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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Knipping Kozijnen B.V. v. R.T.P. Hanssen

Case No. D2006-0622

 

1. The Parties

The Complainant is Knipping Kozijnen B.V., Zwaagdijk, Netherlands, represented by Landmark Trademark Protection, Netherlands.

The Respondent is R.T.P. Hanssen, RDS International B.V., Weert, Netherlands.

 

2. The Domain Names and Registrar

The disputed domain names <knipping.info> and <knipping.org> (hereinafter also referred to as the “Domain Names”) are registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2006. On May 19, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On May 19, 2006, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 13, 2006. The Response was filed with the Center on June 12, 2006.

The Center appointed Alfred Meijboom as the sole panelist in this matter on June 20, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On June 29, 2006, the Panel issued a Procedural Order requesting the Complainant to (i) inform the Panel if any other legal proceedings had been commenced or terminated in connection with or relating to the Domain Names and (ii) provide arguments supported by evidence as to whether that was the case or not, and granting the Respondent the possibility to submit his comments to the Complainant’s submission. The Complainant sent a reply with 4 annexes on July 7, 2006, and Respondent submitted his response with 4 annexes on July 14, 2006.

 

4. Factual Background

The Complainant holds the Benelux device mark KNIPPING (Registration No. 696606), which was registered on July 14, 2000.

The Respondent holds the Domain Names <knipping.org> and <knipping.info>, which were created on August 20, 1999 and October 10, 2001. The Complainant states that the Respondent obtained the Domain Names probably around 2003. This was not disputed by the Respondent.

The Respondent claims to have a license under the Benelux trademarks mentioned below, which are all older than the Complainant’s trademark.

The Benelux device mark KNIPPING (registration no. 684756) was registered in the name of Knipping Fenster und Tьren GmbH. The registration dates from April 27, 2000.

The Benelux word mark KNIPPING (registration no. 680591) was registered in the name of Knipping Fenster und Tьren GmbH. The registration dates from April 18, 2000.

In the Benelux trademark register the following identical modifications are mentioned regarding these two trademarks:

a transfer to RDS International B.V., receipt noted January 21, 2005;

a transfer to Hanssen Beleggingen B.V., receipt noted February 24, 2005 and April 13, 2006;

a license to RDS International B.V., receipt noted May 23, 2006.

These mutations are under investigation by the Benelux Trademark Office and have not been registered. In a letter of the Office to Hanssen Beleggingen B.V. of June 7, 2006 the Office mentioned that it had identified a conflict between parties (not identified by name) and suspended the mutations until the conflict has been decided.

Both the Complainant and the Respondent informed the Panel that regarding these Benelux trademarks (684756 and 680591)¹ there are two court cases pending. In the one court case the Respondent and a third party, Knipping Beheer B.V., both claim the ownership of these trademarks. In the other court case this third party Knipping Beheer B.V. claimed that the Complainant infringes on its rights in these trademarks.

The also almost identical Benelux device mark KNIPPING (registration no. 361604) was registered in the name of Tanja Prast-Knipping. The registration dates from September 7, 1979.

In the Benelux trademark register the following mutations are mentioned:

a transfer to RDS International B.V., receipt noted January 21, 2005;

a transfer to Hanssen Beleggingen B.V., receipt noted February 24, 2005;

attachment by Knipping Beheer B.V., receipt noted May 11, 2006 and published July 27, 2006;

a license to RDS International B.V., receipt noted May 23, 2006.

The Benelux Trademark Office has acknowledged receipt of the transfers and the license is under investigation by the Office. The attachment has been registered.

Regarding this device mark with registration number 361604 a court cancellation action filed by the Complainant against Tanja Prast-Knipping, the trademark holder, is pending before the Court of Alkmaar, the Netherlands.

In a decision of March 2, 2004, the cantonal judge of the court of Roermond at request of the Complainant ordered the Respondent, at that time named Knipping Benelux B.V., to remove the term “Knipping” from its company name.

In a decision of July 18, 2005, the preliminary decision judge of the court of Roermond, at request of the Complainant, ordered the Respondent to stop its advertisement series in the Yellow Pages under the name Knipping, to stop similar advertisements on the internet at “www.knipping.info” by using the name Knipping.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the requirements of paragraph 4(a) of the Policy in order to succeed in this proceeding and obtain the transfer of the Domain Names are met, since in the Complainant’s opinion the Domain Names are confusingly similar, the Respondent has no rights or legitimate interests and has registered and uses the Domain Names in bad faith. More specifically the Complainant contends that the Respondent has no rights in the Domain Names, because the relevant transfers and licenses regarding the Benelux KNIPPING trademarks no. 684756, 680591 and 361604 have not been registered and it is questionable if they will be registered in the future. As a result thereof, with reference to article 11.C of the Benelux Trademark Act, the Respondent cannot rely on these alleged trademark rights.

The Complainant stated that the pending court cases only involve KNIPPING trademarks and not the Domain Names. Furthermore, the Complainant stated that in none of the cases the Complainant and the Respondent are opposing parties. Therefore the Complainant requests the Panel not to consider the pending court cases to be “legal proceedings in connection with or relating to the Domain Names” and not to suspend the decision until the outcome of the pending court cases.

B. Respondent

The Respondent contends that it has legitimate rights in the Domain Names, since it holds a license under the Benelux KNIPPING trademarks no. 684756, 680591 and 361604. Therefore the Respondent requests the Panel to deny the remedies requested by the Complainant and to make a finding of reverse domain name hijacking.

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy the Complainant must prove each of the following:

(i) That the domain name registered by the Respondent is identical or confusingly similar to the trademarks or service marks in which the Complainant has rights; and

(ii) That the Respondent has no rights or no legitimate interests in respect of the domain name; and

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

A. Identical or Confusingly Similar

The Complainant holds a device trademark registration for KNIPPING in the Benelux with registration no. 9696606, registered since July 14, 2000.

For the purpose of assessing whether the Domain Names are identical or confusingly similar to the trademark in which the Complainant has rights, the top level domains “.org” and “.info” are disregarded, being necessary elements of domain names. The relevant part of the Domain Names is “knipping”, which is identical to the word element in the Complainant’s device mark. This leads the Panel to the conclusion that the Domain Names are confusingly similar to the Complainant’s KNIPPING device mark.

B. Rights or Legitimate Interests

The Panel disagrees with the Complainant’s opinion that the two aforementioned decisions of the court of Roermond determined that the Respondent, at this moment, does not have rights in the KNIPPING trademarks and consequently in the Domain Names. The 2004 decision was solely based on trade name not trademark law, and the 2005 decision specifically referred to the Respondent’s trademark position at that time and the orders rendered had a very specific and limited scope. The question whether the Respondent does or does not have rights or legitimate interests in the Domain Names is dependent on, or at least strongly connected to, the ownership (and licensing) issues regarding the KNIPPING trademarks no. 684756, 680591 and 361604, which are presently disputed in various pending court cases mentioned above. For that reason the Panel considers these pending court cases to be legal proceedings initiated prior to the administrative proceeding in respect of the dispute over the Domain Names that is the subject of the Complaint, as meant in paragraph 18(a) of the Rules. The fact that in none of the cases the Complainant and the Respondent are opposing parties or the fact that the Domain Names are not specifically addressed in these pending court cases does not make that any different.

The Panel finds that the dispute concerning the Domain Names is part of and ancillary to ongoing conflicts about the broader subjects of trademark ownership and infringement, non-usus and registration in bad faith, between several parties not limited to the Complainant and the Respondent. Therefore the Panel finds that the dispute concerning the Domain Names is outside the scope of proceedings under the Policy. Consequently, with reference to the discretion provided for in paragraph 18(a) of the Rules, the Panel decides to terminate this administrative proceeding and shall not proceed to a decision.

C. Registered and Used in Bad Faith

Since the requirement under the second element of the Policy is not met, the Panel will not elaborate on the third requirement regarding registration and use in bad faith by the Respondent.

Request Reverse Domain Name Hijacking

Reverse domain name hijacking involves an attempt by a trademark owner to take a domain name from another party without having a colorable legal right to do so. As stated above, in the Panel’s opinion, it is undecided whether the Respondent has rights or legitimate interests in the Domain Names, because of the dependence thereof on the outcome of various pending court cases. Therefore the Panel rejects the Respondent’s request to make a finding of reverse domain name hijacking.

 

7. Decision

For all the foregoing reasons, this matter is dismissed.

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Alfred Meijboom
Sole Panelist

Dated: July 29, 2006

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¹ Which device marks are nearly identical to Complainant’s younger Benelux device mark 696606.