Complainant is Actona Company A/S, of Holstebro, Denmark, represented internally.
Respondent is GOOI Design of Heerenveen, the Netherlands.
The disputed domain names <actonacompany.nl> and <actona.nl> (the “Domain Names”) are registered with SIDN through Flexwebhosting BV.
The Complaint was filed in the English language with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2009. On July 6, 2009, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Names. On July 7, 2009, SIDN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
On July 13, 2009, the Center notified the Parties that, pursuant to Article 16 of the Regulations, and in the absence of an agreement between the parties, the language of the proceedings shall be Dutch. The Center therefore requested Complainant to provide at least one of the following:
1. satisfactory evidence of an agreement between Complainant and Respondent to the effect that the proceedings should be in English; or
2. the Complaint translated in Dutch; or
3. a request for English to be the language of the administrative proceedings, including arguments and supporting material as to why it would be unreasonably onerous for the Complainant if the proceedings were to be conducted in Dutch.
Complainant responded on July 15, 2009, that the proceedings should be in English since its headquarters are located in Denmark and its corporate language is Danish and English. Furthermore, because it has no employees who speak Dutch, all correspondence and documents will have to be translated into Dutch which involves extra costs and trouble for Complainant. Finally, all correspondence between Complainant and Respondent has been in English.
Respondent, although given the opportunity to do so by July 20, 2009, did not comment on this notification.
In accordance with the Regulations, Articles 5.1 and 15.5, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 22, 2009.
In accordance with the Regulations, Article 16, and using its provisional authority, the Center decided on July 22, 2009, to accept the Complaint as filed in English and to accept a response in either English or Dutch.
In accordance with the Regulations, Article 7.1, the due date for Response was August 11, 2009. On August 11, 2009, Respondent requested a one-month extension for its response. After allowing Complainant to respond to this request, the Center partly granted Respondent's request and extended the deadline for Respondent's response until, and including August 23, 2009. The Response was filed with the Center on August 23, 2009.
On August 24, 2009, the Center noted that Respondent indicated that it was prepared to transfer the Domain Names to Complainant and informed the parties that Complainant could file a request to suspend the proceeding to allow the Parties to implement any settlement reached between them. On August 25, 2009, Complainant informed the Center that a settlement could not be reached.
On August 25, 2009, Respondent filed two further submissions in response to Complainant's mail of August 25, 2009, regarding the impossibility of a settlement.
The Center appointed Hub. J. Harmeling as the Panelist in this matter on August 28, 2009. The Panelist finds that he 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.
Complainant supplies home furnishing products to retail stores worldwide.
Respondent is a customer of Complainant and sells home furnishing products.
Respondent is holder of the Domain Names. The Domain Names were registered by Respondent on August 6, 2008.
Complainant filed an application for registration of a Community Trademark, namely a word mark ACTONA for goods and services in class 20, which includes furniture. The Office for Harmonization in the Internal Market accorded June 9, 2009 as the filing date for Complainant's application, in accordance with Article 27 of the Community Trademark Regulation (Council Regulation (EC), No. 207/2009 of 26 February 2009). This trademark application is presently pending for registration and therefore at the moment of this decision, Complainant has no enforceable trademark rights in ACTONA.
Complainant contends that it has used its company name “Actona Company” as well as the name “Actona” as trade names in conducting its business since 2001. Respondent acknowledges that Complainant has conducted its business in the Netherlands for multiple years.
Complainant contends that it has established trade name rights with respect to “Actona Company” and “Actona” through public use thereof. Complainant contends that it can demonstrate that it has regularly used the trade names since 2001, when the name of the company was changed from “Marmorhuset” (established in 1981) into “Actona Company”. Complainant contends that it has registered a number of domain names in a number of countries (not including the Netherlands) over the last few years which involve the names “Actona” or “Actona Company” and that it has applied for a Community Trademark for ACTONA, which is pending for registration.
According to Complainant, Respondent has no rights or legitimate interests in the Domain Names since there is no similarity between Respondent's trade name “Gooi Design” and the Domain Names. Respondent registered the Domain Names in 2008 and they are linked to the website of Respondent, “www.gooidesign.nl”, through which website Respondent sells furniture and accessories, including Complainant's products.
Complainant contends that the Domain Names were registered and are being used in bad faith. The Domain Names were registered by Respondent after becoming Complainant's customer in 2008. By linking the Domain Names to the website of Respondent, Respondent suggests there is a special agreement between Complainant and Respondent (which does not exist) and Respondent hereby benefits from the reputation of Complainant. According to Complainant, Respondent is willing to transfer the Domain Names for more credit space.
On this basis, Complainant requests the transfer of the Domain Names.
Respondent contends that it informed Complainant about its intention to register the Domain Names in advance and that Complainant at the time did not object to such registration. According to Respondent, Complainant has no interest in obtaining the Domain Names since it has waited for a year before submitting its Complaint and Complainant has been registering domain names for multiple cc-tld's without a clear policy. After doing business in the Netherlands for years, Respondent questions whether the Domain Names are of importance to Complainant.
Furthermore, Respondent contends that it does not abuse any trademarks of Complainant, that it does not use the name “Actona Company” on its website, and that Complainant's Complaint should be rendered inadmissible because its claim was initiated against the incorrect entity (“GOOI Design” instead of “GOOI Design B.V.”).
Article 16 of the Regulations provides that in principle, the language of the proceedings shall be Dutch. The Panelist may however decide that the proceedings shall be English if one of the parties has no knowledge of the Dutch language.
The Center provisionally decided to accept the Complaint as filed in English and accept a Response in either English or Dutch.
Complainant has sufficiently argued that it has no knowledge of the Dutch language and that it would be unreasonably onerous for Complainant to translate all correspondence into Dutch. The Panelist observes that the Parties have corresponded in English; that Respondent has not objected to the use of the English language in these proceedings; and that Respondent has communicated with the Center in English. Although Respondent submitted its Response in Dutch, it appears to understand English and to have understood the Complaint. Its right of defense does not appear to be prejudiced if the language of the proceedings is English. Therefore, the Panelist confirms the provisional decision of the Center and decides that the language of the proceedings shall be English and to accept the Response as submitted in Dutch (see also AB Electrolux v. Marcel Vlaar, WIPO Case No. DNL2008-0005; Mappy SA v. Webhold, WIPO Case No. DNL2009-0016; and TripAdvisor LLC v. M. Lasage, WIPO Case No. DNL2009-0017).
Respondent made two further submissions in the sense of Article 10.2 of the Regulations on August 25, 2009, in which it responded to Complainant's notification of August 25, 2009 to the Center that a settlement was impossible.
According to Article 10.2 of the Regulations, the Panelist must determine the admissibility of such submissions.
Since the further submissions have no additional relevance to the current proceedings, the Panelist decides to disregard both submissions from Respondent in accordance with Article 10.2 of the Regulations.
Respondent contends that Complainant addressed its Complaint to the wrong entity and its Complaint can therefore be declared inadmissible. The Panelist understands this reference as an invocation of the inadmissibility of Complainant's Complaint.
The Regulations provide for a procedure under which a person or an organization (a complainant) may submit a complaint against a domain name holder (a respondent) to the Center in order to request a transfer of a domain name so that such complainant becomes the holder of that domain name instead of the respondent (Article 1 of the Regulations). SIDN confirmed on July 7, 2009 to the Center that “GOOI Design”, as indicated by Complainant in its Complaint, is the holder of both Domain Names. It is the domain name holder's responsibility to make sure that the name under which the domain name is registered corresponds to its name, further to its power to do this, as indicated in Article 7.1 of SIDN's General Terms and Conditions for .nl Registrants.
As SIDN identified Respondent as the holder of the Domain Names (which Respondent has received the Complaint and all relevant documentation (see Johnson & Johnson (corporation) v. Bellicus Media, WIPO Case No. DNL2009-0039)) the Panel rejects Respondent's invocation of the inadmissibility of the Compaint.
According to Article 2.1 of the Regulations, the requested remedy shall be granted if Complainant asserts and establishes each of the following:
“a. [the] domain name is identical or confusingly similar to:
I. a trademark, or trade name, protected under Dutch law in which the complainant has rights; or
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 complainant undertakes public activities on a permanent basis; and
b. the domain name holder has no rights to or legitimate interests in the domain name; and
c. the domain name has been registered or is being used in bad faith.”
Complainant contends that it has established trade names with respect to “Actona Company” and “Actona” through public use and that it has used them regularly since 2001 after changing the name of its company. Additionally, Complainant refers to its application for a Community Trademark. The Panelist understands this reference as an alternative basis for Complainant's request for transfer of the Domain Names.
First, the Panelist observes that Complainant cannot derive protection under Dutch law from the mere application for a Community Trademark. According to Article 6 of the Community Trademark Regulation, a Community Trademark can only be obtained by means of registration, which Complainant has not established. Furthermore, from the online database of the Office for Harmonization in the Internal Market (http://oami.europa.eu) it appears that the registration process has presently not been completed (see in this regards also Intershare, S.L. v. Mr. D. Marecaux, WIPO Case No. DNL2008-0036 and Implant Direct Europe AG v. Supracom B.V., WIPO Case No. DNL2008-0046).
Second, in relation to the contended right to trade name protection in the Netherlands, the Panelist observes the following. The Panelist understands that Complainant relies on trade name rights resulting from use of its (company) name “Actona Company” and its abbreviation thereof “Actona” in the Netherlands, although no explicit reference to such territory is made by Complainant. Considering that Respondent has not disputed such trade name protection, and in fact has acknowledged that Complainant has done business in the Netherlands for multiple years; and further taking into account Article 8 of the Paris Convention for the Protection of Industrial Property, to which both Denmark and the Netherlands are parties, the Panelist finds sufficiently established that Complainant holds a trade name right in “Actona Company”. Considering the absence of sufficient reference to the use of “Actona” as a trade name in the Netherlands, the Panelist finds that a trade name right in “Actona” cannot be established (see for example De Pedaleur B.V. v. Virtual Services Corporation, WIPO Case No. DNL2008-0047; and MultiRacks Ltd. v. Hackeberg Handelsonderneming, WIPO Case No. DNL2008-0052).
According to established case law, the top-level domain “.nl” must be disregarded for the purpose of assessing whether the Domain Names are identical or confusingly similar to the trade name in which Complainant has rights (see for example Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).
The Panelist finds that the domain name <actonacompany.nl> is identical to and that the domain name <actona.nl> is confusingly similar to Complainant's trade name “Actona Company” since the word “Company” is merely descriptive in Complainant's trade name.
Therefore, the Panelist finds that Complainant has complied with Article 2.1(a) of the Regulations.
According to Article 2.1(b) of the Regulations Complainant must demonstrate that Respondent has no rights or legitimate interests in the Domain Names. Case law shows that Complainant has to make a prima facie case that Respondent has no rights or legitimate interest and that Respondent must subsequently show rights or legitimate interests on its part by for example the circumstances as mentioned in Article 3.1 of the Regulations (see for example Société Air France v. A Coppola, WIPO Case No. DNL2009-0001).
The Panelist finds that Complainant has sufficiently demonstrated that Respondent has no rights or legitimate interests in the Domain Names. Respondent is not commonly known by the Domain Names and the Domain Names link to Respondent's own website “www.gooidesign.nl” through which Respondent sells furniture and accessories, including Complainant's products and competing products. The Panelist observes in this regard that Respondent does not use the name “Actona Company” on its website but that Respondent does not claim that it has any other right or legitimate interest with respect to the Domain Names. In these circumstances, the Panelist concludes that Respondent cannot be said to have rights or legitimate interests with regard to the Domain Names (see also R.E.M. Holding B.V. v. Baby Tally, WIPO Case No. DNL2009-0019).
Respondent's contention that Complainant did not object to Respondent's registrations in 2008 and that Complainant has waited for almost a year to submit its Complaint does not alter this finding.
The Panelist finds that Complainant has complied with Article 2.1(b) of the Regulations.
According to Article 2.1(c) of the Regulations Complainant must demonstrate that the Domain Names have been registered or are being used in bad faith. Complainant may demonstrate registration or use in bad faith by reference to the circumstances as laid down in Article 3.2 of the Regulations.
The Panelist finds that Complainant has sufficiently demonstrated that the Domain Names are currently used in bad faith. First the Domain Names were registered by Respondent in 2008 after entering into a business relationship with Complainant. Furthermore the Domain Names, at least up until the notification of the Complaint, linked to the website of Respondent, “www.gooidesign.nl”, through which Respondent sells goods for commercial gain. By linking the Domain Names to its own website, Respondent suggests there is a link between Complainant and Respondent whereby Respondent benefits from the reputation and the trade name “Actona Company” of Complainant. Second, Complainant has demonstrated that Respondent currently uses the Domain Names as leverage to obtain further and/or additional credit facilities from Complainant than it would otherwise expect to obtain. The Panelist is of the opinion that this use contributes to the qualification of use in bad faith in the meaning of the Regulations.
As a result of this finding, Respondent's argument in relation to the timing of registration by Respondent and the filing of the Complaint by Complainant – and notably the alleged communications with Complainant in that regard – is immaterial and does not require further discussion.
Consequently, the Panelist finds that Complainant has complied with Article 2.1(c) of the Regulations.
For all the foregoing reasons, in accordance with Articles 1 and 13 of the Regulations, the Panelist orders that the domain names <actonacompany.nl> and <actona.nl> be transferred to Complainant.
Hub. J. Harmeling
Dated: September 24, 2009