WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nordson Corporation v. M. van Wijk
Case No. DNL2017-0067
1. The Parties
The Complainant is Nordson Corporation of Ohio, United States of America, represented by Baker & Hostetler, LLP, United States of America.
The Respondent is M. van Wijk of Baarn, the Netherlands, represented by Filip Van Eeckhoutte, the Netherlands.
2. The Domain Name and Registrar
The disputed domain name <nordsonproblue.nl> (the “Domain Name”) is registered with SIDN through Metaregistrar B.V.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2017. On November 20, 2017, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On November 21, 2017, 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 November 27, 2017. In accordance with the Regulations, article 7.1, the due date for Response was December 17, 2017. Upon request by the Respondent, the Response due date was extended until December 21, 2017. The Response was filed with the Center on December 20, 2017.
On December 21, 2017, SIDN commenced the mediation process. On January 18, 2018, SIDN extended the mediation process until February 17, 2018. On February 19, 2018, SIDN further extended the mediation process until March 19, 2018. On March 13, 2018, 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 April 5, 2018. 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 following facts are undisputed.
The Complainant is a multi-national corporation based in the state of Ohio, United States of America. The Complainant was founded in 1954, and designs, manufactures and services products used for dispensing adhesives, coatings, sealants, biomaterials and other materials. The Complainant is well known for its products under the NORDSON and PROBLUE brands.
The Complainant is owner of several trademark registrations for the NORDSON and PROBLUE brands in various jurisdictions, including but not limited to the European Union trademark NORDSON, with registration number 000047266, registered on November 24, 1998, and with a filing date of April 1, 1996, hereinafter referred to as the “NORDSON Trademark” and European Union Trademark PROBLUE, registration number 002751154, registered on February 13, 2004, and with a filing date of June 26, 2002, hereinafter referred to as the “PROBLUE Trademark”. The NORDSON Trademark and the PROBLUE Trademark will be collectively referred to as the “Trademarks”.
The Domain Name was registered by the Respondent on December 31, 2013, and resolves to a website displaying the name “Hotmelt Service” in combination with the URL “www.hotmeltservice.nl” (the “Website”).
5. Parties’ Contentions
Insofar as relevant, the Complainant contends the following.
The Domain Name is confusingly similar to the Trademarks in that it incorporates the Trademarks entirely.
The Respondent is not commonly known by the Domain Name. The Complainant has not authorized under contract or otherwise, the Respondent’s use of the Trademarks in the Domain Name. The Respondent is using the Domain Name to divert customers to the website of the Respondent, “www.hotmeltservice.nl”.
The Website does not offer the trademarked products. The Website shows the name “Hot Melt Service” and a link to the Respondent’s website “www.hotmeltservice.nl”.
Further, the Complainant contends that the Website contains wording that the Domain Name does not belong to the Complainant, but to Hotmelt Service of Baarn. The wording on the Website does not address the lack of relationship between the Complainant and the Respondent. Moreover, the disclaimer appears in the Dutch language and in small print below the much more prominent link to the Respondent’s website “www.hotmeltservice.nl” and provides no link to the Complainant’s website making it ineffective in preventing initial interest confusion.
The Respondent has registered and is using the Domain Name in bad faith to divert customers to the Respondent’s website “www.hotmeltservice.nl”. The Respondent attempts to attract for commercial gain Internet users looking for the Complainant or its authorized distributors and service providers by creating a likelihood of confusion with the Trademarks.
The Respondent has submitted a lengthy Response. Insofar as relevant, the Respondent contends the following:
The Respondent is a former reseller/customer of the Complainant. The relationship between the Complainant and the Respondent ended in 2012.
After the Respondent registered the Domain Name in December 2013, the Complainant sent a letter to the Respondent in May 2015 concerning the use of the Domain Name. The Respondent thereupon rebuilt its website and published it in November 2017. From that date on, the Respondent only offers bona fide products and services of the Respondent. The Website contains a hyperlink to the website of the Complainant. Furthermore, whether treated as a test or under-construction page or treated as an operating website, the Website discloses the Respondent’s non-affiliation with the Complainant. Therefore, the Respondent has legitimate interests in the Domain Name.
Furthermore, there are no circumstances indicating that the Respondent registered the Domain Name and is using the Domain Name in bad faith.
6. Discussion and Findings
Pursuant to article 2.1 of the Regulations the Complainant must prove each of the following three elements:
a. the 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 Domain Name; and
c. the Domain Name has been registered or is being used in bad faith.
A. Identical or Confusingly Similar
Pursuant to article 2.1(a) under I 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 Panel finds that the Domain Name is confusingly similar to the Trademarks as the Domain Name incorporates both the NORDSON Trademark and the PROBLUE Trademark entirely. The combination of the Trademarks in the Domain Name does not serve to distinguish the Domain Name from the Trademarks. Rather, the combination of the Trademarks enhances the confusing similarity (Aktiebolaget Electrolux v. 2220 Internet Coordinator, WIPO Case No. D2005-1184).1
The Complainant has therefore established the first element of article 2.1 of the Regulations.
B. Rights or Legitimate Interests
Pursuant to article 2.1 of the Regulations, the Complainant must prima facie demonstrate that the Respondent has no rights or legitimate interests in respect of the Domain Name. Should the Complainant meet this test, the Respondent may show such rights or legitimate interests on its part inter alia through the following circumstances listed in article 3.1 of the Regulations:
a. before having any notice of the dispute, the Respondent made demonstrable preparations to use the Domain Name (or a name corresponding to the domain name) 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 Name, 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.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Complainant has established that the Respondent is not commonly known by the Domain Name and that the Respondent is not authorized to use the Trademarks.
In light of the Respondent’s former relationship with the Complainant, the question whether the Respondent is using the Domain Name in connection with a bona fide offering of goods or services should take account of the decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, which has been rendered under the UDRP and 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 and Maison Louis Latour v. Jos Beeres Wijnkoperij, WIPO Case No. DNL2011-0074.
Pursuant to this test, to be bona fide the offering must meet several requirements. These include, at minimum, the following:
- the respondent must actually be offering the goods or services at issue;
- 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;
- the site must accurately disclose the respondent’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;
- 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.
The aforementioned decisions furthermore confirm that the above criteria (the “Oki Data Criteria”) are non-limitative and that other indications relevant to the legitimacy of respondent conduct may be taken into account.
The Complainant has evidenced that from May 2015 until the filing of the Complaint, the Website offered a parking page including the name “Hotmelt Service” and a link to the website “www.hotmeltservice.nl”. No actual goods or services were offered at the Website itself. Furthermore, the Complainant contends, and the Respondent has not disputed, that prior to the filing of the Complaint, the website under “www.hotmeltservice.nl”, offered for sale products not limited to those of the Complainant. The Panel finds that the Domain Name is thus not being used in connection with a bona fide offering of goods or services.
The Respondent points out that it had rebuilt the Website in November 2017 and that the Domain Name since then is used for a bona fide offering of goods or services meeting the Oki Data Criteria. Leaving aside the question whether or not the current Website meets the Oki Data Criteria, it appears that such changes to the Website were made in reaction to the filing of the Complaint. In this regard the Panel refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), which provides inter alia in section 2.11 that panels tend to assess claimed respondent rights or legitimate interests in the present, i.e., with a view to the circumstances prevailing at the time of the filing of the complaint.
In conclusion, based on the record submitted, the Panel finds that the Respondent does not 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.
The Respondent has used the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion which may arise with the Trademarks as to the source, sponsorship and endorsement of the Website. Internet users are likely to believe that the Complainant is in some way affiliated with the Respondent. This notion is further sustained by the fact that the Domain Name incorporates the Trademarks entirely and that the Respondent appears to operate in the same business area as the Complainant.
The Panel notes that the Respondent registered the Domain Name one year after the Complainant terminated its business relationship with the Respondent. The Panel further notes that after the Complaint was filed, the Respondent rebuilt the Website, presumably in order to ex post comply with the Oki Data Criteria.
In all the circumstances, the Panel finds that the Domain Name has been registered and used in bad faith. In this connection, the Panel refers to section 3.2.1 of the WIPO Overview 3.0, which provides inter alia that particular circumstances panels may take into account in assessing whether the respondent’s registration of a domain name is in bad faith include the content of any website to which the domain name directs, including any changes in such content and the timing thereof.
In conclusion, the Panel finds that the Complainant has also established the third element of article 2.1 of the Regulations.
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain name <nordsonproblue.nl> be transferred to the Complainant.
Willem J. H. Leppink
Date: April 19, 2018
1 In view of the fact that the Regulations are to a large extent based on the Uniform Domain Name Dispute Resolution Policy(UDRP), it is well established that cases decided under both the Regulations and the UDRP are relevant to this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V., WIPO Case No. DNL2008-0050).