WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Libbey Glass Inc. v. Anonymous Domain Registration Service / JIM Internet Services B.V.
Case No. DNL2016-0049
1. The Parties
The Complainant is Libbey Glass Inc. of Toledo, Ohio, United States of America, represented by NLO Shieldmark B.V., the Netherlands.
The Respondent is Anonymous Domain Registration Service of Lelystad, the Netherlands / JIM Internet Services B.V. of Broek in Waterland, the Netherlands.
2. The Domain Name and Registrar
The disputed domain name <libbeyglazen.nl> (the “Domain Name”) is registered with SIDN through Totaaldomein B.V.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2016. On the same date, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain name. On September 15, 2016, SIDN transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on the same date providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on September 16, 2016.
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 proceeding commenced on September 16, 2016. In accordance with the Regulations, article 7.1, the due date for Response was October 6, 2016. The Respondent sent email communications (in Dutch) to the Center on September 15, 16, and 19, 2016 mainly concerning the language of proceeding The Respondent did not submit a formal Response. In accordance with the Regulations, on October 10, 2016, the Center notified the parties that it would forward the Respondent’s email communications to SIDN for the commencement of the mediation process.
On October 17, 2016 SIDN commenced the mediation process. On November 14, 2016 SIDN extended the mediation process until December 14, 2016. On December 14, 2016 SIDN confirmed that the dispute had not been solved in the mediation process.
The Center appointed Willem Hoorneman as the panelist in this matter on December 23, 2016. 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 is a multinational company producing glassware for professionals. It has registered, inter alia, the following European Union Trademark (“EUTM”) and Benelux Trademark (“BLXTM”) registrations for its trademark LIBBEY (the “Trademark”):
- EUTM LIBBEY, filed on September 10, 2015 and registered on January 9, 2016 with registration number 014548937;
- BLXTM LIBBEY, registered on July 5, 1971 with registration number 0041243.
The Domain Name was registered by the Respondent on April 6, 2016. As evidenced by the Complainant, the Domain Name originally resolved to a website where LIBBEY glassware was sold. At the time of filing of the Complaint, following a cease-and-desist letter sent by the Complainant to the Respondent, the website under the Domain Name as such was no longer active, but a direct link was provided to the website “www.glazenmagazijn.nl” accompanied by the text: “Voor design glazen kunt u Glazenmagazijn.nl bezoeken” (which translates to “for design glassware you may visit Glazenmagazijn.nl” in English). Through this website, LIBBEY glassware and glassware from other brands is sold.
5. Parties’ Contentions
The Complainant is the owner of the Trademark. The Respondent has no rights or legitimate interests in the Domain Name, as it has no trademark rights or licenses for LIBBEY and does not trade under the name LIBBEY.
The Domain Name is confusingly similar to the Trademark, since it incorporates the Trademark LIBBEY. The Trademark and the LIBBEY trade name of the Complainant are well known in the glass industry and it seems likely that the Respondent was aware of them when registering the Domain Name. The public will draw the conclusion that the Domain Name originates from the Complainant.
The Domain Name is being used for commercial gain, by attracting Internet users to the website under the Domain Name through this likelihood of confusion. The websites “www.libbeyglazen.nl” and “www.glazenmagazijn.nl” do not display any information on the lack of relationship between the Complainant and the Respondent. Considering the above, the Complainant asserts that the Domain Name is registered and/or is being used in bad faith by the Respondent.
The Respondent did not reply to the Complainant’s contentions. As noted, however, the Respondent sent several email communications to the Center, inquiring about the language of proceeding. The Center informed the Respondent that, further to article 17 of the Regulations, the language of proceedings is English, but that a response in the Dutch language would be brought to the panel’s attention, so that the panel may determine whether to consider and/or admit the Response in Dutch in rendering its decision, and whether to order further procedural steps, if any.
6. Discussion and Findings
Pursuant to article 2.1 of the Regulations, the Complainant’s request to transfer the Domain Name must meet three cumulative conditions:
a. The Domain Name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which the Complainant has rights, or other name by means of article 2.1(a) under II of the Regulations; and
b. The Respondent has no rights to or legitimate interests in the Domain Name; and
c. The Domain Name has been registered or is being used in bad faith.
The Respondent may demonstrate such rights or legitimate interests on its part, inter alia, through the circumstances mentioned in article 3.1 of the Regulations. The Complainant may provide evidence that the Domain Name has been registered or is being used in bad faith, inter alia, through the circumstances mentioned in article 3.2 of the Regulations.
As the Respondent has not filed a formal response, the Panel shall rule on the basis of the Complaint. In accordance with article 10.3 of the Regulations, the Complaint shall in that event be granted, unless the Panel considers it to be without basis in law or in fact.
A. Identical or Confusingly Similar
It is established case law that the country code Top-Level Domain (“ccTLD”) “.nl” may be disregarded in assessing the similarity between the domain name on the one hand, and the relevant trademark on the other hand (see: Taylor Made Golf Company, Inc. v. Lotom Group S.A., WIPO Case No. DNL2010-0067; Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).
The Domain Name is confusingly similar to the Complainant’s Trademark, because the Domain Name incorporates the Trademark in its entirety. The Domain Name differs from the Trademark only in that the Trademark in the Domain Name is followed by a generic or descriptive term, namely “glazen”. The addition of such a generic or descriptive term does not eliminate the confusing similarity with the Trademark (see Seiko EPSON Corporation v. ANEM Computers / ANEM, WIPO Case No. DNL2010-0024).
Therefore, the Panel finds that the Domain Name is confusingly similar to the Trademark within the meaning of the Regulations. The Complainant has thus established the first element of article 2.1 of the Regulations.
B. Rights or Legitimate Interests
Only under specific circumstances may a reseller of trademarked goods have a legitimate interest in a domain name incorporating the trademark of the original manufacturer. Pursuant to the UDRP1 panel decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the use of a trademark in a domain name by an authorized sales agent for the sale of trademarked goods may be considered a bona fide offering of goods, constituting a legitimate interest, if several requirements are met. In later decisions under both the Regulations and the UDRP, the same has been acknowledged in respect of such use by an (unauthorized) reseller, such as the Respondent (see, amongst others: Maison Louis Latour v. Jos Beeres Wijnkoperij, WIPO Case No. DNL2011-0074; and Seiko EPSON Corporation v. ANEM Computers / ANEM, supra).
The referenced requirements for the offering to be bona fide include, at minimum, the following:
a) the Respondent must actually offer the goods and services at issue;
b) the Respondent must use the website to sell only the trademarked goods;
c) the website must accurately and prominently disclose the Respondent’s relationship with the Complainant; and
d) the Respondent must not try to “corner the market” in domain names that reflect the Trademark.
The Panel notes that, at the time of filing of the Complaint, the website under the Domain Name provided a direct link to “www.glazenmagazijn.nl” which prima facie does not meet the requirements under b and c, as the website also sells other goods than the LIBBEY goods and the website does not accurately and prominently disclose the Respondent’s relationship with the Complainant.
Based on the foregoing, the Panel is of the opinion that the Respondent has no rights to or legitimate interests in the Domain Name under the Regulations.
C. Registered or Used in Bad Faith
The Respondent has, according to the information submitted by the Complainant, been using the Domain Name for (re)selling original products of the Complainant for as long as the Domain Name has been registered by the Respondent. The registrations of the Trademark predate the registration of the Domain Name by the Respondent. The Respondent is therefore most likely to have known of the Complainant, its products, (other) trademarks and trade name prior to registering the Domain Name.
Although the Respondent has upon receipt of the cease-and-desist letter(s) on behalf of the Complainant indicating its rights and concerns, made amendments to its website, the fact remains that the Domain Name incorporates the Trademark thereby attracting Internet users to the website of the Respondent. That website also offered competing products and furthermore not sufficiently disclosed the Respondent’s relationship with the Complainant.
Therefore, the Panel must conclude that the Domain Name was used by the Respondent for commercial gain, by intentionally attracting Internet users to its website where the Respondent is also offering goods of competitors of the Complainant, through the likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. This constitutes evidence of bad faith in terms of the Regulations (article 3.2(d)) (see: Seiko EPSON Corporation v. ANEM Computers / ANEM, WIPO Case No. DNL2010-0024; and Taylor Made Golf Company, Inc. v. Lotom Group S.A., WIPO Case No. DNL2010-0067).
Therefore, the Panel finds that the Respondent registered and is using the Domain Name in bad faith. The third requirement of the Regulations has been met.
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name, <libbeyglazen.nl>, be transferred to the Complainant.
Date: January 16, 2017
1 While the Complaint is brought under the Regulations and not the Uniform Domain Name Dispute Resolution Policy (“UDRP”), given the similarities between the two, where applicable the Panel considers UDRP precedent relevant to the current proceeding, and will refer to it where appropriate.