Robein Leven N.V. v. Internet Service Dokkum

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Robein Leven

N.V. V. Internet Service Dokkum

Case No.

D2000-1783

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

Complainant").

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

Respondent").

2. The Domain Name and

Registrar

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

Supplemental Rules.

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

Response.

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

are:

(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

UDRP.

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

exploit it.

(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.

Secondly, according

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

Complainant

has provided sufficient evidence of its rights to the trademark ROBEIN in the

Benelux.

b. Identical or confusingly

similar

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

interests

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."

Respondent’s statement

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.

Furthermore, Respondent

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).

9. Decision

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.

Wolter

Wefers Bettink

Sole Panelist

Dated: April

4, 2001