WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

De MandemakersGroep b.v. v. Marcus van Oosterum / Dutchmatic LLC

Case No. D2015-1108

1. The Parties

The Complainant is De Mandemakers Groep b.v. of Waalwijk, Netherlands, represented internally.

The Respondent is Marcus van Oosterum of Ravenstein, Netherlands, self-represented.

2. The Domain Name and Registrar

The disputed domain name <mandemakers.com> (the “Domain Name”) is registered with EnCirca, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2015. On June 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 7, 2015, the Registrar 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” 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 July 15, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2015. The Response was filed with the Center on August 4, 2015.

The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on August 18, 2015. 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.

On September 2, 2015, Administrative Panel Procedural Order No. 1 was issued to the Parties, inviting the Complainant to comment within seven days on the Respondent’s assertions included in the Response allowing the Respondent thereafter seven days to react to those comments.

On September 9, 2015, the Complainant filed Further Complaint Statements and on September 16, 2015, the Respondent filed a Further Response.

4. Factual Background

Keukencentrum Mandemakers B.V., an affiliated company of the Complainant, owns the Benelux trade mark MANDEMAKERS KEUKENS (registration number 0624554) filed on December 16, 1997 (the “Trade Mark”). The Complainant owns the European Union Community Trade Mark MANDEMAKERS, number 3777695, registered and published on December 12, 2005. The aforementioned affiliated company Keukencentrum Mandemakers B.V. registered the domain name <mandemakers.nl> on December 31, 1997. The business of the Complainant was registered in the Chamber of Commerce register on May 18, 1977.

Complainant’s business comprises a chain of kitchen showrooms in the Netherlands that sell and install kitchen furniture, sinks, faucets and appliances.

The Respondent registered the Domain Name on October 26, 1999 as part of a portfolio of over two hundred other surname domains with the generic top-level domain “.com”. On January 1, 2000, Respondent established a partnership business that developed its own infrastructure to provide personal shared domain services using the trade mark fixedvalue.com. On March 6, 2003, the Respondent founded a corporation with the main purpose to sell personalized email and web services to customers worldwide. This corporation was operating the Domain Name under its registered tradename VIRTUAL INDENTITIES and had acquired a business license to conduct Internet retail sales.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is identical to the domain name <mandemakers.nl> of the Complainant with the exception of the top-level domain “.com” instead of “.nl”.

According to the Complainant, the Respondent has no rights or legitimate interests in the Domain Name since the Respondent has no rights to the word “Mandemakers” nor is the Respondent known by that name. The Complainant submits that the Respondent is not authorized or licensed to use the Trade Mark, nor is the Respondent a client of the Complainant. The Complainant further states that to the best of its knowledge the business activities of the Respondent are not in kitchen sales or in any activities that are similar to the activities of the Complainant. The Complainant contends that the Respondent uses the Domain Name to redirect visitors to a parked website that contains hyperlinks to websites that sell competing kitchen products and that it offers the Domain Name for sale. Such use, the Complainant submits, cannot be considered a bona fide use nor a fair or noncommercial use. According to the Complainant, linking a domain name to a domain parking service with a trade mark owner’s name in mind and in the hope and expectation that Internet users searching for information about the business activities of the trade mark owner will be directed to the parking service page does not provide a legitimate interest in that domain name under the Policy.

The Complainant, in his Further Complaint Statements in response to the Administrative Panel Procedural Order No. 1, also asserts that the Respondent has made changes to the parked website since the Complaint was filed by the Complainant, so that it now shows links to websites that are not related to the business of the Complainant, except for a category of related hyperlinks ("Gerelateerde links") some of which connect to websites of competitors of the Complainant. The Complainant contends that the Respondent deliberately turned on this page element using the instructions in the the Sedo Parking manual of “sedo.com”, the company providing the hyperlinks to the website under the Domain Name. Furthermore, the Complainant submits that the Respondent is responsible for the content appearing on the website connected to the Domain Name, regardless whether it exercises direct control over such content.

According to the Complainant, the Trade Mark, the showrooms and the domain name <mandemakers.nl> were all registered and used by the Complainant long before the Respondent registered the Domain Name. When the Respondent registered the Domain Name, the Complainant submits its company was already in operation for over 22 years. The Complainant contends that the Respondent registered the Domain Name while he was aware thereof. The Complainant also submits that the Respondent uses the website connected to the Domain Name to divert Internet users from the Complainant’s business to the websites of the Complainant’s competitors to the disadvantage of the Complainant and by doing so disrupts the Complainant’s business. In addition, the Respondent offers the Domain Name for sale underlining that the Respondent is acting in bad faith.

The Complainant further asserts that the Respondent has been involved in court proceedings in the Netherlands in 2000 regarding the use of the domain name <ziengs.com>. During that procedure the court ordered the Respondent to transfer the said domain name to its legitimate owner Ziengs Shoes B.V. According to the Complainant, this shows that the Respondent has a controversial reputation in the field of domain name use.

B. Respondent

The Respondent points out that the Trade Mark consists of an image of a logo depicting the words; “Mandemakers Keukens, de kwaliteit is een feit” (“Mandemakers Kitchens, the quality is a fact”). Respondent asserts that the only similarity of the Trade Mark and the Domain Name is the use of the surname Mandemakers and that the Trade Mark consists of seven words of which only one is identical.

The Respondent concurs he is a domain name entrepreneur and one of the pioneers in the field of Surname domain name sharing. According to the Respondent, anticipating a shortage of surname domain names, the Respondent registered the Domain Name in October 1999 as part of a portfolio of over two hundred other surname domain names in the top-level domain “.com”. The Respondent states that he has always considered his surname domain portfolio as a valuable asset and expects the value to rise as the “.com” domain gains significance with the rise of the number of alternative domains.

The Respondent confirms that he uses SEDO’s domain parking service to attract interested parties to buy domains. While parking the domain with SEDO the Respondent has received some income generated by the Google advertisements that are successful at redirecting visitors, but, according to the Respondent, in the case of the website connected to the Domain Name this does not exceed the Respondent’s costs for operating the website and is of little commercial significance.

The Respondent states that he accepts responsibility for the selection of keywords and is willing to investigate reported claims of trade mark infringement by content shown on the website connected to the Domain Name, and delete keywords or links that are found to be infringing.

The Respondent further states that he did not change the master keyword for the website connected to the Domain Name and never entered, deleted or changed any keywords or links on that website.

The Respondent contends that he had no knowledge of the Trade Mark at the time of registration of the Domain Name and points out that, while the fact that the Complainant’s company existed for 22 years might contribute to the likelihood of any such knowledge, it does not prove prior knowledge or lack of credibility on the side of the Respondent. The Respondent has never visited or noticed the Complainant’s showrooms or stores and has not been interested in the business of kitchens or buying a kitchen. According to the Respondent, the Complainant does not produce any direct evidence that the Respondent registered the Domain Name in bad faith. The Respondent further submits that he did not acquire the Domain Name with the intent to sell it to the Complainant, to disrupt its business or to confuse consumers.

Furthermore, the Respondent points out that “.com” domain names are registered on a first come, first served basis with no preset requirements for tradename research or personal identity. The Respondent contends that the Complainant has to take responsibility for the fact that he missed the opportunity or failed to register the Domain Name first. Furthermore, according to the Respondent, the Complainant has unreasonable delayed pursuing its rights or claims of ownership in the Domain Name.

Regarding the case concerning the domain name <ziengs.com> in 2000 the Respondent submits that he may have made a mistake at the time, due to lack of experience, and points out that this single case does not in itself result in a bad reputation, given also that in the present case there is no evidence of controversial domain name use by the Respondent since then.

Finally, the Respondent requests the Panel to make a finding of reverse domain name hijacking, based on the following circumstances which the Respondent deems present in this case:

- the Domain Name was registered before the Trade Mark;

- the Complainant has initially filed the Complaint without any evidence of bad faith registration by the Respondent;

- the Complainant has misrepresented the Trade Mark, by describing it as “Mandemakers Keukens” while it reads in full “Mandemakers keukens de kwaliteit is een feit”;

- the Complainant has put pressure on the Respondent to turn over the Domain Name in a letter that was sent after the Complainant filed the Complaint.

6. Discussion and Findings

A. Identical or Confusingly Similar

Rights in a mark

The Complainant (De Mandemakersgroep B.V.) relies on rights in a Benelux device mark, filed on December 16, 1997 and registered under no. 0624554, and held by Keukencentrum Mandemakers B.V. (the “Trade Mark”), as well as the Community trade mark MANDEMAKERS, registered on November 16, 2005, under No. 003777695 held by the Complainant. In addition it relies on rights in the trade name “Mandemakers Keukens” held by Keukencentrum Mandemakers B.V., dating back to 1977.

Under the UDRP, a complainant can rely on a registered trade mark and on common law trade mark rights. Rights in a trade name may qualify as common law trade mark rights, if they meet the requirements for such rights e.g., as developed under UDRP cases over the years. To this end, the Complainant must show that the name has become a distinctive identifier associated with the Complainant or its goods or services. Relevant evidence of such “secondary meaning” includes (i) length and amount of sales under the trade mark, (ii) the nature and extent of advertising, (iii) consumer surveys, and (iv) media recognition (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") paragraph 1.7). The Panel notes that no evidence of this secondary meaning has been submitted. However, although the Respondent has disputed that the trade name “Mandemakers Keukens” had become a distinctive identifier when it registered the Domain Name in 1999, it does not dispute that this is the case now. Therefore, the Panel concludes that the Complainant for the purpose of these proceedings has common law trade mark rights in the name “Mandemakers Keukens”.

Both the Trade Mark and the trade name have been registered before the Domain Name, which was registered on October 26, 1999. However, the rights in both the Trade Mark and the trade name are not held by the Complainant, but by Keukencentrum Mandemakers B.V. From the submissions of the Complainant, the Panel understands that this is a subsidiary of the Complainant and that the Complainant as a group company has received a license or other authorization from Keukencentrum Mandemakers B.V. to use the Trade Mark and the trade name “Mandemakers Keukens”. Although no evidence of a licensing arrangement has been submitted (as to what is normally required in this situation, see WIPO Overview paragraph 1.8) the Respondent has not disputed these submissions, so that the Panel concludes that the Complainant has rights in both the Trade Mark and the name “Mandemakers Keukens”.

Confusing similarity

According to the WIPO Overview 2.0 paragraph 1.2, “the threshold test for confusing similarity under the UDRP involves a comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trade mark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.”

The Trade Mark is a logo consisting of a blue panel with the words “Mandemakers Keukens” in white and a smaller red panel, placed diagonally across the lower right end of the blue panel with, in much smaller print, the words “De kwaliteit is een feit” (translated to English as “the quality is a fact”). Clearly, the words “Mandemakers Keukens” visually stand out due to the much larger print in which they are displayed.

Both the Trade Mark and the trade name contain the word “Keukens”, meaning “kitchens” in Dutch. As set out in paragraph 1.2 of the WIPO Overview 2.0, cited above, the addition of a common, dictionary or descriptive term is generally regarded insufficient to prevent Internet user confusion for purposes of the first Policy element. The Panel concludes that the name “Mandemakers” is the dominating element in both the Trade Mark and the trade name.

As the Domain Name consists of the name “Mandemakers”, while the suffix “.com” is generally disregarded for the confusing similarity test, the Panel concludes that the Domain Name is confusingly similar to both the Trade Mark and the trade name “Mandemakers Keukens”.

B. Rights or Legitimate Interests

The Complainant has to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name. Once such prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Domain Name.

The Complainant has submitted that the Respondent is not authorized or licensed to use the Trade Mark, and that the Respondent is not a “client”, which the Panel understands to denote a distributor or a similar type of professional trading party. This has not been disputed by the Respondent. Furthermore, the Complainant has submitted evidence that the Domain Name is connected to a website that contains hyperlinks to websites that sell competing kitchen products and that the Respondent offers the Domain Name for sale. It has further submitted that the links on the website are placed by the company “Sedo.com” under an agreement with the Respondent which entitles the Respondent to payments if and to the extent that visitors to the website click on one of the links displayed there. The Respondent has not disputed this and has confirmed its responsibility for the content of the website, indicating that it could and would change the master keyword and any keywords on the website if they were found to infringe the rights of the Complainant. However, the Respondent denies having made a profit from the links on the website connected to the Domain Name.

Although use of a domain name for a parking website, containing sponsored links to third party websites, may be permissible in some circumstances, it would not confer rights or legitimate interests where the website connected to the domain name contains links to websites offering goods or services competing with those of the complainant as such use is held not to constitute a “bona fide offering of goods or services” or a “legitimate noncommercial or fair use” of the domain name (see Sanofi v. Hka c/o Dynadot Privacy, WIPO Case No. D2014-0829 and the cases cited in WIPO Overview 2.0 paragraph 2.6). In the view of the Panel, this is also the case if the Respondent would not at this stage have made a profit with such use of the Domain Name, if only because the evidence provided by the Respondent shows that it has earned some income from that agreement.

The Respondent submits that as of the year 2000 it has made a business of assembling domain names containing surnames, as it saw a business in the use or sale thereof. The Respondent has provided screenshots from the Internet Archive from 2001 and 2003 that appear corroborate his surname claim. The Panel notes that generally speaking this use of domain names might be legitimate, but that each case must be assessed on the particular facts and circumstances.

It follows that the Respondent apparently has (also) chosen the Domain Name in order to take advantage of the reputation of the Trade Mark by attracting customers to its website under the Domain Name who assume that this website is either provided by or has been approved of by the Complainant (see Sanofi v. Hka c/o Dynadot Privacy, WIPO Case No. D2014-0829).

Based on all of the above, the Panel concludes that the Complainant has shown that the Respondent does not have a right or legitimate interest in the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.

The Policy, paragraph 4(a)(iii), obliges the Complainant to establish that the Domain Name “has been registered and is being used in bad faith.” This implies that in each of the four alternatives mentioned as an example in paragraph 4(b) of the Policy, the Complainant in this case must demonstrate that it is likely that the Respondent, when registering the Domain Name, knew or should have known the Trade Mark or the trade name “Mandemakers Keukens”.

The Complainant has submitted that the Respondent registered the Domain Name “while he was aware of the domain name mandemakers.nl and of the Mandemakers Keukens showrooms and of the trademark rights of the Complainant”. The Respondent has expressly disputed that it was aware of the Trade Mark or the trade name “Mandemakers Keukens” when it registered the Domain Name in 1999 and that either of them at that time had become a distinctive identifier.

The Complainant has not submitted any evidence of actual awareness of the Respondent of either the Trade Mark or the trade name “Mandemakers Keukens” at the time of registration of the Domain Name in 1999.

In certain circumstances bad faith registration may also be based on proof that at the time of registration the respondent “knew or should have known” about the existence of the trade mark rights concerned. This may be the case if the trade mark was shown to be well-known or in wide use on the Internet or otherwise at the time the domain name was registered (WIPO Overview 2.0 paragraph 3.4). Relevant evidence could consist of documents showing the (i) length and amount of sales, (ii) the nature and extent of advertising, (iii) consumer surveys and (iv) media recognition (news and magazine articles, internet media publications etc.).

The Panel notes that the Complainant has submitted hardly any such evidence of the reputation of either the Trade Mark or the trade name “Mandemakers Keukens” at the time of registration of the Domain Name in October 1999. The Trade Mark was registered only two years before the Domain Name so that, without supporting evidence (which would be in the control of the Complainant, but which has not been submitted), it cannot be assumed that the Trade Mark was well-known at the time of registration of the Domain Name in October 1999. Furthermore, although at that time the company Mandemakers Keukens B.V. already existed for 22 years, no evidence of the reputation of the trade name “Mandemakers Keukens” in 1999 was submitted by the Complainant. The mere fact that the company had been in existence for 22 years is in itself insufficient evidence that the trade name “Mandemakers Keukens” at the time of registration of the Domain Name in 1999 was well-known or otherwise had such a reputation in the Netherlands that it might be assumed that the Respondent at the time of registration knew or should have known of the Complainant’s rights in the Domain Name. As paragraph 4(a)(iii) of the Policy obliges the Complainant to show that the Domain Name has been registered andis being used in bad faith, the failure of the Complainant to demonstrate evidence of its reputation (e.g., through unregistered trade mark rights) at the time of the registration of the Domain Name implies that it has not provided the required evidence in relation to bad faith registration. The Panel notes in conclusion that the present decision does not preclude the possibility of court action.

On balance, based on the above, the Panel concludes that the Complainant has not met its burden under the Policy.

7. Decision

For the foregoing reasons, the Complaint is denied.

Wolter Wefers Bettink
Sole Panelist
Date: September 24, 2015