WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Antonio Torres Sagrera, Hierbas de Ibiza Perfumes v. Systemicals

Case No. DNL2013-0045

1. The Parties

The Complainant is Antonio Torres Sagrera, Hierbas de Ibiza Perfumes of San Lorenzo de Balafia, Ibiza, Spain, internally represented.

The Respondent is Systemicals of Weesp, the Netherlands, internally represented.

2. The Domain Names and Registrar

The disputed domain names <hierbasdeibiza.nl> and <hierbasibiza.nl> (“Domain Names”) are registered with SIDN through Mijn InternetOplossing.

3. Procedural History

Two separate Complaints, one for each disputed domain name, were filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2013. On September 19, 2013, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Names. On October 1, 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. On October 1, 2013, the Center requested the Complainant to file a single Complaint for the Domain Names. The Complainant submitted an amended Complaint on October 2, 2013. The Center verified that the Complaints 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 October 3, 2013. In accordance with the Regulations, article 7.1, the due date for Response was October 23, 2013. The Response was filed with the Center on October 15, 2013.

On October 29, 2013, SIDN commenced the mediation process. On December 3, 2013, SIDN extended the mediation process until December 27, 2013. On December 30, 2013, SIDN informed parties that the dispute had not been solved in the mediation process.

The Center appointed Willem J.H. Leppink as the panelist in this matter on January 10, 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 article 9.2 of the Regulations.

4. Factual Background

The following facts are undisputed.

The Complainant owns the Community Trade Mark (CTM) registration for the HIERBAS DE IBIZA trademark (registration number 2433787, registered on May 21, 2003) for goods and services in classes 3, 25 and 35 (“Trademark”).

The Complainant owns the website “www.hierbasdeibiza.com”.

The Domain Names were registered on July 20, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant contends the following.

The Complainant refers to the fact that it has trademark rights. The letters “de” are not incorporated in the Domain Name <hierbasibiza.nl>, but this is not relevant, as the translation of the Spanish word “de” means “from” in English. The Respondent is trading in the Complainant’s products, and there is an association between the Trademark and the Domain Names.

The Respondent tried to take advantage of the risk of confusion by redirecting the Domain Names to the Respondent’s website “www.vinonova.nl”.

The Respondent requested a certain amount of money for handing over the Domain Name <hierbasdeibiza.nl>. Bad faith is proven by the fact that after the Complainant requested the transfer of that Domain Name, the Respondent registered other domain names incorporating the Complainant’s Trademark. Also for these domain names, the Respondent requested a certain amount of money.

B. Respondent

Insofar as relevant, the Respondent contends the following.

The Respondent started in 2010 with the distribution of “Hierbas Ibicencas” in the Benelux. The goal of the Respondent was to become the specialist for everything from Ibiza. With the permission of the Dutch distributor of Hierbas de Ibiza, the Respondent started to sell Hierbas de Ibiza in the Respondent’s webshop. To create more exposure the Respondent claimed the Domain Names to create traffic to the Respondent’s website “www.vinonova.nl”.

The Respondent was in contact with the Complainant in July 2012 about a possible transfer of the Domain Name <hierbasdeibiza.nl>. The Complainant and the Respondent never discussed the transfer of the Domain Name <hierbasibiza.nl>.

The Respondent contends that “Hierbas de Ibiza” in Spanish means “herbs from Ibiza” and therefore can be used in a lot of different ways and also just for common information about Ibiza or Spain.

Finally, the Respondent states that it would like the Complainant to reconsider the offer made by the Respondent for the Domain Name <hierbasdeibiza.nl>.

6. Discussion and Findings

According to article 2.1 of the Regulations, for this Complaint to be successful in relation to the Domain Names the Complainant must prove that:

(a) the Domain Names are identical or confusingly similar to a trademark or a trade name, protected under Dutch law in which the Complainant has rights; or a personal name registered in the General Municipal Register (‘gemeentelijke basisadministratie’) of a municipality in the Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in the Netherlands under which the Complainant undertakes public activities on a permanent basis; and

(b) the Respondent has no rights or legitimate interests in respect of the Domain Names; and

A. Identical or Confusingly Similar

Pursuant to article 2.1(a) of the Regulations, the Complainant must establish that the Domain Names are identical or confusingly similar to a trademark or trade name in which the Complainant has rights.

The Panel finds that the Domain Name <hierbasdeibiza.nl> is identical to the Trademark. This Domain Name incorporates Trademark in its entirety.

The Panel finds that the Domain Name <hierbasibiza.nl> is confusingly similar to the Trademark. The dominant parts of the Trademark are the word elements HIERBAS and IBIZA and this Domain Name incorporates these elements in their entirety. The fact that the element “de” is not incorporated in this Domain Name is insufficient in itself to avoid a finding of confusing similarity.

The Complainant has therefore established the first element of article 2.1 of the Regulations

B. Rights or Legitimate Interests

Pursuant to article 3.1 of the Regulations, the Complainant must demonstrate that the Respondent has no rights or legitimate interest in respect of the Domain Names. The Respondent may demonstrate such rights or legitimate interests on its part inter alia through the following circumstances:

a. before having any notice of the dispute, the Respondent made demonstrable preparations to use the Domain Names (or a name corresponding to the Domain Names) in connection with a bona fide offering of goods or services;

b. the Respondent as an individual, business or other organization is commonly known by the Domain Name;

c. the Respondent is making a legitimate noncommercial use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish or otherwise damage the relevant trademark, trade name, personal name, name of a Dutch public legal entity or name of an association or foundation located in the Netherlands.

According to the case law under the Regulations, in particular Technische Unie B.V. and Otra Information Services v. Technology Services Ltd., WIPO Case No. DNL2008-0002 which applies UDRP case law (Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110 and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455) in the context of the Regulations, a complainant is required to make a prima facie case that the respondent lacks rights to 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 Panel finds that, on the extremely limited record before the Panel, the Complainant has not demonstrated in this case that the Respondent lacks rights or legitimate interests in respect of the Domain Names. The Complainant’s mere statement that it is the legitimate and exclusive owner of the Trademark, cannot by itself be considered as a prima facie case for purposes of the Regulations that the Respondent lacks rights to or legitimate interests in the Domain Names.

The Complainant has not asserted that none of the circumstances of article 3.1 of the Regulations apply, which application in general would qualify as a prima facie case, nor has the Complainant invoked arguments it might have had concerning the Respondent’s conduct as a reseller of the Complainant’s products.

Pursuant to article 10.1 of the Regulations, the Panel may invite parties to submit further statements and/or (further) submissions. However, in the view of the Panel, this provision aims to help complete a limited lack of information or substantiation, and not to repair a fuller lack of substantiation. The proceedings under the Regulations are intended as an efficient alternative to litigation. It is expected from any complainant to submit a complaint that at a minimum prima facie substantiatesthe three elements of article 2.1 of the Regulations.

The Complainant has therefore not established the second element of article 2.1 of the Regulations.

C. Registered or Used in Bad Faith

As the Complainant has not established the second element, it is unnecessary for the Panel to discuss the third.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Willem J.H. Leppink
Panelist
Date: January 23, 2014