WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Willem Hengeveld, Hengeveld BVBA v. Davina Rodrigues
Case No. D2019-0110
1. The Parties
The Complainants are Willem Hengeveld and Hengeveld BVBA of Kapellen, Belgium, represented by Houthoff Cooperatief U.A., Netherlands.
The Respondent is Davina Rodrigues of Valencia, Spain.
2. The Domain Name and Registrar
The disputed domain name, <willemhengeveld.com> (the “Domain Name”), is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2019. On January 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 19, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on January 22, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on January 24, 2019.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 14, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 18, 2019.
The Center appointed Tony Willoughby as the sole panelist in this matter on February 26, 2019. 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
The Complainants are Willem Hengeveld, a Dutch citizen resident in Belgium, and Hengeveld BVBA, a private limited company of which Willem Hengeveld is the director and principal shareholder.
Willem Hengeveld is a lawyer. Between 1991 and 1997 he was senior partner of Houthoff an international law firm based in the Netherlands. He is now managing director of New Decade Consultancy, a consultancy services company based in Belgium and founded in 2011. The Panel has visited the website of New Decade Consultancy at “www.newdecade.be” and finds it to be a trading name of Hengeveld BVBA.
Hengeveld BVBA is the registered proprietor of Benelux Trade Mark Registration No. 1384748 WILLEM HENGEVELD (words) registered on November 12, 2018 in class 45 for a wide range of legal advisory services.
The Domain Name was created on May 4, 2018 and is connected to an English-language website purporting to be a website of a Netherlands-based law firm, Willem (WJ) Hengeveld, offering “its clients a comprehensive and expert advice covering all areas of Business Law”. The added address of the firm is the same address as that of the Rotterdam office of the said law firm of which Willem Hengeveld was senior partner from 1991 to 1997.
5. Parties’ Contentions
The Complainants contend that the Domain Name is identical to a trade mark in which they have rights; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name has been registered and is being used in bad faith.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainants must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have 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.
A. Identical or Confusingly Similar
The Domain Name at the second level comprises Hengeveld BVBA’s WILLEM HENGEVELD trade mark, (albeit without the spacing). For the purposes of the assessment under paragraph 4(a)(i) of the Policy the “.com” generic Top-Level Domain may be ignored.
The Panel finds that the Domain Name is identical to a trade mark in which Hengeveld BVBA has rights. The fact that the Domain Name was registered several months before the trade mark was registered is of no significance under the first element of the Policy. For the purposes of the first element it is sufficient that the trade mark rights existed as at the date of filing of the Complaint (see Section 1.1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). However, the dates of registration of the Domain Name and the coming into existence of the trade mark right may well be of relevance to the second and/or third elements of the Policy.
Willem Hengeveld contends that he has unregistered trade mark rights in respect of his name, independent of any that might be owned by his company, stemming from his distinguished career over many years as a practising lawyer. Section 1.3 of WIPO Overview 3.0 deals with the question: “What does a complainant need to show to successfully assert unregistered or common law trademark rights?”. The opening paragraphs of that section read:
“To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.”
The evidence of the Complainants establishes the fact that Willem Hengeveld has had a distinguished career as a lawyer, but always as a partner or director of the firm for which he worked. Nothing in that evidence has established to the satisfaction of the Panel that his name is a trade mark in which he has rights save as an owner and director of the Hengeveld BVBA, the trade mark owner. Had the Complaint contained evidence to demonstrate that Willem Hengeveld trades independently under his name, the situation might have been different. As it is, had the Complaint been filed in his name alone, the Panel would have issued a procedural order inviting him to join his company as a co-complainant.
B. Rights or Legitimate Interests
The Complainants have produced evidence to demonstrate that the Respondent’s website is fraudulent in that it impersonates Willem Hengeveld, that the firm, which it purports to be is non-existent and that the contact address featured on the website is the address of the Rotterdam office of Willem Hengeveld’s former firm, with which the Respondent has no known connection. The Panel cannot conceive of any basis upon which the Respondent might reasonably be said to have any rights or legitimate interests in respect of the Domain Name.
The Respondent clearly has a case to answer, but has elected not to respond to the Complainants’ contentions. In the absence of any explanation from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
For the reasons set out in B above, the Panel finds that the Respondent is using the Domain Name in bad faith. On no basis, could it be said, that a dishonest use of this order amounts to anything other than a bad faith use.
However, this element of the Policy requires the Complainants to demonstrate to the satisfaction of the Panel on the balance of probabilities, not only that the Domain Name is being used in bad faith, but that it has been registered in bad faith.
In other circumstances, the date of the Hengeveld BVBA’s trade mark registration (November 12, 2018) might have represented a potential obstacle for the Complainants, given that the registration of the Domain Name (May 4, 2018) preceded the coming into existence of those rights by about six months. However, the Domain Name is a highly specific name and replicates precisely the Hengeveld BVBA trade mark. Moreover, the website to which it connects is for a fictitious law firm purporting to be “Willem (W.J.) Hengeveld”, replicating Willem Hengeveld’s initials and using false contact details, one of them being an address replicating that of the Rotterdam office of Willem Hengeveld’s former firm. Clearly, the Domain Name targets the WILLEM HENGEVELD trade mark and it seems inconceivable to the Panel that the Domain Name could have been selected and used in relation to a fictitious law firm, if it was not done with a view to taking unfair advantage of the name “Willem Hengeveld” as a trade mark with value in the legal services field.
Given the respective dates of the Domain Name registration and the registered trade mark, the Panel concludes that Hengeveld BVBA had acquired unregistered trade mark rights in the mark WILLEM HENGEVELD prior to the Respondent’s registration of the Domain Name. This is likely to have been the case given that Hengeveld BVBA was founded in 2011 and, on the unchallenged evidence of the Complainants, appears to have traded over the intervening period relying heavily upon the reputation of its director and principal shareholder.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <willemhengeveld.com>, be transferred to Hengeveld BVBA.
Date: March 6, 2019