Claessens Product Consultants BV v.
Claessens International Ltd.
Claim
Number: FA0402000238656
Complainant is Claessens Product Consultants BV (“Complainant”),
represented by Ronald Vles, of Van Benthem & Keulen,
Postbus 85005, 3508 AA Utrecht II, NL.
Respondent is Claessens
International, Ltd., (“Respondent”), represented by Louise Warren, 156 High Street, Dorking, Surrey, RH4 1BQ.
The
domain name at issue is <claessensproductconsultants.com>, registered
with Core-1.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 23, 2004; the Forum received a hard copy of the
Complaint on March 3, 2004.
On
March 1, 2004, Core-1 confirmed by e-mail to the Forum that the domain name <claessensproductconsultants.com>
is registered with Core-1 and that Respondent is the current registrant of the
name. Core-1 has verified that Respondent is bound by the Core-1 registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
March 12, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 1, 2004 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@claessensproductconsultants.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
April 12, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Sandra Franklin as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy
(the "Rules") "to employ reasonably available means calculated
to achieve actual notice to Respondent."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's
Supplemental Rules and any rules and principles of law that the Panel deems
applicable, without the benefit of any Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <claessensproductconsultants.com>
domain name is identical to Complainant’s CLAESSENS PRODUCT CONSULTANTS mark.
2. Respondent does not have any rights or
legitimate interests in the <claessensproductconsultants.com>
domain name.
3. Respondent registered and used the <claessensproductconsultants.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Originally,
Complainant and Respondent were the same company. During 1989 to 1990 the company separated into two entities.
Complainant,
Claessens Product Consultants BV, is an international marketing and branding
company established in 1960. It
registered the CLAESSENS PRODUCT CONSULTANTS mark on June 16, 2002 with
the Benelux Merkenbureau (Office of Marks) (Reg. No. 0781616). According to the contract dividing the
assets of the company, Complaint acquired exclusive rights over “the name
and/or brandname Claessens Product Consultants.”
Respondent is
Claessens International, Ltd.
Respondent registered the disputed domain name on April 2, 2002.
Paragraph 15(a)
of the Rules instructs this Panel to "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."
In view of Respondent's
failure to submit a Response, the Panel shall decide this administrative
proceeding on the basis of Complainant's undisputed representations pursuant to
paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it
considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires that Complainant must prove each of the following three
elements to obtain an order that a domain name should be cancelled or
transferred:
(1) the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and
is being used in bad faith.
Complainant has
registered its mark in Benelux.
Registration in a foreign jurisdiction is adequate to demonstrate rights
in a mark, even if that jurisdiction is foreign to Respondent’s place of
business. See Koninklijke KPN
N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the
Policy does not require that the mark be registered in the country in which
Respondent operates. It is sufficient
that Complainant can demonstrate a mark in some jurisdiction); see also KCTS Television Inc. v.
Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) holding that it
does not matter for the purpose of paragraph 4(a)(i) of the Policy whether
Complainant’s mark is registered in a country other than that of Respondent’s
place of business.
Complainant
has rights in the CLAESSENS PRODUCT CONSULTANTS mark, according to registration
and use in commerce. See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16,
2002) (“Under U.S. trademark law, registered marks hold a presumption that they
are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption.
The
disputed domain name is identical to Complainant’s mark. The only difference is the omission of the
spaces between words, which does not sufficiently distinguish the domain name
from the mark. See Wembley Nat’l
Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) finding that the
domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM
mark; see also Croatia Airlines v. Kijong, AF-0302
(eResolution Sept. 25, 2000) finding that the domain name
<croatiaairlines.com> is identical to Complainant's CROATIA AIRLINES
trademark.
The
Panel finds that Complainant has established Policy ¶ 4(a)(i).
The Panel may
construe Respondent’s lack of a Response as an admission of all reasonable
facts and assertions. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) finding that Respondents’ failure to respond can be construed as
an admission that they have no legitimate interests in the domain names; see also Am. Online, Inc. v. AOL Int'l., D2000-0654 (WIPO Aug. 21, 2000)
finding no rights or legitimate interests where Respondent fails to respond.
Complainant
alleges that Respondent is not commonly known by the domain name <claessensproductconsultants.com>
because Respondent has agreed that it will not use Complainant’s mark. The Panel construes the contract between the
parties as evidence that Complainant has established rights in the mark and
Respondent has conceded that it is not commonly known by that mark, even though
it is also known by “claessens,” pursuant to Policy ¶ 4(c)(ii). See
Neiman Marcus Group, Inc. v. Neiman-Marcus, FA 135048 (Nat. Arb.
Forum Jan. 13, 2003) noting that “Complainant
has established itself as the sole holder of all rights and legitimate
interests in the NEIMAN MARCUS mark,” in holding that Respondent was not
commonly known by the <neiman-marcus.net>
domain name, despite naming
itself “Neiman-Marcus” in its WHOIS contact information; see also Yoga Works,
Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) finding that Respondent was not “commonly known by” the <shantiyogaworks.com>
domain name despite listing its name as “Shanti Yoga Works” in its WHOIS
contact information because there was “no
affirmative evidence before the Panel that Respondent was ever ‘commonly known
by’ the disputed domain name prior to its registration of the disputed domain
name”.
Complainant has
not alleged how Respondent has used the disputed domain name. While, in the absence of a Response, the
Panel may accept all reasonable allegations as true, without any allegations
regarding use, the Panel is unable to determine whether Respondent is using the
domain name in connection with a bona fide offering of goods or services,
pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the
domain name, pursuant to Policy ¶ 4(c)(iii).
See Lush LTD v. Lush
Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) finding that even
when Respondent does file a Response, Complainant must allege facts, which if
true, would establish that Respondent does not have any rights or legitimate
interests in the disputed domain name; see
also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676
(Nat. Arb. Forum Jan. 16, 2003) finding that absent a showing of any facts by
Complainant that establish Respondent lacks rights or legitimate interests in
the disputed domain name, the Panel may decline to transfer the disputed domain
name.
The Panel finds
that Complainant has not satisfied Policy ¶ 4(a)(ii).
Complainant has
not alleged how Respondent is using the disputed domain name. A facially adequate UDRP complaint requires
an allegation of circumstance under which the Panel can find bad faith. The Panel will not construe this
element. See PRL USA Holdings, Inc. v. Polo, D2002-0148 (WIPO Apr.
29, 2002) finding that because Complainant failed to provide any factual
allegations as to the nature of use of the disputed domain name, Complainant
failed to prove that Respondent’s domain names were being used in bad faith; see also Graman USA Inc. v. Shenzhen
Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) finding
that general allegations of bad faith without supporting facts or specific
examples do not supply a sufficient basis upon which the Panel may conclude
that Respondent acted in bad faith.
Complainant only
alleges that Respondent has breached its contract with Complainant. However, this is not the proper forum under
which to settle a contract dispute because contract interpretation is beyond
the UDRP. See Discover New England v. Avanti Group, Inc. FA 123886
(Nat. Arb. Forum Nov. 6, 2002) finding the dispute outside the scope of the
UDRP because the dispute centered on the interpretation of contractual language
and whether or not a breach occurred; see
also Thread.com, LLC v.
Poploff, D2000-1470 (WIPO Jan. 5, 2001) refusing to transfer the domain
name and stating that the ICANN Policy does not apply because attempting “to
shoehorn what is essentially a business dispute between former partners into a
proceeding to adjudicate cybersquatting is, at its core, misguided, if not a misuse
of the Policy.”
The Panel finds
that Complainant has not satisfied Policy ¶ 4(a)(iii).
Having failed to
establish all three elements required under the ICANN Policy, the Panel
concludes that relief shall be DENIED.
Sandra Franklin, Panelist
Dated:
April 23, 2004
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