#Mijndomein .com : UDRP decision denies transfer of Dutch #domain as generic

UDRP has been denied.

A Dutch company operating from mijndomein.nl tried to wrestle away the matching dot .com, mijndomein.com.

The latter was registered in 2003 and according to their web site, operates a business worldwide. They risked losing their domain via the UDRP process at the WIPO.

Despite the Complainant’s existing Benelux trademark (2016) for MIJNDOMEIN.NL, the panel found that the term is a generic, descriptive term for “my domain” in this statement:

“On the other hand, the term “my domain” has a certain descriptive character and furthermore that the complainant apparently did not take any action at the time of the registration of the confusingly corresponding Domain Name. The Panel also notes that the Complainant hardly pays any attention in its Complaint to a possible registration in bad faith. The complainant’s only argument put forward in this respect is that, according to the Complainant, the amount claimed by the Defendant to transfer the Domain Name in bad faith suggests. However, in the context of negotiations between the Parties as a result of the earlier UDRP decision, the Panel considers this insufficient twelve years after the original registration of the largely descriptive Domain Name to justify such a conclusion. In addition, Defendant, or at least the Baffoon BV affiliated with him, has registered a Benelux trademark that was filed six years ago. The relevant trade mark register does not show any proceeding initiated by the Complainant or a third party; within the limits of the administrative UDRP procedure there is no room for further investigation by the Panel in this respect.”

Decision: Deny the transfer of mijndomein.com. Full details on the UDRP decision follow:

WIPO Arbitration and Mediation Center
DECISION ADMINISTRATIVE PANEL
Mijndomein Hosting BV v. Anthonij Jacobus
Case no. D2018-1371

1. The Parties

The Complainant is Mijndomein Hosting BV from Lelystad, the Netherlands, represented by JSIP, the Netherlands.

The Respondent is Anthonij Jacobus from Tanauan, Philippines, represented by De Raadgevers Bedrijfsjuristen BV

2. The Domain Name and Registrar

The relevant domain name <mydomain.com> (the “Domain Name”) is registered via Vautron Rechenzentrum AG (the “Registrar”).

3. Procedural History

The Complaint was submitted in Dutch to the WIPO Arbitration and Mediation Center (the “Center”) on 14 June 2018. On 19 June 2018, the Center sent an e-mail to the Registrar for registration of the Domain Name. On 20 and 27 June 2018, the Registrar sent to the Center by e-mail the reply to the request for verification, in which he confirmed that the Respondent is registered as the holder of the registration and in which he submitted the contact details of the Respondent. On June 21, 2018, the Center sent an e-mail to parties in Dutch and English regarding the language of the procedure. On 23 June 2018, the Complainant submitted a request to conduct the proceedings in Dutch. By e-mail of 25 June 2018, Respondent agreed to conduct the proceedings in Dutch.

The Center has verified that the Complaint meets the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Additional Rules”).

In accordance with paragraphs 2 and 4 of the Rules, the Center formally informed the Defendant of the Complaint and the proceedings began on 2 July 2018. In accordance with paragraph 5 of the Rules, the last date for submitting the Reply was July 22, 2018. On July 16, 2018, the Center of Respondent received a request for postponement for filing the Defense. On 17 July 2018, the Complainant agreed to agree with the requested postponement of 28 calendar days. On 19 July 2018, the Center informed the Parties that the defense period was extended to 20 August 2018. On 6 and 8 August 2018, the Respondent requested that the period of defense should be postponed until 15 September 2018, when the complainant stated on 8 August 2018 that he did not agree. go with a second extension. On August 9, 2018, the Center informed the Parties that they would not honor the request for postponement. The Statement of Defense was filed with the Center on 20 August 2018.

The Center appointed Willem JH Leppink on August 28, 2018 as Administrative Panel in this case. The Panel determines that the Panel has been correctly appointed. The Panel has submitted the Statement of Acceptance and the Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.

A complaint about the Domain Name has already been filed with the Center, which was decided on 13 March 2017 ( Mijndomein.nl BV v. Baffoon BV, Richard Hoedemaker, WIPO Case number D2017-0083 ). With regard to the resubmission, the Panel accepts this case on the basis of the facts relied on by the Complainant regarding the identity of Respondent. Incidentally, it appears from the Complaint that the Complainant did not understand that a resubmission does not offer the possibility to submit further arguments based on such new facts. The Panel will therefore only consider legal arguments that relate to new facts.

4. Factual Background

The Complainant is the holder of various trademark registrations, including the Benelux trademark (word mark) MIJNDOMEIN.NL, with registration number 0990801, filed on 11 February 2016, hereinafter referred to as the “Brand”. The Complainant also acts under the name “Mijndomein.nl BV” and is registered under this trade name in the trade register of the Chamber of Commerce and is known under this name. The complainant is also the holder of the domain name <mydomain.nl>.

The Domain Name is registered on January 18, 2003. The Domain Name now leads to an active website (the “Website”) where, in short, it can be read that the name “Mijndomein.com” is a trade name of Baffoon BV and that it is not is affiliated with the Complainant.

5. Propositions of the Parties

Below are only the statements of the Parties that are relevant in the light of the decision to be given.

A. Complainant

Respondent has no right or legitimate interest in the Domain Name. Respondent has no registered trademark or other right with regard to the term “my domain”.

The domain name was transferred by the former holder, Baffoon BV, to the Respondent in an unlawful manner, whereby the Defendant has to act as a pseudonym of Richard Jacobus Anthonij Hoedemaker, the director and sole shareholder of Baffoon BV, as follows from the registration of Baffoon BV in the Commercial register of the Chamber of Commerce.

The previous complaint about the Domain Name was thus directed against Baffoon BV After a negative decision by the panel, the Parties have negotiated the sale of the Domain Name. Baffoon BV used an asking price of EUR 50,000. Respondent has thus registered the Domain Name in order to resell the Domain Name for a high price and thus gain commercial advantage with the registration of the Domain Name.

From the correspondence between the Complainant and Defendant it appeared that in contradiction with the Defendant’s denials in a previous case, Defendant does have control over the Domain Name.

B. Defendant

Baffoon BV is the holding company of Respondent and can be identified with the Defendant. Respondent, or Baffoon BV has been the holder of the Domain Name since 2003. Moreover, Defendant, or Baffoon BV, holder of the Benelux logo in which the text MYDOMAIN is included, with registration number 0912332 and deposited on December 20, 2011. The Brand (of Complainant) has a later registration date. Respondent, or Baffoon BV therefore has a legitimate interest in the Domain Name.

6. Judgment and Findings

Pursuant to paragraph 6 of the Rules, a claim to change the domain name holder, such that the Complainant becomes the domain name holder instead of the defendant, must meet three cumulative requirements:

(a) the domain name is identical or confusingly similar to a domain name identical to or in such a way that there may be confusion with a trademark or service mark of which the complainant is entitled;

(b) the domain name holder has no right or legitimate interest in the domain name; and

(c) the domain name has been registered in bad faith and is used in bad faith.

Given the nature of this case, the Panel will ignore the first element and jointly assess the second element and third element. The Panel notes that under the UDRP both the registration and the use of the domain name must be in bad faith.
Right or Legitimate Importance and Registered and Used in Kwader Trouw

The Panel does not rule out that the Defendant registration of the Domain Name is inspired by Kinderer’s reputation in the market. It may be assumed that in the four years between the registration of Klagers “.nl” domain name (1999) and Defendant registration of the Domain Name (2003), the Complainant had built up a certain reputation, especially given the early phase of the domain name system and the relevant market . The fact that Respondent has registered a “.com” domain name that otherwise is identical to Kgerer’s existing “.nl” domain name indicates possible opportunistic motives of Respondent; given the Dutch language and target group of the Domain Name, it might have been more obvious for a party acting in good faith to choose a “.nl” domain name. The possibly misleading allegations that the Defendant has made more recently to the Complainant further add to the suspicion of bad faith.

On the other hand, the term “my domain” has a certain descriptive character and furthermore that the complainant apparently did not take any action at the time of the registration of the confusingly corresponding Domain Name. The Panel also notes that the Complainant hardly pays any attention in its Complaint to a possible registration in bad faith. The complainant’s only argument put forward in this respect is that, according to the Complainant, the amount claimed by the Defendant to transfer the Domain Name in bad faith suggests. However, in the context of negotiations between the Parties as a result of the earlier UDRP decision, the Panel considers this insufficient twelve years after the original registration of the largely descriptive Domain Name to justify such a conclusion. In addition, Defendant, or at least the Baffoon BV affiliated with him, has registered a Benelux trademark that was filed six years ago. The relevant trade mark register does not show any proceeding initiated by the Complainant or a third party; within the limits of the administrative UDRP procedure there is no room for further investigation by the Panel in this respect.

The panel in the original case indicated that its decision does not prevent the Parties from bringing the case to court. Particularly in view of the long history of the registrations and activities of the Parties as well as their clear Dutch connection, the current Panel concurs with this consideration, even where, as mentioned, there is doubt about Defendant’s motives. The civil court has more possibilities to highlight the facts that are relevant to the assessment of this case.

The Complaint and in particular the lack of a clear statement and substantiation of a possible registration in bad faith in the current case, partly in light of the registered trademark of Baffoon BV, offers under the Disputes Regulation insufficient basis for a decision to transfer the Domain name.

7. Decision

On the basis of the above considerations, the Panel rejects the Complaint.

Willem JH Leppink
Administrative Panel
Date: September 11, 2018


Facebooktwittergoogle_plusredditpinterestlinkedinmail
Copyright © 2018 DomainGang.com · All Rights Reserved.

Leave a Reply

Your email address will not be published. Required fields are marked *

 characters available