WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Viridian International Ltd. trading as Viridian Nutrition v. Provisan Nutrition, Patricia Catharina Maria IJsbrandij
Case No. DNL2015-0061
1. The Parties
The Complainant is Viridian International Ltd. trading as Viridian Nutrition of Huntingdon, United Kingdom of Great Britain and Northern Ireland, represented by Liesbeth Metzemaekers, the Netherlands.
The Respondent is Provisan Nutrition, Patricia Catharina Maria IJsbrandij of Loosdrecht, the Netherlands, represented by Robbert-Jan IJsbrandij, the Netherlands.
2. The Domain Name and Registrar
The disputed domain name <viridian.nl> is registered with SIDN through Realtime Register.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 22, 2015. On October 22, 2015, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain name. On October 23, 2015, SIDN transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 27, 2015. In accordance with the Regulations, article 7.1, the due date for Response was November 16, 2015. The Response was filed with the Center on November 16, 2015.
On November 26, 2015 SIDN commenced the mediation process. On December 8, 2015 SIDN informed parties that the dispute had not been solved in the mediation process.
The Center appointed Alfred Meijboom as the panelist in this matter on December 16, 2015. 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.
4. Factual Background
The Complainant offers for sale, technical and marketing expertise to support a range of ethical nutrition and beauty products. It has been selling its products in the Netherlands through a distributor, who sold its business, including the disputed domain name, to the Respondent in 2008, which became the subsequent distributor for the Complainant in March 2008. The Complainant terminated the distribution agreement with the Respondent in July 2012.
The Complainant is the owner of Community trademark no. 2918803 for VIRIDIAN registered on May 10, 2006 (application date November 4, 2002) for, inter alia, nutritional supplements, edible oils, food supplements for human consumption and vitamin enriched foods and other goods in classes 5, 29 and 30 (the "Trademark").
The disputed domain name was registered on May 19, 2005. The Respondent acquired the disputed domain name in March 2008 pursuant to a written agreement with the previous domain name owner.
5. Parties' Contentions
The Complainant alleges that the disputed domain name contains the Trademark in its entirety without additional matter so that it is identical to the Trademark in which the Complainant has rights.
The Respondent has acted as a distributor for the Complainant in the Netherlands from March 2008 until July 6, 2012, when the Complainant terminated the distribution agreement as a result of the Respondent's failure to pay for stock supplied by the Complainant. The Respondent ceased its business per January 1, 2013, and does not use the disputed domain name in connection with a bona fide offering of goods or services. The Respondent is neither entitled anymore to resell the Complainant's products nor to represent the Complainant in any way. Consequently, the Respondent has no rights or legitimate interests to use the disputed domain name.
The Respondent does not derive a bona fide benefit from holding the disputed domain name, and its only purpose is to harass the Complainant, who appointed a new distributor in the Netherlands for whom the disputed domain name would be a very useful tool. The Complainant as well as its new distributor tried to persuade the Respondent to transfer the disputed domain name. The Respondent did, however, refuse to transfer the disputed domain name, thereby knowingly harming the Complainant's interests and acting in bad faith. In this respect the Respondent has threatened to misuse the disputed domain name to publish its "personal story" and damage the reputation of the Complainant's director.
The Respondent points out the term "viridian" has different meanings that that include guns, apartments, family names, and the name of a color. Further, the disputed domain name was registered well before the Trademark was registered, while other "Viridian" trademarks are registered as Community trademark, so that the common term "Viridian" is broadly used as a universal name for companies, persons, products and a color.
The Respondent explained that it acquired the company of the Complainant's distributor, including the distributorship and the disputed domain name, and bought stock from the Complainant, all for a considerable amount, and substantially increased the previous distributor's turnover. The Respondent further asserts that it had settled the Complainant's unpaid invoice which the Complainant used as cause for terminating the Respondent's distributorship by returning products with a higher trade value. As the Respondent's bank facility was terminated the Respondent had to find a buyer for its company, while the Complainant already appointed a new distributor for the Netherlands. As a result the Respondent removed its company details from the website under the disputed domain name and kept the website as a sole reference for the previously sold products and clients, in the full expectation that the Respondent could sell the company and disputed domain name in the future to the new distributor. The Respondent removed its company from the mercantile register to cease the VAT obligations as a result of the Respondent's consequential temporary lack of income. The Respondent has agreed to remove the Trademark related content from the website under the disputed domain name and will use the disputed domain name in future plans to regain some income in a non-confrontational manner, e.g., in respect of to the sale of the laser-guns or "Viridian" marked wine.
The Respondent denies that it has ever used the disputed domain name in bad faith as it has maintained the website to which the disputed domain name reverts in full operation as a reference list of the Complainant's products, together with the latest pictures of the traded products, merely as a Wiki site of the Complainant's products. The Complainant's assertion that the Respondent has included elements of despair in email conversation is entirely fictitious. Furthermore, the Complainant has acted in bad faith in regard to the business of the Respondent, such as by giving distribution rights to a party while the Respondent negotiated the take-over with such party, which has in effect ruined the Respondent's business and personal life, and had caused substantial reputational damage to the Respondent. The Respondent claims to have actually acted in good faith up to this time, and continues to do so by redirecting existing and potential customers to new distributors and sellers of the Complainant's products.
6. Discussion and Findings
Based on article 2.1 of the Regulations, a request to transfer a domain name must meet three cumulative conditions:
a. the disputed domain name is identical or confusingly similar to:
I. a trademark, or trade name, protected under Dutch law in which the Complainant has rights; or
II. 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 to or legitimate interests in the disputed domain name; and
c. the disputed domain name has been registered or is being used in bad faith.
A. Identical or Confusingly Similar
It is established case law that the Top-Level Domain ".nl" may be disregarded in assessing the similarity between the Trademarks on the one hand, and the disputed domain names on the other hand (e.g., Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).
It is not disputed that the Trademark is protected under Dutch law in which the Complainant has rights. The Respondent's claims that the term "viridian" has different meanings and was registered by different companies as a trademark for different products is, in this respect, irrelevant as the Regulations require the Complainant to just show that the disputed domain name is identical or confusingly similar to the Trademark, while it has been established that the Complainant is the Trademark's holder.
For the decision of the first element it is further irrelevant if the disputed domain name was registered prior to the registration of the Trademark. In this respect, the Panel notes that it is a generally accepted principle under Uniform Domain Name Dispute Resolution Policy ("UDRP") panelists1 that in the case of a purchase by one party from another of a domain name, this would, consistent with the change in control over the domain name, normally be regarded as new registrations for the purpose of the Regulations, whereby the relevant intent of the acquiring party is to be assessed as at the date of acquisition of the relevant domain name (cf. paragraph 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition). Consequently, for the purposes of these proceedings, the Trademark was registered prior to the registration of the disputed domain name.
The disputed domain name, which incorporates the Trademark entirely, is identical to the Trademark, so that the Panel finds that the Complainant has satisfied the requirements of article 2.1(a) of the Regulations.
B. Rights or Legitimate Interests
Article 2.1(b) of the Regulations requires that the Complainant demonstrates that the Respondent has no rights to or legitimate interests in the disputed domain name. This condition is met if the Complainant makes a prima facie case that the Respondent has no such rights or interests, and the Respondent fails to rebut this (see, e.g., Technische Unie B.V. and Otra Information Services v. Technology Services Ltd., WIPO Case No. DNL2008-0002).
The Complainant and the Respondent entered into a distribution agreement in March 2008 which was terminated in July 2012. The Complainant appointed a new distributor and requested the Respondent to transfer the disputed domain name to the Complainant, which the Respondent refused to do. The Panel acknowledges that the Respondent disagrees with the termination of its distributorship and that the Respondent considers the Complainant's behavior to be in bad faith. However, the Panel cannot decide the dispute in connection to this termination, as the administrative proceedings under the Regulations limit the Panel to establishing if the Complainant satisfied the criteria of article 2.1 of the Regulations. It is not disputed that the Respondent previously used the disputed domain name in connection to a bona fide offering of goods when it distributed the Complainant's products. The distribution agreement was, however, terminated and the Respondent stopped offering the Complainant's products. Therefore the Respondent's rights or legitimate interests in connection to the disputed domain name no longer exist (e.g., Normalu SA v. Cover BV, WIPO Case No. DNL2011-0040; BEV.CON ApS v. TR-Group, WIPO Case No. DNL2011-0050).
The Respondent also asserted that the Trademark is a common word, such as the name of a shade of
blue-green, and has been registered as a trademark by others for different goods and services, such as laser-guns and wine. In this respect the Respondent argued that it has a right or legitimate interest in connection to the disputed domain name as it may want to use it in respect of to the sale of the laser-guns or wine. The Panel further observes that the disputed domain name presently reverts to a webpage which provides some information about the color "viridian". Such use and intended use does not provide the Respondent with the required right or legitimate interest as such use is not made in connection with a bona fide offering of goods or services (e.g., SMS Passcode A/S v. BioXS International B.V., WIPO Case No. DNL2015-0025).
Accordingly, the Panel finds that the Complainant has satisfied the requirements of article 2.1(b) of the Regulations.
C. Registered or Used in Bad Faith
Based on the case file, the Panel notes the following. The Respondent acquired the disputed domain name to succeed the previous distributor of the Complainant in the Netherlands and the Respondent used the disputed domain name accordingly. Sometime after the termination of the distribution agreement the Respondent stopped selling the Complainant's products. On August 22, 2013, the Respondent sent an email to the Complainant asking to discuss the business in the Netherlands, and wrote "[I]f you don't find the decency to communicate, you force us to take further steps, to begin I have to publish my personal Viridian story on [the disputed domain name] and notify accountants, customers and business associates (...)". And on September 7, 2013, the Respondent wrote to the Complainant "[I]f you had done what you should have done, then was within a proper deal the [disputed domain name] website yours already (...)". Until, at least, March 2014 the Respondent answered consumer inquiries received on the disputed domain name's email address with respect to the products of the Complainant, and referred such customers to possible points of sale or asked the Complainant to respond. At least in February 2015, the Respondent received retailers' inquiries in the disputed domain name's mailbox, which it referred to a web shop which apparently sells the Complainant's products. According to its Response, the Respondent wants to keep the disputed domain name to use it for other purposes than those relating to distributing the Complainant's products.
Article 3.2 of the Regulations provides a nonrestrictive list of circumstances which show that a domain name has been registered or is being used in bad faith. Although none of the circumstances mentioned in article 3.2 of the Regulations apply per se, the Panel does find that the Respondent uses the disputed domain name in bad faith for the following reasons.
The distribution agreement between the Complainant and the Respondent was terminated and the Respondent ceased to sell the Complainant's products, while giving potential customers the impression that the Respondent still represented the Complainant as shown by the emails which the Respondent received from consumers and retailers in, at least, the 2013 - 2015 timeframe. Although it seems that the Respondent answered inquiries or made it possible that others responded, it intervened with the Complainant's business without the Respondent having been authorized.
Further, the Panel finds that the Respondent's intention to put its "personal story" on the website under the disputed domain name was meant as a threat, while the Respondent also used the possible transfer of the disputed domain name to put pressure on the Complainant to force a solution for its dispute with the Complainant.
Furthermore, the Respondent's present use of the disputed domain name which resolves to a webpage with information on the color "viridian", and its intention to use the disputed domain name to sell products of third party "Viridian" trademark owners, is intended to prevent the Complainant from using the disputed domain name and disrupting the business of Complaint whose has an legitimate interest in using the disputed domain name in connection with the Trademark (e.g., Omega Pharma NV v. lntervoll BV, WIPO Case No. DNL2014-0049).
Therefore, the Complainant has also satisfied article 2.1(c) of the Regulations.
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the disputed domain name <viridian.nl> be transferred to the Complainant.
Date: December 24, 2015