WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Barry Callebaut AG v. DSI

Case No. D2011-1715

1. The Parties

The Complainant is Barry Callebaut AG of Zürich, Switzerland, represented by Meissner, Bolte & Partner, Germany.

The Respondent is DSI of Spokane Valley, Washington, United States of America, represented by Baird Williams & Greer, LLP, United States of America.

2. The Domain Name and Registrar

The disputed domain name <van-houten.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2011. On October 11, 2011, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On October 11, 2011, Network Solutions, LLC 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 request by the Center to submit the Complaint in electronic format, the Complainant filed the Complaint in electronic format on October 18, 2011.

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 October 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 10, 2011. The Response was filed with the Center on November 9, 2011.

The Center appointed Nicholas Weston as the sole panelist in this matter on November 18, 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.

Language

The language of this administrative proceeding is English, being the language of the registration agreement.

4. Factual Background

The Complainant operates a chocolate business with operations and distributors in more than 40 countries. The Complainant holds over 60 registrations for the trademark VAN HOUTEN and variations of that mark in numerous countries including Canada and the United States of America, which it uses to designate cocoa and related products in international class 30. The Canadian registration has been in effect since 1887 and the United States registration has been in effect since 1906. On the Respondent’s own evidence, VAN HOUTEN ranked among the 10 most famous brands in the United States by the year 1900.

The Respondent registered the domain name <van-houten.com> (the “Disputed Domain Name”) on March 14, 1997, which has for most of the intervening period resolved to a holding webpage.

The Respondent uses the Disputed Domain Name as an email address (i.e., an email address with the extension “@van-houten.com”).

5. Parties’ Contentions

A. Complainant

The Complainant cites its worldwide registrations of the trademark VAN HOUTEN including in the United States, Canada and related trademarks consisting of, or including this word, and, alternatively, its logo, as prima facie evidence of ownership.

The Complainant submits that each of its trademarks is distinctive and well known and that its rights in these marks predate the Respondent’s registration of the Disputed Domain Name. The Complainant submits that the Disputed Domain Name is confusingly similar to its trademarks, because the Disputed Domain Name incorporates a word that is confusingly similar to the trademark VAN HOUTEN and that the similarity is not removed by the addition of a hyphen between the words “van” and “houten”.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and implies that the Respondent has no trademark rights in or license to use the Complainant’s trademarks. The Complainant also contends that use of the Disputed Domain Name “as a placeholder” was “in order to prevent third parties and in particular the Complainant from connecting the domain”.

Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, pursuant to the Policy, paragraphs 4(a)(iii) and 4(b) and the Rules, paragraph 3(b)(ix)(3). On the issue of registration, the Complainant contends that “a huge number of these (VAN HOUTEN) trademarks have already been filed and registered in the first half of the 20th century and been kept alive up to now. Obviously, these trademarks as earlier rights have been present to the Respondent and have actively been ignored when connecting the domain”. On the issue of use, the Complainant invited the Panel to draw an adverse inference from the Respondent’s failure to actively use the Disputed Domain Name to resolve to a webpage. The submission appears to invite the finding that such use constitutes the kind of opportunistic bad faith that cases such as Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 considered impermissible.

B. Respondent

In defense of its registration of the Disputed Domain Name, the Respondent’s arguments are set out in the Response received by email to the Center on November 9, 2011. These are set out in summary below.

On the issue of confusing similarity to a trademark in which the Complainant has rights, the Respondent contends that:

(i) the Complainant acquired its interest in the trademark or service mark VAN HOUTEN in either 1998 or 2000 which is after the respondent registered the Disputed Domain Name in March 1997 (citing John Ode d/ba ODE and ODE - Optimum Digital Enterprises v. Intership Limited, WIPO Case No. D2001-0074). By owning no interest in the trademark VAN HOUTEN at the time the Disputed Domain name was registered “it cannot be shown that the registering of the domain was directed at this specific Complainant” (citing First American Funds, Inc. v. Ult.Search, Inc., WIPO Case No. D2000-1840).

(ii) the Complainant did not, in fact, contact the Respondent in relation to the Disputed Domain Name in 2007 as alleged by the Complainant.

(iii) Consumers are not likely to be confused because the Disputed Domain Name contains a hyphen and the trademarks of the Complainant do not (citing Dial-A-Mattress Operating Corp. v Ultimate Search, WIPO Case No. D2001-0764). The Respondent also denies that confusion would result from its registration and use of the Disputed Domain Name as it has never operated in the same business sector as the Complainant.

(iv) even if the Panel were to find confusing similarity, incorporation of a family name can form the basis of rights or legitimate interests and lack of bad faith protecting the Respondent from a transfer order, even where the domain name is the same as the trade mark.

On the issue of rights and legitimate interests, the Respondent contends that:

(i) the Respondent started its business “Van Houten & Associates” in 1986 as a sole proprietorship and “later incorporated in Washington State in 1995”.

(ii) the Respondent has a legitimate interest in the Disputed Domain Name because it has used, or made demonstrable preparations to use, the Disputed Domain Name since 1997 for bona fide offerings of goods or services, such date being well before any notice of the dispute. The Respondent advises the use in this case is as an email address.

(iii) “the email address gvh@van-houten.com is synonymous with the Respondent’s business activities”. Alternatively, “the disputed domain name is synonymous with the work of George Van Houten”.

(iv) the Respondent has “a right to use and a legitimate interest in his own name”. Alternatively, “he can legitimately develop the use of his own name in an unrelated field” (citing Etam, plc v. Alberta Hot Rods, WIPO Case No. D2000-1654). Alternatively, the Respondent contents that by using its name the Respondent is merely describing himself and therefore is using his name descriptively.

(v) use of the Disputed Domain Name for email is sufficient to grant a legitimate interest (citing Zero International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich, WIPO Case No. D2000-0161).

(vi) the Respondent has made sufficient use of the Disputed Domain Name for website promotion of its business to grant a legitimate interest.

The Respondent also denies that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, pursuant to paragraph 4(a)(iii) or 4(b) of the Policy. On the issue of registration, the Respondent contends that it had never heard of the Complainant’s trademark prior to registering the Disputed Domain Name (again citing Zero International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich., Ibid.) and that the Complainant’s VAN HOUTEN brand is not well known. The Respondent denies the Disputed Domain Name is for sale and advances the argument that it merely reflects “the Respondent’s own surname”. Respondent also contents that “the fact that the domain is used in connection with the Respondent’s own business activities and is an asset for him has been dispositive in prior panel decisions” (citing Etam, PLC v Alberta Hot Rods, WIPO Case No. D2000-1654; Sweeps Vacuum & Repair Center, Inc., v. Nett Corp., WIPO Case No. D2001-0031).

Finally, the Respondent contends that the Complaint is brought in bad faith, in an attempt to “pirate the domain name” by reverse domain name hijacking, as contemplated by paragraph 15(e) of the Rules.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:

(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules requires the panel to:

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

A. Identical or Confusingly Similar

The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark VAN HOUTEN in the United States and numerous other countries. The Panel finds that the Complainant has rights in the mark VAN HOUTEN that date back, based on Registration Number 50864 on the United States Patent and Trademark Office register, at a minimum, to 1905.

Turning to whether the Disputed Domain Name is identical or confusingly similar to the VAN HOUTEN trademarks, the Panel observes that the Disputed Domain Name comprises (a) an exact reproduction of the Complainant’s trademark VAN HOUTEN containing (b) a “dash” between the words “van” and “houten”, then followed by (c) the top level domain suffix “.com” all in one continuous domain name.

It is well-established that the top-level designation used as part of a domain name should be disregarded (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name: “van-houten”.

It is also well-established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of a word or, in this case, the “dash” between the words “van” and “houten” (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006 0033; CVS Pharmacy, Inc. and CVS Vanguard, Inc. v. gd, WIPO Case No. D2004-0113; Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345).

This Panel finds that the addition of a “dash” between the word “van” and the word “houten” does not serve to adequately distinguish the Disputed Domain Name which therefore remains confusingly similar to the registered trademark: (see: e.g., Dr. Grandel GmbH v. West End Internet Services, WIPO Case No. D2005-0853 (a dash in a domain name “add[s] no distinctiveness whatsoever”)).

In considering the elements of paragraph 4(a) of the Policy, the contents of a website - which is only one manifestation of the potential uses of a domain name - are typically not relevant. In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”. The Disputed Domain Name is therefore confusingly similar to the VAN HOUTEN trademark.

Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or a legitimate interest in the disputed domain name:

(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Policy places the burden on the complainant to establish the absence of respondent’s rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1)

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is using the Disputed Domain Name “as a placeholder” and the website it resolves to is still under construction after 14 years. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark.

The Policy is a rather blunt instrument to bring to bear on a dispute where the preponderance of evidence from the Respondent makes plain, and this Panel accepts, that the Disputed Domain Name has been used since 1997 by the owner of the Respondent, G. Van Houten, and his family as their family and business email address with only minor and intermittent use as a webpage. As the Panel stated in The Thread.com, LLC v. Jeffrey S. Poploff, WIPO Case No. D2000-1470: “the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names. Rather, the Policy is narrowly crafted to apply to a particular type of abusive cybersquatting”. Conversely, a respondent with a simple answer to a case would do better to use a rapier rather than a blunderbuss or an entangling net when making its arguments, then tabling evidence to support its contentions, so that its good points are not lost with its bad ones.

The Respondent’s Response under this head therefore contains only two submissions of any merit, both of which, being supported by evidence, are accepted by this Panel. The first is that it has a legitimate interest in the Disputed Domain Name for purposes of the Policy because it has used, or made demonstrable preparations to use, the Disputed Domain Name since 1997 for bona fide offerings of goods or services, such date being well before any notice of the dispute. It advises the use in this case is as an email address. The second is that use of the Disputed Domain Name for email is in the circumstances sufficient to grant a legitimate interest for purposes of the Policy (citing Zero International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich, WIPO Case No. D2000-0161). Further, this Panel also finds that, according to the Internet Archive (Wayback Machine), the Disputed Domain Name was used by the Respondent as its website since at least 1998 to host a rudimentary landing page directing Internet users to the Respondent’s then business.

It flows from these conclusions that this Panel does not need to determine whether the name “Van Houten” has achieved secondary meaning or association with the Respondent’s business. Nor is the Panel required to determine whether the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. The Panel observes that it has been furnished with insufficient evidence on which to form a view on these issues in any event.

The Panel finds for the Respondent on the second element of the Policy.

C. Registered and Used in Bad Faith

Having regard to the finding for the Respondent on the second element of the Policy, the Complainant has failed to prove all three elements. There is no need, therefore, to canvas the parties evidence and submissions on the issue of bad faith within the meaning of the Policy. However, for completeness, this Panel will find on one further serious matter raised by the Respondent.

D. Reverse Domain Name Hijacking (“RDNH”)

The Respondent alleges that the Complainant brought this proceeding in an attempt to “pirate the domain name” by Reverse Domain Name Hijacking, pursuant to paragraph 15 of the Policy. The key element in paragraph 15(e) of the Rules is bad faith (see David Robinson v. Brendan, Hight / MDNH Inc., WIPO Case No. D2008-1313).

Both bad faith and harassment are required to be present to determine the existence of reverse domain name hijacking. In support of that proposition, Sydney Opera House Trust v. Trilynx Pty. Limited, WIPO Case No. D2000-1224, states:

“To establish reverse domain name hijacking, the respondent must show knowledge on the part of the complainant of the respondent’s right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge” (citing Plan Express Inc. v. Plan Express, WIPO Case No. D2000-0565).

Because the Respondent has failed to demonstrate with evidence, or evidence of any weight, any conduct that would be regarded in other contexts, as well as UDRP proceedings, as constituting harassment or bad faith or similar conduct, the Panel declines to find that the Complainant has engaged in harassment or bad faith by bringing this proceeding.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Nicholas Weston
Sole Panelist
Dated: December 2, 2011