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WIPO

WIPO Arbitration and Mediation Center

ARBITRATION AWARD

Stichting VVV Groep Nederland v. C. Henriquez

Case No. WIPO2007NL21

In an arbitration
under the Regulations on
.nl Domain Names
between:

Stichting VVV Groep Nederland
The Netherlands

(Plaintiff)

and

C. Henriquez
Chile

(Defendant)

Arbitration Tribunal
Mr. Hub. J. Harmeling
Amsterdam

This arbitration award is rendered by me as arbitrator under the Regulations for Arbitration on .nl Domain Names (hereinafter referred to as the Regulations) of the Stichting Internet Domeinregistratie Nederland (hereinafter referred to as SIDN), in a dispute between Stichting VVV Groep Nederland (hereinafter referred to as Plaintiff) and C. Henriquez (hereinafter referred to as Defendant) concerning the Domain Names <vvvwebwinkel.nl>; <vvv-webwinkel.nl>; <vvvlandvanmaasenwaal.nl>; and <vvv-landvanmaasenwaal.nl>.

 

1. The Parties

The Plaintiff in these proceedings is Stichting VVV Groep Nederland, a foundation registered under the laws of the Netherlands, with its registered office in Leersum and is represented by Vereenigde in The Hague, the Netherlands. The Defendant is C. Henriquez, a private individual living in Talca, Chile and holder of the domain names in dispute.

 

2. The Domain Names and Participants

The Domain Names in dispute are:

- <vvvwebwinkel.nl>; registered on April 18, 2006;

- <vvv-webwinkel.nl>; registered on April 18, 2006;

- <vvvlandvanmaasenwaal.nl>; registered on September 8, 2005;

- <vvv-landvanmaasenwaal.nl>; registered on September 8, 2005.

These domain names in dispute are hereinafter jointly referred to as theDomain Names . The Domain Names are registered by the Defendant and the participant for the Domain Names is Easyhosting B.V., with a registered office in Eemnes, the Netherlands.

 

3. Procedural History

In accordance with Article 6.3 of the Regulations, the Complaint was filed with the WIPO Arbitration and Mediation Center (hereinafter referred to as the Center) by Plaintiff by e-mail on November 19, 2007 and in hard copy on November 22, 2007. After the Center’s determination that the Complaint met all formal requirements of Article 6.3 of the Regulations, with which the Arbitration Tribunal agrees, the Center duly notified the Defendant by e-mail and by postal mail about the Complaint on November 23, 2007. The Arbitration Tribunal therefore finds that the procedure started on November 23, 2007.

The Defendant did not use his right to submit a Statement of Defence within the 20 days time limit as laid down in Article 9.1 of the Regulations. Accordingly, the Center notified the Parties about the Defendant’s default on December 14, 2007.

After the Center received a Statement of Acceptance and Declaration of Impartiality and Independence, in accordance with Article 10 of the Regulations, an Arbitration Tribunal consisting of one arbitrator, namely Mr. Hub. J. Harmeling, was appointed on January 16, 2008.

Parties have not submitted additional statements; there has not been a hearing; and the Arbitration Tribunal has not issued any Partial or other Awards in this case.

 

4. Factual Background

Domain Names

The Domain Names were first registered by a third party on September 8, 2005 (<vvvlandvanmaasenwaal.nl> and <vvv-landvanmaasenwaal.nl>) and on April 18, 2006 (<vvvwebwinkel.nl> and <vvv-webwinkel.nl>). The Domain Names are currently registered in the name of the Defendant and are not used.

Trademarks

The Plaintiff owns the following Benelux trademarks:

- Benelux trademark registration no. 621850 for VVV, registered for goods and services in classes 16, 35, 39, 41 and 43, registered on June 17, 1997;

- Benelux trademark registration no. 445660 for the VVV device for goods in class 16, registered on May 4, 1988;

- Benelux trademark registration no. 158300 for the VVV device, registered for services in classes 35, 39, 41 and 41, registered on December 14, 1988.

These trademarks (hereinafter jointly referred to as the VVV trademarks) are being used in relation to the goods and services registered, more in particular for providing (information on) a wide range of leisure, tourist and recreation services in the Netherlands.

Trade name

Furthermore, the Plaintiff owns the trade name rights in the sign “VVV” by means of extensive and longstanding use.

 

5. Parties’ Contentions

A. Plaintiff

Contentions

The Plaintiff contends that it has provided a wide range of leisure, tourist and recreation services in the Netherlands under the name of VVV since 1885 and that it is currently market leader in providing tourist information in the Netherlands, among other means, through its own website “ www.vvv.nl” and through the websites of its affiliates.

The Plaintiff contends that the Domain Names were first registered by the ‘Regionaal Bureau voor Toerisme Rivierenland’ (hereinafter referred to as RBT). RBT provides tourist information and related services in the Dutch region ‘Rivierenland’, among other ways, through its website “ www.toerisme-rivierenland.nl”. Consequently, both VVV and RBT are active in the same field of business. RBT used the Domain Names to promote its tourist magazine “Uit in de Regio”.

The Plaintiff contends that it has informed RBT on various occasions starting on August 30, 2006 of its prior trademark rights to “VVV”, requesting RBT to voluntarily transfer the Domain Names. RBT indicated that it would be willing to transfer the Domain Names but first wished to negotiate possible participation in the VVV foundation. During the negotiations that followed, as the Plaintiff contends, RBT used the Domain Names to come to an agreement with VVV on favorable conditions. The Plaintiff has submitted correspondence in support of these contentions.

The Plaintiff contends that after negotiating for about a year, parties did not come to an agreement on their commercial relationship. The Plaintiff has sent a final letter to RBT requesting again the transfer of the Domain Names on October 17, 2007, to which the Plaintiff has not received an answer.

Around November 1, 2007, it came to the Plaintiff’s attention that the Domain Names had been transferred to the Defendant and that all web content that was previously linked to the Domain Names had been removed. The Plaintiff contends that this transfer was clearly initiated to frustrate further proceedings. Since the Domain Names include Dutch wording, there is no reason that these Domain Names are of (true) use to an individual from Chile. Furthermore, Plaintiff contends that it is likely that RBT and the Defendant wish to make financial profit from the registration of these Domain Names.

Grounds of the complaint

The Plaintiff contends that the registration and/or use of the Domain Names infringe its trademark and trade name rights, as they include the element “VVV”, a sign in which VVV owns prior rights. The elements “webwinkel” and “landvanmaasenwaal” (a Dutch region) are fully descriptive.

In support of this, the Plaintiff furthermore refers to its local and regional offices in the Netherlands which all have their own website consisting of the element “VVV” in combination with the name of the town or region. There is a risk of confusion among the public as the public may think that the Plaintiff exploits a web shop (<vvvwebwinkel.nl> and <vvv-webwinkel.nl>) or that the Domain Names <vvvlandvanmaasenwaal.nl> and <vvv-landvanmaasenwaal.nl> belong to one of its offices in that region. The public may easily think that the Domain Names are owned by VVV offices in that region and that products provided via that website under the Domain Names have the consent of Plaintiff.

Moreover, the Plaintiff contends that the registration of the Domain Names prevents the Plaintiff from choosing the most suitable domain name if it wishes to initiate a web shop or offer leisure information in the region of Maas en Waal.

Lastly, the Plaintiff contends that the Defendant has no reason to register these exact Domain Names and with the registration thereof, the reputation and distinctiveness of the VVV trademarks is damaged and the Defendant enjoys unfair advantage therefrom.

Remedies requested

Based on reasons described above, the Plaintiff requests the Arbitration Tribunal to find:

1. that the registration of the Domain Names infringes the Plaintiff’s trademark and/or trade name rights;

2. that Plaintiff shall become the holder of the Domain Names and that the award shall replace the form required by SIDN for the Change of Domain Name Holder;

3. that the Defendant is prohibited from registering domain names similar to the contested Domain Names and is prohibited from registering any other domain name with the element ‘VVV’ in the future, liable to a penalty of EUR 2.500 per domain name;

4. that the Defendant shall pay the costs of the procedure – EUR 2.250 – and of the legal assistance involved in drafting and filing of the Complaint – currently in the amount of EUR 1.987,50;

5. that the award be declared enforceable regardless of whether an appeal is lodged.

B. Defendant

The Defendant has not submitted a Statement of Defence. This Award is therefore rendered in default.

 

6. Discussion and Findings

Jurisdiction and Applicable Law

The Domain Names were first registered on September 8, 2005, (<vvvlandvanmaasenwaal.nl> and <vvv-landvanmaasenwaal.nl>) and on April 18, 2006 (<vvvwebwinkel.nl> and <vvv-webwinkel.nl>). According to Article 21.2 of the Regulations on Registration of .nl Domain Names of SIDN (Registration Regulations), which have been in force since January 29, 2003, the holder of a .nl domain name declares in advance that he shall submit to the judgment rendered by the Arbitration Tribunal should any third party institute arbitration proceedings before this Tribunal regarding a domain name registered by the holder. Following Article 2 of the Regulations, the Arbitral Tribunal is competent to rule on complaints relating to infringement of Benelux trademark rights (including Community trademark rights) and/or Dutch trade name rights held by the Plaintiff. The submission of the Complaint by Plaintiff entails a valid arbitration agreement between parties.

The Arbitration Tribunal has been established on January 16, 2008 by the Center in accordance with Article 10 of the Regulations and the Arbitration Tribunal finds therefore, by reference to Article 11.2 of the Regulations, that it has jurisdiction to hear this claim.

Language and Place of the Proceedings

The Arbitration Tribunal finds that pursuant to Article 17.4 of the Regulations the seat of arbitration is Amsterdam. Since the Defendant lives in Chile and presumably does not have knowledge of the Dutch language, in accordance with Article 17.2 of the Regulations, the language of the proceedings shall be English.

Findings

The Defendant has not submitted a Statement of Defence which means that the Arbitration Tribunal will make a decision on the basis of the Complaint. Pursuant to Article 9.4 of the Regulations, the Arbitration Tribunal shall grant the remedy requested, except if the Arbitration Tribunal considers the Complaint baseless.

Article 2.20 of the Benelux Convention assigns an exclusive right to the owner of a registered trademark. This means that the owner of a trademark has the right to prohibit the use by others of marks that meet the conditions of Article 2.20(1)(a)-(d).

Article 2.20(1)(d) grants trademark owners like the Plaintiff the right to prohibit the use of signs, other than for the purpose of distinguishing goods and services, when use of that sign, without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark.

Taking note of Plaintiff’s contentions and the provided evidence, the Arbitration Tribunal does not find the Complaint baseless. In this regard the Arbitration Tribunal considers that the registration, existence, and potential use of the Domain Names by the Defendant may lead to unfair advantage of the repute of the VVV trademarks and may be detrimental to the distinctive character of the VVV trademarks, since the relevant public may assume some kind of commercial relationship between the owner of the VVV trademarks on the one hand, and the owner/user of the Domain Names on the other hand, where in fact this is not the case.

Since the Plaintiff’s case already succeeds on this basis, possible other grounds do not need further discussion. Consequently, the Arbitration Tribunal shall grant the remedies following remedies.

First, by reference to Article 3 of the Regulations, the first claim for a declaratory judgment is not within the competence of the Arbitration Tribunal.

Second, the Plaintiff shall become the holder of the Domain Names and this award shall replace the form required by the SIDN for the Change of Domain Name Holder.

Third, in accordance with article 3 of the Regulations, the Plaintiff has requested “a prohibition for the Domain Name Holder to register similar domain names in the future”. It has been well established in previous .nl awards that a general order to prohibit a defendant from registering domain names similar to the contested domain names is not admissible. See for instance Loadit B.V. v. Xiro Unlimited Entertainment B.V., WIPO2006NL3 and Volkswagen AG v. Princa B.V., WIPO2006NL10. The Arbitration Tribunal understands however that the Plaintiff seeks a remedy that such future domain names shall not infringe the VVV trademarks, which claim will be granted.

Fourth, in accordance with Article 28.8, Annex 3 and Annex 4 of the Regulations, Plaintiff will be awarded the administrative costs of the procedure as well as costs of legal assistance in an amount of EUR 2.250,- and EUR 1.000,- respectively. The Tribunal fixes these amounts as being reasonable and sufficiently proven.

Fifth, in the absence of any Statement of Defence by the Defendant, the Arbitration Tribunal will not declare the award enforceable regardless of appeal.

 

7. Decision

Consequently, and in accordance with Articles 3, 9.4 and 23 of the Regulations, the Arbitration Tribunal decides as follows:

1. The Plaintiff shall become the holder the Domain Names and this award shall replace the form required by the SIDN for the Change of Domain Name Holder.

2. The Defendant is prohibited from registering other Domain Names similar to the Plaintiff’s VVV trademarks, subject to a penalty of EUR 2.500 (two thousand five hundred Euros) for each violation of this prohibition.

3. The Defendant shall pay the costs of this procedure, namely EUR 2.250,- (two thousand and two hundred and fifty Euros), and EUR 1.000,- (one thousand Euros) for reasonable costs of the Plaintiff’s legal assistance.

4. All other and further claims made by the Plaintiff in this procedure are denied.

 

Hub. J. Harmeling
Arbitrator

Dated: February 6, 2008

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