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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vereniging Bovag v. Bastiaan Roest
Case No. D2000-0901
1. The Parties
The Complainant in this administrative proceeding is Vereniging Bovag, Kosterijland 15, 3981 AJ Bunnik, the Netherlands, represented by C.O. Wenckebach, attorney-at-law, Boekel De Nerйe, P.O. Box 2508, 1000 CM Amsterdam, the Netherlands, hereinafter the "Complainant".
Respondent is Bastiaan Roest, Overtoom 336 II, 1054 JE Amsterdam, the Netherlands, hereinafter the "Respondent".
2. Domain Name and Registrar
The domain name at issue is "bovag.com", registered on February 3, 2000, hereinafter referred to as the "Domain Name". The registrar is Network Solutions.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complainant’s complaint on August 2, 2000, (hard copy).
On August 23, 2000, the Center transmitted via email to Network Solutions a request for registrar verification in connection with this case. On August 24, 2000, Network Solutions transmitted via email to the Center its verification response, confirming that the registrant is B. Roest, that the administrative and billing contact is Bastiaan Roest and that the technical and zone contact is mydomain Support.
In view of the Complainant’s designation of a single panelist, the Center invited Mr. Geert Glas to serve as a panelist.
Having received Mr. Geert Glas’ Statement of Acceptance and Declaration of Impartiality and Independence on October 3, 2000, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Geert Glas was formally appointed as the Sole Panelist, on September 29, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
The Administrative Panel shall issue its Decision based on the complaint, the response, the evidence presented, the Policy, the Rules and the Supplemental Rules.
4. Factual Background
Complainant is the owner of numerous trademark registrations for the trademark "Bovag". Copies of those registrations are attached to the complaint. These are, amongst others:
h The word mark BOVAG, registered on November 27, 1990, under number 487884, with the Benelux Trademark Office for classes 35, 37, 39, 41 and 42;
h The logo BOVAG, registered on January 16, 1985, under number 416883, with the Benelux Trademark Office for classes 6, 9, 16, 20 and 24;
h The logo BOVAG, registered on November 27, 1999, under number 489184, with the Benelux Trademark Office for classes 35, 37, 39, 41 and 42; and
h The logo BOVAG, registered on January 16, 1986, under number 416877, with the Benelux Trademark Office for classes 9 and 16.
It appears from the response that Complainant was the prior owner of the Domain Name, but that Complainant did not renew its registration, so that Respondent decided to register it himself.
The name BOVAG stands for "Bond van Garagehouders" (Federation of Automobile Garage Owners) which was founded in 1930, and is well known in The Netherlands.
Complainant indicates, without however producing any documents to sustain its assertion, that it summoned Respondent at several occasions to undertake the transfer of the Domain Name.
There is no relation between Respondent and Complainant, and Respondent is not a licensee of Complainant, nor has he otherwise obtained an authorization to use Complainant’s trademarks.
The Domain Name does not resolve to any web page.
5. Parties Contentions
Complainant contends that Respondent registered the Domain Name without Complainant’s permission, that the Domain Name is identical to Complainant’s trademark and that Respondent has no right or legitimate interest in the Domain Name and registered it for the sole purpose of reselling it to the highest bidder and/or preventing Complainant from using it.
The use of the trademark BOVAG is the exclusive right of the Vereniging Bovag itself and its members who have obtained a proper license from the Vereniging Bovag. Respondent is not a member of the Vereniging Bovag, nor has it obtained a proper license from the Vereniging Bovag to use the trademark BOVAG. In addition, Respondent has never received permission from Complainant to register or use the trademark in a Domain Name.
By registering and using the Domain Name the Respondent is infringing Complainant’s trademark and tradename rights. In addition, Respondent is misleading the general public and is trying to profit from the good reputation and standing of Complainant and its trademarks and tradenames. Furthermore, registration and use of the Domain Name prevents Complainant from activating its own web site under the top-level domain ".com". In addition, Respondent is, by registering and using the Domain Name, intentionally attempting to create the impression that he is a member of the Vereniging Bovag or at least affiliated with the Vereniging.
It should be noted that Complainant’s tradename and trademarks are very well known and Respondent’s registration and use of the domain name undoubtedly qualifies as conduct described in paragraph 4.b and c of the Policy.
Respondent does not have nor does it make any legitimate commercial or non-commercial use of the Domain Name. Furthermore, it should be noted that Complainant has on various occasions summoned Respondent to cease its infringing activities and transfer the Domain Name, but Respondent has never replied to these requests and letters of summons.
The Dutch courts have on numerous occasions granted injunctive relief to the Vereniging Bovag in similar disputes over the trademarks and tradenames of Complainant. Complainant refers to the verdicts of the President of the District Court in Haarlem dated September 22, 1995, and the verdict of the President of the District Court in Rotterdam, October 6, 1998.
Consequently, Complainant requires the transfer of the Domain Name registration.
Respondent alleges that he co-owns the Domain Name with Mr A.F. Haye. The response is submitted on behalf of both of them.
Furthermore, Respondent contends that the allegations made by Complainant are absolutely false. In the Respondent's words:
"As Mr Haye and myself have bought the rights/ownership of Networksolution they are not entitled to claim this domain name. Before we claimed the domain name BOVAG.COM we investigated the history of this name. VERENIGING BOVAG has been the owner of the domain name BOVAG.COM, but they have rejected the name themselves.
PLEASE BE ADVICED that Boekel de Neree make no notice of the fact that they rejected the domain name BOVAG.COM. In all documents which Boekel de Neree presented to you and to us nothing of the previous ownership is mentioned.
We think that the above is all ready enough reason to remain all rights of the domain name BOVAG.COM to us."
With regard to the legitimate rights and interests issue, Respondent states:
"We are in preparation to set-up an internet e-commerce company by the name of BOVAG. This name comes out of the initials of all partners involved. Because of the lawsuit of vereniging BOVAG we had some delay. This to the fact that Network solution has frozen the name during this legal procedure."
On the bad faith issue, Respondent writes that:
"We NEVER have displayed any thing on the page"www.bovag.com" also never we have contacted any one who has any relationship with VERENIGING BOVAG. Never there has been any contact between VERENIGING BOVAG and Ourselves (B. Roest / A.F. Haye)."
Furthermore, Respondent alleges that, since Complainant is a non-commercial entity, Complainant does not need the ".com" extension, since it is only meant for commercial companies.
Consequently, Respondent requests that the transfer of the Domain Name registration be denied.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Administrative Panel as to the principles the Administrative Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
(2) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and,
(3) that the Domain Name has been registered and is being used in bad faith.
The Domain Name is "bovag.com".
"Bovag" is a registered trademark of Complainant.
In view of the above, the Administrative Panel finds that the Domain Name is identical to the trademark of Complainant.
b. Rights or Legitimate Interests
Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to apply for any domain name incorporating any of those marks, nor has Respondent ever been known by this name.
According to Respondent, the fact that Respondent registered the Domain Name grants him a right of ownership to it. It is however well established, that a right or legitimate interest cannot be deduced from the mere registration of a domain name.
Respondent also contends that he is setting up an Internet e-commerce company under the trade name "Bovag", which is composed of the initials of all partners involved. It should however be noted that no evidence whatsoever has been submitted to sustain this assertion.
Furthermore, Respondent himself confirms that he never connected the Domain Name to any web page. The Panel is inclined to find that such a use, or rather absence of use, of the Domain Name tends to indicate that Respondent does not have a legitimate right or interest in the Domain Name.
The Administrative Panel therefore finds that Respondent has no legitimate right or interest in the Domain Name.
c. Registration and Use in Bad Faith
Several facts have to be taken into consideration when assessing the absence/presence of bad faith in this matter:
1. "Bovag" is a registered trademark of Complainant.
2. The Domain Name, which was registered on February 3, 2000, does not resolve to any web page nor does Respondent provide any credible plan to develop any online activity under the Bovag name.
3. Taking into consideration the fame of Complainant and Complainant’s trademark in the Netherlands, combined with the fact that Respondent is a national and resident of this country, the Panel finds that Complainant could not have been unaware of Complainant’s trademark when he registered the Domain Name.
4. Moreover, such prior knowledge of the Bovag trademark is not contested by Respondent who volunteered that Complainant had owned the Domain Name themselves before but had "rejected" this name. The Panel is however of the opinion that Complainant's failure to timely renew the Domain Name cannot as such be interpreted as a decision to abandon any and all rights in the Domain Name.
In view of the above, the Panel is of the opinion Respondent knew of Complainant, of Complainant’s trademark rights and of the fact that by registering the Domain Name he was infringing upon the rights of Complainant. His further behavior following the registration from the Domain Name does not indicate otherwise.
In conclusion, it is the Panel’s opinion that Respondent registered and used the Domain Name in bad faith.
In light of the foregoing, the Administrative Panel decides that the Domain Name "bovag.com" registered by Respondent is identical to the trademark of Complainant, that Respondent has no right or legitimate interest in respect of the Domain Name, and that Respondent registered and used the Domain Name in bad faith.
Accordingly, pursuant to Paragraph 4, i of the Policy, the Administrative Panel requires that the registration of the Domain Name "bovag.com" be transferred to Complainant.
Dated: October 30, 2000