complainant undertakes public activities on a permanent basis; and
(b). that respondent has no rights or legitimate interests in the domain name; and
(c). that the domain name has been registered or is being used in bad faith.
Complainant has indicated in the Complaint that it relies on its CTM trade mark registration. The submitted copy of the trade mark registration substantiate Complainant's right to the OPTIWIN trade mark.
Taking into account that the top level domain “.nl” can be disregarded in assessing whether the Domain Name is identical or confusingly similar to trade marks in which a complainant has rights (see for example Mappy SA v. Webhold, WIPO Case No. DNL2009-0018), the Domain Name is identical to Complainant's trade mark. Therefore the Panelist finds that that Complainant has complied with the first ground of article 2.1 sub a of the Regulations.
According to article 2.1 sub b of the Regulations the Complainant must demonstrate that Respondent has no rights or legitimate interests in the Domain Name. This condition is met if Complainant makes a prima facie case that Respondent has no rights or legitimate interests and Respondent fails to rebut that showing by providing evidence of for example any the three circumstances mentioned in article 3.1 of the Regulations.
Complainant has established that there are no indications that Respondent has rights or legitimate interests in the Domain Name as Complainant made clear that Respondent is
a direct competitor of Complainant and after Respondent left Complainant's organization, the Domain Name was registered by Respondent. Complainant has put forward that there are no indications that, before having notice of the dispute, Respondent made legitimate use of the Domain Name. On the contrary, the use of Respondent of the Domain Name cannot be considered as a bona fide offering of goods or services due the fact that Respondent uses the Domain Name to offer identical and similar goods and services (in particular windows) as Complainant. If an Internet user enters the website “www.optiwin.nl”, he is redirected to Respondent's other website “www.energate.com” where Respondent offers windows.
Furthermore, Complainant has established that Respondent has not been commonly known by the Domain Name. Respondent offers windows through the Internet and attracts visitors by using the Domain Name, which does not correspond to its own name.
Respondent has not disputed Complainant's assertions, the Panelist has not found any indications that would suggest that Respondent (a) before having notice of the dispute, made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods and services, (b) is commonly known by the Domain Name, or (c) is making a legitimate non-commercial use of the Domain Name, nor that the Respondent in any possible other way has a right to or legitimate interest in the Domain Name.
For these reasons, the Panelist finds that Complainant has satisfied article 2.1 sub b of the Regulations.
Pursuant to article 2.1 sub c of the Regulations, Complainant must demonstrate that the Domain Name has been registered or is being used in bad faith.
Complainant has proved, in accordance with article 3.2 sub a of the Regulations, that the Domain Name has been registered or is being used in bad faith as Respondent has offered to sell the Domain Name to Complainant.
Subsequently, Complainant has also established that, in accordance with article 3.2 sub d of the Regulations, the Domain Name has been registered or is being used in bad faith as Respondent, being a window manufacturer, has the intention to mislead Internet users, as they are directed to Respondent's other website. By acting in this way, Respondent creates a likelihood of confusion with Complainant's older trade mark registration and Complainant's products, as the products offered on Respondent's website, i.e. windows, are the same.
Given the fact that Respondent has not submitted a Response and thus not rebutted Complainant's contentions, the Panelist, on the basis of the evidence submitted by Complainant and the argumentation of Complainant, is satisfied that the Domain Name has been registered or is being used in bad faith.
The Panelist thus finds that Complainant has satisfied article 2.1 sub c of the Regulations.
For all the foregoing reasons, in accordance with articles 1 and 13 of the Regulations, the Panel orders that the domain name <optiwin.nl> be transferred to Complainant.
Willem J.H. Leppink
Dated: May 11, 2009