WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Karl Dungs GmbH & Co. KG v. Zeptor Private

Case No. DNL2013-0063

1. The Parties

The Complainant is Karl Dungs GmbH & Co. KG of Urbach, Germany, represented by Rüger, Barthelt & Abel, Germany.

The Respondent is Zeptor Private of Barneveld, the Netherlands, represented by Advocatenkantoor Van Eeckhoutte, the Netherlands.

2. The Domain Name and Registrar

The disputed domain name <dungs.nl> (the “Domain Name”) is registered with SIDN through Mijndomeinpartner.nl.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2013. On December 9, 2013, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On December 10, 2013, 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 that the Complaint was administratively deficient, the Complainant filed an amended Complaint on December 13, 2013. The Center verified that the Complaint together with the Amended Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).

In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 16, 2013. In accordance with the Regulations, article 7.1, the due date for Response was January 5, 2014. On January 2, 2014, the Respondent requested an extension of the Response due date. On January 3, 2014, the Complainant indicated that it agreed with the Respondent’s request. Accordingly, the Center extended the due date for Response to January 19, 2014. The Response was filed with the Center on January 16, 2014.

On January 21, 2014, SIDN commenced the mediation process. On February 20, 2014, SIDN extended the mediation process until March 22, 2014. On March 24, 2014, SIDN further extended the mediation process until April 21, 2014. On April 16, 2014 SIDN informed parties that the dispute had not been solved in the mediation process.

The Center appointed Richard C.K. van Oerle as the panelist in this matter on April 29, 2014. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.

4. Factual Background

The Complaint is based on, inter alia, Community trademark number 9424061, filed on October 5, 2010, for the word mark DUNGS, for goods and services in classes 9 and 42 (hereafter the “Trademark”).

The Domain Name was registered on March 20, 2012.

5. Parties’ Contentions

A. The Complainant

Insofar as relevant, the Complainant contends the following:

The Complainant’s Trademark DUNGS and the Domain Name are identical.

The Respondent sells and offers for sale under the Domain Name distributing, regulating, measuring, controlling and monitoring apparatus for heating and airconditioning installations. These goods are identical to the good for which the Trademark is filed and used.

The Respondent does not have a legitimate interest in the Domain Name. The Respondent has neither registered nor used the Domain Name prior to the Complainant’s Trademark. The Respondent is not as an individual, business or other organization commonly known by the Domain name.

The Respondent exclusively makes commercial use of the Domain Name, in particular by misleading consumers to think that the Respondent is the Dutch branch of the Complainant. The Respondent does not have a commercial relation with the Complainant at all. The Respondent is not an authorized dealer of the Complainant. Although the Respondent may have the right to resell original products of the Complainant, this does not provide a right in the registration and use of the Complainant’s Trademark. The Respondent uses the Trademark for a “click-through domain” to switch users to its own product range.

The Domain Name suggests that the Respondent is either the trademark owner or that the website is the official website of the Complainant for the Netherlands.

The Respondent has registered and used the Domain Name in bad faith. The Respondent uses the Domain Name as an entrance or click-through website to switch customers of the Complainant to its own company and directly competing products. Clicking on the item ‘products’ on the website “www.dungs.nl” transfers the user automatically to the Respondent’s website “www.ittcontrols.com”. On this website not only the Complainant’s products are offered but also similar competing products.

B. The Respondent

Insofar as relevant, the Respondent contends the following:

The Respondent does not contest the rights claimed by the Complainant in the Trademark.

The Respondent may continue selling the Complainant’s original products that have lawfully been put into circulation by the Complainant. As an independent reseller the Respondent has the right to promote its resale of these products on the Internet, for which - for the sake of being found on the Internet - the use of the Domain Name is a legitimate use.

The Respondent has a commercial interest in being found on the Internet when people are searching for certain hardware of the Complainant. The Domain Name is not used as a “click-through domain” to competing products.

The registration of the Domain Name itself or the search result on Google do not give the impression that there is a commercial link between the Respondent’s business and the business of the Complainant or that it belongs to the Complainant’s distribution network, or that there is a special relationship between both businesses. On the contrary, the page layout differs substantially from “www.dungs.com”. There is a totally different look and feel. The Complainant’s logo is not at all displayed at “www.dungs.nl”. The trade name of the Complainant is not prominently placed on the website, and cannot by itself raise the incorrect impression that there is a relevant legal relationship between the Complainant and the Respondent, in particular, that the Respondent is an authorized reseller of the Complainant.

The Respondent and the Complainant operate in a “specialized business environment” which is not open to the consumer. Customers of the Respondent are only professional people working in the oil and gas industry, and will therefore with no doubt - at first glance - recognize the website of the Respondent as evidently not belonging or being part of the Complainant’s company, nor will these people think that the Respondent is a part or subsidiary company of the Complainant.

Any click on a hyperlink shown on “www.ittcontrols.com/brands/dungs/” or “www.dungs.nl” leads only and immediately to (a deeplink of) “www.ittcontrols.com”.

In the copyright notice, the Respondent states that: “ITT Controls is an independent distributor and reseller in the oil and gas industry.”

Furthermore, in its disclaimer the Respondent states: “ITT Controls is an autonomous, independent reseller of various products from different manufacturers. ITT Controls is not affiliated with any brand and/or any other manufacturer mentioned on this website.”

The Trademark is included at “www.ittcontrols.nl” in a long list of brand products that are for resale by the Respondent.

In consideration of the aforementioned facts and circumstances the Respondent therefore makes the absence of a mutual relationship between the parties sufficiently clear.

The Respondent has a legitimate interest in the Domain Name because it actually offers the Complainant’s original products at “www.dungs.nl”, only uses the web page to offer the Complainant’s products and does not offer nor represent competing products or brands on that web page. Thus, the Trademark is not misused to promote other or competing brands or products.

6. Discussion and Findings

Based on article 2.1 of the Regulations, a claim to transfer a domain name must meet three cumulative requirements:

a. the domain name is identical or confusingly similar to a trademark, or trade name, protected under Dutch law in which the complainant has rights, or other name mentioned in article 2.1(a) sub II of the Regulations; and

b. the registrant 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.

Considering these requirements, the Panel rules as follows.

A. Identical or Confusingly Similar

The Complainant has established that it owns the Trademark.

It is established case law that the top-level domain “.nl” may be disregarded in assessing the similarity between the relevant trademark on the one hand, and the domain name on the other hand (see: Taylor Made Golf Company, Inc. v. Lotom Group S.A., WIPO Case No. DNL2010-0067; Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).

The Domain Name incorporates the entirety of the Trademark.

The Panel finds that the Domain Name is confusingly similar to the Complainant’s Trademark within the meaning of article 2.1(a) of the Regulations. Therefore the first requirement is met.

B. Rights or Legitimate Interests

Many UDRP panels have taken the view that normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.3). Frequently these are referred to as the Oki Data principles (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). The Oki Data decision has been rendered under the Uniform Domain Name Dispute Resolution Policy (UDRP) and has been confirmed to be of relevance for the Regulations, inter alia, in Seiko EPSON Corporation v. ANEM Computers / ANEM, WIPO Case No. DNL2010-0024; Maison Louis Latour v. Jos Beeres Wijnkoperij, WIPO Case No. DNL2011-0074; and recently Bayerische Motoren Werke Aktiengesellschaft v. Quispel Motoren, WIPO Case No. DNL2013-0026.

In this case, the core question is whether the Respondent is using the website under the Domain Name to sell only the trademarked goods. The Panel has reviewed the screenshots provided by the Complainant and has also reviewed the current version of the website under the Domain Name.

The web page to which the Domain Name resolves is obviously part of the website of the Respondent. The Respondent’s logo, name and contact details fill the whole left part of the web page.

In the central part of the web page under the Domain Name a description is given about the Complainant and the products and components offered by the Complainant under the Trademark. Some (general) information about the products is provided (on quality, safety, the complete range, etc.).

On top of this page there are four links: Home, Organisation, Products and Brands of which the first two lead to pages with information about the Respondent, and the last two refer to pages on the Respondent's website with brands for products that compete with the products that the Complainant's has the Trademark for.

On the right-hand side the visitor finds (from visit to visit changing) links to suppliers of various other products, also distributed by the Respondent, which are (at least partly) products similar to those of the Complainant but made by competitors of the Complainant.

Any click on a hyperlink shown on the web page under the Domain Name leads only and immediately to (a deeplink of) “www.ittcontrols.com”.

Considering the above, the Panel is of the view that it cannot be said that the Respondent is using the website under the Domain Name to only sell the trademarked goods. The website makes it relatively easy for users to switch to another product than the Complainant’s.

The Respondent is thus using the Domain Name incorporating the Trademark to also divert Internet users to competing products. The Panel therefore finds that the Respondent cannot be said to have rights to or legitimate interests in the Domain Name.

The Complainant has thus established the second element of article 2.1(b) of the Regulations.

C. Registered or Used in Bad Faith

The Panel refers to its considerations under 6.B above.

The Panel finds that the Domain Name is being used by the Respondent for commercial gain by intentionally attracting Internet users to its website where the Respondent is also offering goods of the Complainant’s competitors, through trading off the goodwill of the Trademark and the likelihood of confusion which may arise with the Trademark as to the source, sponsorship and endorsement of the website. This constitutes evidence of bad faith registration and use in accordance with article 3.2(d) of the Regulations.

Therefore, the Panel finds that the Complainant has also established the third element of article 2.1 of the Regulations.

7. Decision

For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain name <dungs.nl> be transferred to the Complainant.

Richard C.K. van Oerle
Panelist
Date: May 6, 2014