WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Robot Coupe SNC v. Beuk Horeca Apparatuur

Case No. DNL2014-0012

1. The Parties

The Complainant is Robot Coupe SNC of Vincennes, France, represented by Nameshield, France.

The Respondent is Beuk Horeca Apparatuur of Utrecht, the Netherlands, represented by Storm van ‘s Gravesande Advocaten, the Netherlands.

2. The Domain Name and Registrar

The disputed domain name <robot-coupe.nl> (“Domain Name”) is registered with SIDN through TransIP BV.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2014. On April 4, 2014, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On April 7, 2014, 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 April 7, 2014. 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 April 8, 2014. In accordance with the Regulations, article 7.1, the due date for Response was April 28, 2014. The Response was filed with the Center on April 28, 2014.

On May 2, 2014, SIDN commenced the mediation process. On June 3, 2014, 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 June 5, 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.

On June 18, 2014, the Panel issued a Panel Order requesting the Respondent to provide evidence that before the date of the screen capture provided by the Complainant, the Domain Name led to a website connected to the domain name <robotcoupe-webshop.nl>. On June 23, 2014, the Respondent provided its submission, and on June 24, 2014, the Complainant filed its response to the submission of the Respondent.

4. Factual Background

The Complainant, Robot Coupe SNC, is a French equipment manufacturer of culinary preparations and was founded 40 years ago. The Complainant has become the foodservice industry leader in the development and refinement of food processors, vegetable preparation units and combination processing units.

The Complainant owns several trademark registrations including the word elements ROBOT COUPE (“Trademark”), such as the International registration (Madrid) for the figurative trademark consisting of mainly the words ROBOT COUPE, registered on October 30, 1978 with registration number 440814 for goods in class 7, designating inter alia the Benelux.

The Complainant owns several domain names including the word elements “Robot Coupe” such as, <robot-coupe.com>, <robot-coupe.fr>, <robot-coupe.be> and <robot-coupe.de>.

The Domain Name was created on June 11, 2008. According to the information received from SIDN, the Domain Name was registered by the Respondent on February 27, 2011.

5. Parties’ Contentions

A. Complainant

Insofar as relevant, the Complainant contends the following.

The Complainant contends that the Domain Name is identical to the Trademark. The addition of a connecting dash does not change the perception of the Domain Name by the Internet users. Moreover, the addition of the country code Top-Level Domain (ccTLD) “.nl” is not sufficient to escape the finding that the Domain Name is identical to the Trademark.

Furthermore, the Complainant states that the Respondent is not affiliated with it nor authorized by the Complainant in any way. The Respondent has no rights or legitimate interests in the Domain Name and is not related in any way to the Complainant’s business. The Complainant does not carry out any activity for, nor has any business with the Respondent. The Respondent is also not an official distributor.

Moreover, the Respondent registered the Domain Name in order to create a risk of confusion and to divert the Complainant’s customers to the Respondent’s website. The fact of having registered the Domain Name since five years never conferred any legitimate right or use in good faith of the Domain Name or on the Trademark.

The Complainant contends that the Respondent must have known the Trademark, as the Respondent sells products with the Trademark on the Respondent’s website. There is no information on the website under the Domain Name which demonstrates that it is not an official website of the Complainant. The Respondent’s website is selling many other branded products which are products of the Complainant’s competitors. Thus the Complainant notes that the registration of the Domain Name can have been made only by unfair means, to take unfair advantage of the goodwill associated with the Trademark and trade name Robot Coupe.

Consequently, the Complainant states that the Respondent should be considered to have registered and to be using the Domain Name in bad faith.

For the above reasons, the Complainant requests the transfer of the Domain Name.

B. Respondent

Insofar as relevant, the Respondent contends the following.

The Respondent acknowledges that the Complainant owns the Trademark and that neither the use of a connecting dash between the words “robot” and “coupe” nor the suffix “.nl” would create sufficient distance between the Domain Name and the Trademark.

The registration of the Domain Name was done in order to be able to emphasize that the Respondent is selling original products of the Robot Coupe brand.

The Respondent cannot understand the Complainant’s statement that the Respondent is not affiliated nor authorized by the Complainant in any way. The Respondent has a steady business relation with the Complainant for many years and has received invoices since 2008 for products that have been purchased with the Complainant. Since it is clear that the Respondent is an official reseller of Robot Coupe equipment, the Respondent has a legitimate interest in the use of the Domain Name. The Respondent has built a website for the Robot Coupe products solely dedicated to sell this specific brand.

The Respondent has noted that the Complainant has presented a screen capture of the main website of the Respondent, “www.beukhoreca.nl” (“Main Website”). According to the Respondent, there apparently was a technical error at the moment the screen capture was taken, because another website should be shown. When all systems are functioning, the Domain Name leads to the Respondent’s Robot Coupe web shop and not to the Main Website. According to the Respondent, the technical error has been fixed and anyone visiting “www.robot-coupe.nl” would enter the Respondent’s dedicated Robot Coupe web shop (“www.robotcoupe-webshop.nl”) instead of the visiting the Main Website.

In no way can the registration or the use of the Domain Name by the Respondent be considered as in bad faith. The Respondent uses the Domain Name solely for the brand Robot Coupe. On the dedicated web shop “www.robotcoupe-webshop.nl” now connected to the Domain Name, the Respondent explicitly included that the Respondent’s activities are not part of the Robot Coupe organization and therefore there is no risk of confusion.

The registration of the Domain Name is published on the SIDN website and as a party registering a large number of Robot Coupe domain names, the Complainant must have come across the Respondent’s registration much earlier.

As the Domain Name has been registered for the purpose of the marketing and sales of Robot Coupe branded products, sold because of a trade relationship between the Respondent and the Complainant, the Respondent has not acted in bad faith.

6. Discussion and Findings

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

(i) the Domain Name is 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

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

(iii) the Domain Name has been registered in bad faith or is being used in bad faith.

A. Identical or Confusingly Similar

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

The Parties agree that the first element of article 2.1 of the Regulations has been met. The Panel agrees with the Parties. The Panel finds that the Domain Name is identical to the Trademark. The Domain Name incorporates the Trademark in its entirely. The Panel finds that regardless of the addition of the connecting dash in the Domain Name, the Trademark is the dominant element of the Domain Name.

B. Rights or Legitimate Interests

The Respondent has asserted that it is a reseller of Robot Coupe products, which the Complainant has not disputed.

Whether the Respondent is using the Domain Name in connection with a bona fide offering of goods, has to be assessed in light of the decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (regarding the domain name <okidataparts.com>) which decision has been rendered under the Uniform Domain Name Dispute Resolution Policy (UDRP) and which decision 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 (regarding the domain name <deepsonspecialist.nl>) and Maison Louis Latour v. Jos Beeres Wijnkoperij, WIPO Case No. DNL2011-0074 (regarding the domain name <louislatour.nl>).

To be bona fide, the offering must meet several requirements which have been referred to in the aforementioned decisions, notably in the Oki Data case. Those include, at minimum, the following:

- the respondent must actually be offering the goods or services at issue. See, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering);

- the respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774 (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Kanao v. J.W. Roberts Co., Case No. 0109 (CPR July 25, 2001) (bait and switch is not legitimate);

- the site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. See, e.g., Houghton Mifflin Co. v. The Weatherman, Inc., WIPO Case No. D2001-0211 (no bona fide offering where website’s use of Complainant’s logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering, Ltd. and Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton, WIPO Case No. D2000-1201 (no bona fide offering because domain name <quaifeusa.com> improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent’s deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Products., WIPO Case No. D2001-0344 (no bona fide use when respondent suggested that it was the manufacturer of complainant’s products);

- the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 (“a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark”).

The Panel notes that the Main Website does not meet the above jurisprudential requirements, as it is also used to sell other brands than the products under the Trademark.

If the Domain Name would have led to the Respondent’s dedicated web shop that could also be accessed under the domain name <robotcoupe-webshop.nl>, the Panel would have to assess whether this web shop meets the relevant criteria.

In this case, the core question is therefore which website was connected to the Domain Name before the Respondent had any notice of the dispute. The Complainant had initially provided evidence that the Domain Name was connected to the Main Website. The Respondent in its Response alleged that there had been a technical error at the moment the Complainant made a screenshot of the website connected to the Domain Name, being the Main Website.

According to a statement from the Respondent’s Internet service provider as submitted by the Respondent, the Respondent had asked in 2012 to redirect the Domain Name to the website “www.robotcoupe-webshop.nl”. According to the Internet service provider, the automatic re-direction had been disabled sometime in February or March 2014 as a result of changes in the system of the Internet service provider. The error would have been corrected on April 9, 2014 (which is several days after the Complaint was filed, and one day after the Respondent was formally notified of the Complaint).

The Complainant has provided evidence consisting of printouts from the website DomainTools, which shows that the Domain Name was connected to the Main Website on both February 13, 2014 and July 25, 2013. The screenshots of the websites under the Domain Name on January 16, 2013 and March 9, 2012 appear to show a subpage of the Main Website for products under the Trademark, which prima facie would not have met the requirements of Oki Data Americas, Inc. v. ASD, Inc., supra .

Within the limitations of this administrative procedure, and on the basis of the limited record of this case, the Panel finds that (1) before the Respondent had any notice of the dispute, the Domain Name did not lead to a web shop on which only the goods under the Trademark were offered; (2) the Respondent has not convinced that such re-direction to the Main Website was the result only of a technical error, as the Complainant has provided prima facie evidence that the Domain Name was connected to the Main Website from March 2012 to April 2014. The Panel cannot imagine that the Respondent would not have been aware of the wrong re-direction for such a considerable amount of time.

The Panel therefore finds that by having the Domain Name connected to the Main Website, the Respondent, before having any notice of the dispute, has not been using the Domain Name to sell only the trademarked goods, but has also been offering other products of many other brands, which are competitors of the Complainant.

Therefore the Respondent, for purposes of the Regulations, has not been using the Domain Name for a bona fide offering of goods or services.

Accordingly, the Panel 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 of the Regulations.

C. Registered or Used in Bad Faith

The Panel refers to its considerations under 6.B.

In light of those considerations the Panel finds that the Domain Name has been used by the Respondent for commercial gain by intentionally attracting Internet users to its Main 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 Main 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.

The Panel underlines that its above findings are based on the record of this case within the abbreviated framework of the Regulations, and that the Regulations leave open the possibility for parties to take their case to court for more extensive fact-finding options.

7. Decision

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

Willem J.H. Leppink
Panelist
Date: July 2, 2014