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WIPO Domain Name Decision: D2000-1783
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Дела по доменам общего пользования
Дела по национальным доменам
and Mediation Center
N.V. V. Internet Service Dokkum
1. The Parties
The Complainant is Robein
Leven N.V., a corporation organized under the laws of The Netherlands, having
its principal place of business in ’s-Gravenhage (Sophialaan 4, 2514 JP), The
Netherlands and represented by Mr. Jeroen Bedaux and Mr. Gregor S.P. Vos ("the
The Respondent is Internet Service Dokkum, a one-man business, having its principal
place of business in Dokkum (Parkbolsterweg 29, 9101 JX), The Netherlands ("the
2. The Domain Name and
The domain name at issue
is <robein.com>. The Registrar is Bulkregister.com, 7 East Redwoodstreet
Third Floor, Baltimore MD 21202, United States of America ("the Registrar").
3. Procedural History
A complaint was submitted
electronically with the World Intellectual Property Organization Arbitration
and Mediation Center (The "WIPO Center") on
December 21, 2000.
The hardcopy under cover of a letter of the same date was received on December
22, 2000 ("the Complaint"). An Acknowledgement of Receipt was sent
by the WIPO Center to the Complainant dated December 28, 2000.
On January 1, 2001, a Request for Registrar Verification was transmitted to
the Registrar. On January 18, 2000, the Registrar confirmed by e-mail that the
domain name <robein.com> is registered with Bulkregister.com and that
the Respondent is the current registrant of that domain name.
On January 19, 2001, a
Notification of Complaint and Commencement of Administrative Proceedings (the
"Commencement Notification") was transmitted by e-mail and by courier to the
Respondent setting a deadline of February 7, 2001, by which the Respondent could
make a response to the Complaint.
On February 7, 2001, Respondent
tried to submit its Response ("the Response") at the WIPO Center by
e-mail. Apparently, due to technical problems, this e-mail was not delivered
at the WIPO Center. On February 7, Respondent succeeded however in sending its
Response to Complainant by e-mail. On February 12, 2001, the mail to the WIPO
Center was returned to Respondent by its postmaster. On February 13, 2001, the
Respondent submitted its Response at the WIPO Center by e-mail once again. The
hard copy of the Response was received by the WIPO Center on February 12, 2001.
On February 15, 2001, Complainant
submitted to the WIPO Center a Supplemental Submission ("the Supplement").
On February 22, 2001, Respondent submitted to the WIPO Center a Response to
the Supplement ("the Second Response").
Respondent’s Response identifies
Internet Service Dokkum as Respondent and
Mr. G. Poortenga as the
person to whom communications should be sent. The Response confirms that Respondent
is the owner of the domain name <robein.com> and agrees that the dispute
be decided by a sole panelist from the approved list of panelists. Respondent
however points out that Mr. Charles Gielen, one of the Dutch panelists on the
approved list of panelists has a conflict of interest.
On March 16, 2001, the
WIPO Center sent a Notification of Appointment of Administrative Panel and Projected
Decision Date by e-mail to the parties, in which
Wolter Wefers Bettink was
appointed as the Sole Panelist. The Sole Panelist finds that the Administrative
Panel was properly constituted and appointed in accordance with the Rules and
The panelist accepted Respondent’s
Response, although received by the WIPO Center after the set deadline, because
Respondent has provided evidence that he tried to e-mail the Response on February
7, 2001, to the WIPO Center, but that this e-mail bounced back due to technical
problems at the wipo-int host. Moreover, Complainant did receive Respondent’s
Response within the set deadline.
On March 22, 2001, the
Panelist communicated to the parties that the Decision date would be postponed
until April 4, 2001, due to the acceptance of the Supplement and the Second
4. Factual Background
On the basis of the documents
submitted by the parties the following facts can be established as agreed between
parties or insufficiently disputed.
The Complainant is the
owner of the registered Benelux trademark ROBEIN, registered on October 13,
1987. The trademark is registered for "insurance" (class 36).
In July 2000, the Complainant
became aware that the domain name <robein.com> was registered by Namezero,
an American internet service provider which, inter alia, registers domain names
in its own name, on behalf of third parties. At Complainant’s request Namezero
informed Complainant that the domain name <robein.com> was registered
on behalf of Mr. E. Edens, and that according to Namezero’s general conditions,
it was not up to Namezero, but up to the member to sell the domain name. By
letter of August 15, 2000, the Complainant summoned Mr. E. Edens to transfer
the domain name. Mr. E. Edens replied on behalf of Respondent that all negotiations
("onderhandelingen") had to go through Mr. G. Poortenga.
Namezero has transferred
the domain name <robein.com> to Respondent.
The Complainant has summoned
the Respondent at September 1 and
November 30, 2000, to transfer
the domain name <robein.com>. The Complainant has also offered to pay
the Respondent an amount of Dutch Guilders 1000 and 2000 to compensate the costs
made by Respondent.
5. Applicable Rules
Paragraph 4a of the Policy
directs that Complainant must prove each of the following:
(i) the domain name
in issue is identical or confusingly similar to Complainant's trademark, and
(ii) Respondent has
no rights or legitimate interests in respect of the domain name, and
(iii) the domain name
has been registered and is being used in bad faith.
Paragraph 4b of the Policy
sets out, by way of example, four circumstances, each of which, if proven, shall
be evidence of the registration and use of the domain name in bad faith for
the purpose of Paragraph 4 (a)(iii) above.
Paragraph 4c of the Policy
sets out, by way of example, three circumstances, each of which, if proven by
Respondent, shall demonstrate Respondent’s rights or legitimate interests in
the domain name for the purpose of Paragraph 4 (a)(ii) above.
6. Parties’ Contentions
The Complainant states
in the Complaint and the Supplement that it uses the name "robein"
through its trademarks "robein".
The grounds for the Complaint
(1) The domain name
<robein.com> is identical to the trademark "robein" in accordance
with Paragraph 4a (i) of the Policy;
(2) The Respondent has
no rights or legitimate interests in respect of the domain name <robein.com>
as provided in Paragraph 4a (ii) in connection with Paragraph 4c of the Policy.
Firstly, before any
notice of the dispute, the Respondent did not use, or make demonstrable preparations
to use the domain name <robein.com> for providing goods and services in
commerce. Not until after the Complainant filed its Complaint did the Respondent
present a website, allegedly containing a complete collection of all search-engines
over the world, that the Respondent would have built in the past one and a half
year. The intentions with regard to Respondent’s website are implausible. The
Complainant remarks that the categorization of the search-engines is exactly
the same as on www.searchengines.com/searchengine_listings.html. The little
puppet named Robot Einstein (Robein) by Respondent as displayed under the domain
name is copied from Microsoft’s Gallery of Office Assistants. Complainant states
that Respondent has tried to create a legitimate interest in violation of the
Secondly, the Respondent
has not been and is not commonly known by the domain name.
Thirdly, the Respondent
is not making a legitimate non-commercial or fair use of the domain name, without
intent for commercial gain to misleadingly divert consumers or to tarnish the
trademark "robein". This follows from the fact that Respondent has
confirmed in the negotiations that it has registered the domain name to commercially
(3) The domain name
<robein.com> was registered in bad faith as provided in Paragraph 4a (iii)
in connection with Paragraph 4b of the Policy.
Firstly, the Respondent
has registered or acquired the domain name <robein.com> primarily for
the purpose of selling, renting, or otherwise transferring the domain name to
Complainant. This follows from offers Respondent made to Complainant in negotiations
to rent the domain name for NLG 1,000 per month or to sell it for NLG 1,000,000.
to Complainant, the fact that some domain names registered by Namezero, which
are (confusingly) similar to some famous trademarks are redirected to Mr. Edens’
website (www.thelighted.com) is indication that the Respondent has registered
the domain name in order to prevent Complainant from reflecting its trade mark
in a corresponding domain name and that Respondent has engaged in a pattern
of such behaviour.
In the Response and Second
Response, Respondent states that he registered the domain name a year ago via
Namezero. Respondent’s plan is to make a great looking website for its project
"ROBEIN". ROBEIN is an assembly of the words Robot Einstein.
Respondent’s goal with <robein.com> is to build a website with a complete
collection of all search-engines in the world. The robot "Robein"
would guide visitors through the site. The project was divided in three stages.
The first two stages are completed at the moment. The third stage (restyling
and redesigning the site) is not finished yet.
Respondent states that
it did not know of Complainant’s existence until Complainant contacted Respondent.
Respondent contests Complainant’s statement that Respondent has no rights or
legitimate interests in respect of the domain name.
Respondent contests Complainant’s
statement that Respondent has registered and is using the domain name in bad
faith. Respondent has legitimate and decent intentions with the site (see above).
Respondent never had the intention to rent or sell the domain name. Respondent
also contests that he has offered to rent or to sell the domain name to Complainant.
Respondent contests that
he only presented a website under <robein.com> after the Notice of Complaint
was filed. Respondent states that a website existed at <robein.com> since
Namezero registered the domain name, but that during the transfer of the domain
name from Namezero to Respondent no website may have been connected to the domain
name. Respondent states that before Complainant contacted Respondent for the
first time he used test pages as a website.
7. Discussion and Findings
a. Trademark rights
has provided sufficient evidence of its rights to the trademark ROBEIN in the
b. Identical or confusingly
The domain name <robein.com>
is clearly confusingly similar to Complainant's trademark ROBEIN.
c. Bad faith
Complainant is relying
on Paragraph 4(b)(i) of the Policy, which provides that sufficient evidence
of bad faith may consist of:
(i) circumstances indicating
that you have registered or you have acquired the domain name primarily for
the purpose of selling, renting, or otherwise transferring the domain name registration
to the complainant who is the owner of the trademark or service mark or to a
competitor of that complainant, for valuable consideration in excess of your
documented out-of-pocket costs directly related to the domain name.
The Panel finds that Complainant
had provided sufficient evidence in this regard.
First, it appears that
Respondent has bought the domain name <robein.com> from Namezero after
Namezero was summoned to transfer the domain name by Complainant. For the Panel,
this is a clear indication that Respondent acquired the domain name primarily
for the purpose of selling or renting it to Complainant.
Second, in a letter dated
August 15, 2000 to Complainant Respondent states that all negotiations regarding
the domain name <robein.com> have to go through Mr. G. Poortenga and that
Complainant can continue to negotiate with Mr. Poortenga as soon as he returns
from his holidays. This puts in doubt the correctness of Respondent’s statement
that he never had the intention to sell or rent the domain name <robein.com>,
nor that he ever offered to rent or sell the domain name to Complainant. It
is, therefore, very likely that, at the time, Respondent was willing to negotiate
a possible sale or lease of the domain name <robein.com>
Third, from a letter dated
November 30, 2000 from Complainant to Respondent, it appears that in a telephone
conversation Respondent has offered to rent the domain name <robein.com>
to Complainant for NLG 1,000 a month and to sell it for NLG 1.000.000. Respondent
has not provided evidence that it has contested the correctness of the content
of this letter of November 30, 2000 at the time.
Until Complainant filed
a Notice of Complaint, Respondent did not inform Complainant or otherwise show
that he was working on the Robot Einstein project. Respondent never mentioned
his intentions with the domain name to Complainant. These circumstances are
an indication for the Panel that the domain name was primarily registered or
acquired for the purpose of selling, renting, or otherwise transferring the
domain name registration to the Complainant.
Based on the above, the
Panel finds that Respondent has registered the domain name <robein.com>
in bad faith.
c. Rights or legitimate
Under Paragraph 4c of the
Policy, Respondent may demonstrate that it has a right or legitimate interest
to a domain name for the purpose of Article 4(a)(ii), inter alia, by providing
evidence of any of the following circumstances:
"(i) before any
notice to you of the dispute, your use of, or 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; or
(ii) you (as an individual,
business, or other organization) have been commonly known by the domain name,
even if you have acquired no trademark or service mark rights; or
(iii) you are making
a legitimate non commercial or fair use of the domain name, without intent for
commercial gain to misleadingly divert consumers or to tarnish the trademark
or service mark at issue."
that he registered the domain name <robein.com> for his Robot Einstein
project seems unlikely. Respondent states that it has been working on the Robot
Einstein project for one and a half years. However, Respondent does not provide
any evidence for this statement. The current website at <robein.com> -
in which Respondent allegedly has worked intensively for the past year and a
half – contains a copy of the search engine categories on the website www.searchengines.com/searchengine_listings.html.
Furthermore, it shows a picture of a puppet ("Robot Einstein", according
to Respondent) which appears to be a copy of a picture from Microsoft’s Gallery
of Office Assistant.
has not provided any evidence of its statement that, before any notice of the
dispute was given to Respondent it had used or made demonstrable preparations
to use the domain name in connection with the bona fide offering of goods or
services. No evidence of the alleged test pages which allegedly featured the
website under <robein.com> has been provided.
Respondent has provided
evidence that it (or the project) is commonly known by the name ROBEIN or the
domain name <robein.com>. Respondent does not have "Robein"
or "robein.com" as a trade name or any other right to the use of this
name. In fact, in the correspondence between the parties prior to the filing
of the Complaint, no mention is made of either Robein, Robot Einstein or any
project with such a name.
Based on the above mentioned,
the Panel finds that Respondent has no rights or legitimate interests in the
domain name for the purpose of Paragraph 4 (a)(ii).
In light of the foregoing,
the Panelist decides that Complainant has provided the required evidence for
the requested order transferring the domain name from Respondent to Complainant.
Accordingly, pursuant to Paragraph 4 (i) of the Policy, the Panel orders that
the registration of the domain name <robein.com> be transferred to Complainant.