World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mr. A.C.S. Pinedo v. Marvyn Josefa

Case No. D2011-0152

1. The Parties

Complainant is Mr. A.C.S. Pinedo of Utrecht, Netherlands, represented by Camiel Beijer, Van Diepen Van der Kroef Lawyers, Netherlands.

Respondent is Marvyn Josefa of Willemstad, Netherlands Antilles1, represented by Helen Maatjes, IP Lawyers, Netherlands.

2. The Domain Name and Registrar

The disputed domain name <basilachill.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2011. On January 27, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On January 31, 2011, GoDaddy.com, Inc. 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 Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 February 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 21, 2011. The Response was filed with the Center on February 18, 2011.

The Center appointed Willem J. H. Leppink as the sole panelist in this matter on March 1, 2011. 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

Complainant is a sole proprietorship, trading from Utrecht, the Netherlands.

According to the extract of the Chamber of Commerce, the primary business activity of Complainant is to exploit and maintain websites.

Complainant is the owner of a Benelux trademark for the device mark consisting of the stylized words BASILACHILL.COM with application date July 28, 2010 (the “Trademark”)

Respondent has registered the Domain Name on February 3, 2006. The disputed domain name is currently registered by the registrar GoDaddy.

5. Parties’ Contentions

A. Complainant

In addition to its Trademark, Complainant alleges to have used BASILACHILL as a trade name for its business, which would be well-known to people in the Antilles (the “Trade name”).

According to Complainant, the disputed domain name is identical to the Trademark and the Trade name.

Complainant secondly alleges that Respondent has no rights or legitimate interest in respect of the disputed domain name, as Complainant would have developed the website which is active under the disputed domain name and because he has made payments relating to the disputed domain name between August 2006 and August 2010.

Thirdly, according to Complainant, Respondent has registered and used the disputed domain name in bad faith. Complainant argues that Respondent was an employee of Complainant responsible for managing the disputed domain name and that it has registered the disputed domain name in Respondent’s name without the prior knowledge or approval of Complainant.

B. Respondent

Respondent has rebutted the allegations of Complainant.

First of all, Respondent sets out that the company trading under the Trade name was founded by three persons: Complainant, Respondent and a third party. Secondly, Respondent contests that the invoices submitted by Complainant provide evidence that the payments were made by Complainant. According to Respondent, as a consequence of its co-ownership of the company, it has equal rights in respect of the Domain Name.

Respondent challenges that the disputed domain name was registered in bad faith.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(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.

Under paragraph 15(a) of the Rules:

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

A. Identical or Confusingly Similar

Complainant has rights in the Trademark and this is not contested by Respondent, be it that the Trademark was registered long after the registration date of the disputed domain Name. Albeit a figurative trademark, the most dominant element of the Trademark is “basilachill.com”.

The disputed domain name incorporates in its entirety the most dominant element of the Trademark, the Panel therefore finds that the disputed domain name is confusing similar to the Trademark within the meaning of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel has taken notice of the emails submitted by Respondent. The Panel finds that these emails indicate that Complainant and Respondent (and a third party) have had some form of cooperation until mid 2010. It appears that it was the intention of the three parties involved to have equal rights and obligations with respect to the company trading under the name Basilachill. In fact, from these emails it would appear that Complainant owes the other participants money, because of a withdrawal from the funds of the company by Complainant.

Respondent has demonstrated that it has made payments for the registration of the disputed domain name up and until September 2007. This Panel finds that the invoices submitted by Complainant do not provide evidence that payments have actually been made by Complainant.

In view of the above-mentioned cooperation until mid 2010, the registration of a trademark by Complainant after the alleged ending of the cooperation, and the payments made by Respondent in relation to the registration of the disputed domain name, the Panel finds that Complainant has failed to prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Panel would like to note here that the scope of the UDRP was and still is to prevent cybersquatting. The dispute between Complainant and Respondent is – based on the facts presented to the Panel – not a case of cybersquatting but rather relates to contractual matters between the parties. UDRP is not designed to resolve such matters which are best dealt by competent courts.

The Panel finds that the second element has not been established.

C. Registered and Used in Bad Faith

As the Panel has found that the second element has not been established, there is no need for discussing whether the disputed domain name has been registered and is being used in bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Willem J. H. Leppink
Sole Panelist
Dated: March 11, 2011


1 The information in the case file, including the whois records, makes reference to the Netherlands Antilles, although as a result of the constitutional changes in the Kingdom of the Netherlands the country of the Netherlands Antilles has been dissolved as per October 10, 2010, and the island of Curaçao has become an independent country within the Kingdom of the Netherlands.

 

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