WIPO Arbitration and Mediation Center
RESOLUTION DISPUTE RESOLUTION
Yoghurt Barn BV v. Quincy Beeker
case no. DNL2021-0055
The Plaintiff is Yoghurt Barn BV, Netherlands, represented by DOEN Legal, Netherlands.
The Defendant is Quincy Beeker, Netherlands, represented by SOLV Advocaten, Netherlands.
2. The Domain Name
This domain name <yb.nl> is registered with SIDN via Key-Systems GmbH.
3. History of the Procedure
The Claim was filed with the WIPO Arbitration and Mediation Center (the “Institute”) on October 11, 2021. The Institute sent a verification request to SIDN by email on October 12, 2021 regarding the domain name in question. In response to this, SIDN confirmed on 13 October 2021 that the Defendant is registered as the domain name holder and SIDN has submitted the Defendant’s contact details. The Institute has determined that the Requirement meets the formal requirements of the Dispute Resolution Scheme for .nl domain names (the “Regulations”).
In accordance with Articles 5.1 and 16.4 of the Regulations, the Institute formally notified the Respondent of the Claim and the proceedings commenced on October 18, 2021. In accordance with Article 7.1 of the Regulations, the last date for filing the Defense was November 7, 2021. The Defense was filed with the Institute on November 6, 2021.
SIDN started the mediation process on 9 November 2021. On December 8, 2021, SIDN extended the mediation process until January 7, 2022. On December 24, 2021, SIDN confirmed to the Parties and the Institute that the dispute had not been resolved through the mediation process.
The Institute has appointed Alfred Meijboom as Dispute Settlement in this case on January 10, 2022. The Dispute Settlement determines that the Dispute Settlement has been properly appointed. The Dispute Settlement has submitted the Declaration of Impartiality and Independence to the Institute, as required under Article 9.2 of the Scheme.
On January 21, 2022, the Dispute Settlement issued a Panel Order inviting the Respondent to provide evidence by January 28, 2022 at the latest of the date on which it became the holder of the present domain name and of the date of the initial correspondence between the Parties regarding the offer to sell the domain name in question. The Plaintiff was allowed to respond to this no later than February 4, 2022. The Defendant replied on January 28, 2022 and the Plaintiff replied on February 3, 2022. On February 3, 2022, the Defendant sent additional supporting documents to the Institute by email, to which the Plaintiff responded on February 4, 2022.
4. Actual Background
De Eiser is a company that has been selling yogurt products and non-alcoholic drinks through its own catering establishments and supermarkets since 2011. Since the summer of 2021, the Plaintiff has also started to use the trade name “YB”, as an abbreviation of its trade name “Yoghurt Barn”, and has filed the EU trade mark shown below with number 018508450 on 5 July 2021 for goods and services in classes 29, 30 , 35, and 43 for, among other things, yoghurt and yoghurt products, tea, coffee and catering services, which brand was registered on November 12, 2021 (the “YB brand”).
SIDN has informed the Institute that the domain name in question was first registered on June 10, 2021, and that the date of the current registration was October 1, 2021 due to a change of registrant. As discussed below, the domain name in question was registered by the Respondent on June 11, 2021. The domain name in question refers to a website that states that the domain name is for sale and that offers the Internet user the opportunity to make a bid.
5. Statements of the Parties
The Plaintiff argues that because his trade name “Yoghurt Barn” was often abbreviated to “YB” by the public and because he wanted to provide his company with a new, more international, corporate identity, he previously decided to run his business under the name “YB”. Since the summer of 2021, the Plaintiff has used the trade name “YB” and carries the YB brand. According to the Plaintiff, the public is already aware of the fact that he conducts his business under the name “YB” and he has already achieved great fame under his new trade name “YB” and with the YB brand. The best proof of this would be that the Defendant approached the Plaintiff on its own initiative with an offer to purchase the domain name in question.
The Plaintiff argues that the domain name in question is identical to the trade name “YB” and the YB brand.
According to the Plaintiff, the Defendant has no right or legitimate interest in the domain name in question because the Defendant is not known by the domain name in question and is not using the domain name for legitimate non-commercial purposes, since the domain name is not linked to an active website and the this domain name is publicly offered for sale.
According to the Plaintiff, there is also bad faith registration or use of the domain name in question because the Defendant registered the domain name in question solely for the purpose of selling the domain name in question at a price significantly higher than the cost of registration. In this regard, the Plaintiff suspects that the Defendant learned of the Plaintiff’s new trade name “YB” and subsequently purchased the present domain name for the purpose of selling it to the Plaintiff at usurious profit. The Defendant approached the Plaintiff on September 24, 2021 to offer the domain name in question for sale, and subsequently requested EUR 80,000 when the Plaintiff showed interest. The Plaintiff points out that the Defendant failed to provide any explanation or insight into the costs it had to incur to acquire the domain name in question, so that the Plaintiff could have taken this into account. Moreover, the Plaintiff disputes that the Defendant has demonstrated that it had already registered the domain name in question before October 1, 2021.
The Respondent states that through his sole proprietorship he obtained the domain name in question on June 11, 2021 from an auction after the domain name in question came out of quarantine. On October 1, 2021, the Defendant changed the holdership of the domain name in question from his sole proprietorship to his private holdership.
The Defendant disputes that the domain name in question is identical or confusingly similar to the YB trademark because the YB trademark was only registered on 5 July 2021 and had not yet been registered at the time of filing the Claim, so that there was no question of a Dutch right protected trademark. The Plaintiff was trading under the trade name “Yoghurt Barn” and did not announce until July 14, 2021 that it would operate its business under the trade name “YB”. According to the Defendant, the period between this announcement and the time of filing the Claim is insufficient for valid trade name use, furthermore, the Plaintiff has not consistently used “YB” as a trade name, and on its website ”YB, by Yoghurt Barn” so that “YB” is not used as a trade name but as a trademark.
Furthermore, the Defendant disputes that there is a likelihood of confusion between the domain name in question and the Plaintiff’s designation “YB” because “YB” has hardly any distinctive character and can have a multitude of other meanings, can be the abbreviation of many other word combinations, and many other companies. The trade register would already list 144 companies that have registered YB as a trade name or part thereof. The Defendant disputes that the public will associate “YB” with the Plaintiff.
Finally, the Defendant argues that the website of the Plaintiff and the website to which the domain name in question refers have a completely different appearance, with the domain name in question having an inactive existence. The public would therefore immediately understand that the domain name in question does not belong to the Plaintiff or to one of the many other companies that could use the domain name in question, which according to the Defendant is generic.
Respondent further asserts that it has a right and a legitimate interest in the subject domain name, the right being that the Respondent registered a non-infringing domain name first upon release and the legitimate interest being that the Respondent has the present domain name in the future for his own activities, or sells it for an amount acceptable to him. According to the Respondent, there is no legal rule prohibiting the purchase and sale of domain names, and on the contrary it is a generally accepted and wholly legitimate commercial practice. The Defendant argues that there are no other circumstances that would justify this in the present caseotherwise, certainly not since the Claimant was not yet entitled to the trademark and trade name rights invoked by him at the time of the registration of the present domain name, the Claimant at the time of registration of the present domain name in no way with this domain name or the designation “YB” could have been associated, and the Defendant also did not know at the time that the Plaintiff intended to use “YB” as a name and could not have known it.
The Defendant further disputes that it registered or used the domain name in question in bad faith, because the Defendant did not acquire the domain name in question primarily for the purpose of selling it to the Plaintiff. The Defendant argues that it can sell a “generic” domain name such as the present domain name to numerous parties, which the Plaintiff also acknowledges, and is apparent from the many trade name registrations with the designation “YB”. According to the Defendant, two-letter domain names are scarce and popular and the fact that the domain name in question was registered with a view to sale for a profit is not in itself sufficient to conclude that the Defendant acted in bad faith. The Defendant further argues that the domain name in question was registered before the Plaintiff acquired the trademark and trade name rights on which it currently invokes, without being aware of the Plaintiff’s intention to use “YB” as a trade name and/or trademark. going to feed. The fact that the Defendant has offered the present domain name to the Plaintiff for sale is also insufficient, according to the Defendant, to be able to assume bad faith because he did not exert any coercion on the Plaintiff, but merely made an offer to sell, and a price which the Defendant deems reasonable compared to the sales prices of a number of other premium domain names.
Finally, the Defendant argues that the Plaintiff mainly intends to deprive the Defendant of the domain name in question without paying for it. According to the Defendant, a reasonable approach to the facts cannot under any circumstances constitute an act of bad faith on the part of the Defendant, causing the Plaintiff to abuse the Scheme and thereby attempt Reverse Domain Name Hijacking .
6. Further response
In the Panel Order, the Dispute Settlement has given the Respondent the opportunity to provide proof of, among other things, the date of its registration of the domain name in question within a specified period of time and the Claimant has the opportunity, again within a specified term, to to respond. Both Parties sent a response to the Institute in a timely manner. However, after the Plaintiff sent its response to the Institute on February 3, 2022, the Defendant sent further evidence by e-mail on the same date, to which the Plaintiff objected on February 4, 2022, requesting the Dispute Settlement to submit the additional document. disregarded by the Defendant.
Pursuant to Article 11.2 of the Regulations, it is up to the Dispute Settlement to assess whether further responses are permitted. The aim of the Scheme is to provide for a relatively simple, rapid and cost-effective dispute resolution. It fits within this that the parties have one opportunity to adequately put forward their point of view and that in principle there is no room for rejoinder because this complicates and delays the process, which is contrary to the aim of the Regulation and the provisions in Article 10.4 of the The Dispute Settler’s task laid down in the Regulations is to ensure that the procedure runs smoothly (see, among others, Betty Blue SPA v. Hugo Vis, WIPO Case No. DNL2021-0025† Further documents can therefore only be admitted in special circumstances that will have to be submitted by the Plaintiff. This is all the more pressing because the Panel Order expressly invited the Defendant to provide evidence by January 28, 2022, to which the Plaintiff was allowed to respond. The Panel Order did not therefore provide for the possibility of a further response in which additional supporting documents are challenged.
The Defendant justifies its further response by stating that in its email of February 3, 2022, the Plaintiff allegedly took a position which, in the words of the Defendant, it “knows to be incorrect” and the Defendant deems it to be that reason necessary and justified to submit two further documents after the period set by the Dispute Settlement. Because it must have been clear to the Defendant that under the Panel Order it was required to submit all relevant evidence in its response and the Plaintiff’s response of February 3, 2022 contests the Defendant’s view, there is no of new circumstances that the Respondent could not have foreseen that justify a further response and further supporting documents (seeVolvo Trademark Holding AB, Volvo Car Corporation and Volvo Car Nederland BV v. Puch Tomos Service Nederland (thodn Used Volvo Van Kempen) , WIPO Case no. DNL2016-0030 ). The Dispute Settlement therefore disregards the further response of the Parties,
7. Judgment and Findings
Because the Plaintiff and the Defendant are established or domiciled in the Netherlands, the language of the proceedings under Article 17.1 of the Regulations is Dutch.
Pursuant to Article 2.1 of the Regulations, the Claimant must provide reasons and demonstrate that:
a) the domain name in question is identical or so similar that confusion may arise with a:
I. trademark or trade name protected under Dutch law of which the Plaintiff is the owner; or
II. a personal name registered in a Dutch municipal database, or a name of a Dutch legal entity under public law or a name of an association or foundation established in the Netherlands under which the Plaintiff participates on a permanent basis in society; and
b) the Respondent has no right or legitimate interest in the domain name in question; and
c) the domain name in question has been registered or is being used in bad faith.
These grounds are discussed below.
A. Identical or Confusingly Similar
In order to assess whether the domain name in question is identical to or confusingly corresponds to the rights relied on by the Plaintiff, according to established case law, the Top-Level Domain “.nl” may be disregarded under the Regulations (see, among other things, Roompot Recreatie Beheer BV ). v. Edoco LTD , WIPO Case No. DNL2008-0008 ) ).
The Plaintiff has sufficiently demonstrated that he uses the trade name “YB” in addition to other trade names, but it is not apparent from the documents submitted by the Plaintiff since when. Since the Defendant has provided evidence that the Plaintiff announced on July 14, 2021 that it will use the letters “YB” as a trade name, which is consistent with the Plaintiff’s assertion that he has been using this trade name since the summer of 2021, and also with the results of the publicly accessible Internet archive via the Wayback Machine on the website “www.web.archive.org” that the Dispute Settlement has consulted and which demonstrate that at any time between June 28, 2021 and August 11, 2021, the trade name “YB” on started using his website,
In addition, the Dispute Settlement determines that the YB trademark was registered on November 12, 2021 – although after the Claim was filed, but before the time of assessment of the dispute – and the Dispute Settlement considers that the letters “YB” are the dominant element of the YB trademark, so that the Plaintiff is entitled to a trademark and trade name protected under Dutch law with the letters “YB”.
For the assessment of the first element of Article 2.1 of the Scheme, the fact that the rights relied on by the Plaintiff are younger than the registration of the domain name in question is irrelevant (see, inter alia, Viridian International Ltd. trading as Viridian Nutrition v. Provisan Nutrition, Patricia Catharina Maria IJsbrandij , WIPO Case No. DNL2015-0061 ). Because the domain name in question includes the entire YB brand, or the trade name “YB” of the Plaintiff, the Dispute Settlement concludes that the domain name in question is identical to the trade name “YB” and the YB brand of the Plaintiff, so that Article 2.1 is satisfied. sub a of the Regulation.
B. Right or Legitimate Interest
The requirement that Defendant has no right or legitimate interest in the subject domain name is met if Plaintiff demonstrates prima facie that Defendant has no right or legitimate interest in the subject domain name and Respondent fails to rebut due to circumstances attributable to as referred to in Article 3.1 of the Regulations (including Technische Unie BV and Otra Information Services v. Technology Services Ltd. , WIPO Case no. DNL2008-0002 ).
For the purpose of determining whether Respondent has a right or legitimate interest in this domain name, or whether Respondent has registered or used this domain name in bad faith, the date on which Respondent registered this domain name and the date of first communication between the Parties is relevant. Because there was insufficient clarity about this, the Dispute Settlement issued a Panel Order. The Defendant has demonstrated that it first contacted the Plaintiff’s CEO via WhatsApp on September 24, 2021. The Plaintiff has not disputed that, so that this date is fixed. However, the parties are divided as to the date on which the Respondent registered the domain name in question. The Dispute Settlement infers from the documents submitted by the Respondent that someone with the e-mail address “spiet[…]@yahoo.com” acquired the domain name in question on June 10, 2021, apparently at an auction, and that the domain name in question was acquired by this person was registered on June 11, 2021. Plaintiff disputes that Defendant’s email address is “spiet[…]@yahoo.com” and points out that only in Appendix 18 to Defendant’s response, Defendant is identified as such as registrant of the domain name. Because this document is a notification of 1 October 2021 of the change of the holder name of the domain name in question, the Plaintiff believes that it can only be established with certainty that the Respondent became the holder of the present domain name on October 1, 2021. However, the Defendant has argued in this regard that this document only shows that the Defendant changed the holdership of the domain name in question on October 1, 2021 from his sole proprietorship to his private ownership. Because the preamble of the emails to “spiet[…]@yahoo.com” dated June 10 and 11, 2021 in attachment 14 and attachment 15, respectively, to the Respondent’s response reads “Quincy”, which is the Respondent’s first name , the e-mail address “spiet[…]@yahoo.com” is used in all correspondence submitted by the Defendant regarding the acquisition and ownership of the domain name in question, and it does not appear to the Dispute Settler to believe that the Defendant will present the Defendant to the Plaintiff on September 24, 2021 asks whether he is interested in purchasing the domain name in question if he does not receive that domain name until a week later, on 1 October 2021, would obtain, the Dispute Settlement considers it plausible that the domain name in question was registered by the Respondent on June 11, 2021. The fact that the Defendant became the “private” holder of the domain name in question on 1 October 2021 and that it was previously registered in the name of his sole proprietorship does not change this, because this sole proprietorship has no legal personality and therefore coincides with the Defendant, who in any case has control over had the domain name in question.
The mere fact that the domain name in question has been registered for sale does not in itself mean that the Respondent has no right or legitimate interest in the domain name in question. Additional circumstances are required for such a conclusion (including Interest Association Self-Doers in Adoption v. Media Village BV io , WIPO Case No. DNL2008-0004 and Ticken BV v. Media Village BV ., WIPO Case No. DNL2014-0015† The Plaintiff points out that the Defendant contacted it to offer the domain name in question for sale for an amount of EUR 80,000, which is likely to substantially exceed the price that the Defendant paid for the domain name in question. However, this does not affect the fact that the Plaintiff has not demonstrated in these proceedings that the Defendant, when acquiring the present domain name on June 10, 2021, was aware of the Plaintiff’s YB brand and trade name “YB”, which were only subsequently registered or put into use, while the letters “YB” can stand for many abbreviations and, as the Dispute Settlement has established, correspond to at least eleven trademarks protected under Dutch law of as many trademark holders, and the Defendants’ intention at the time of the registration of the domain name in question was, inter alia, to sell the domain name. Subsequently offering the present domain name for sale to a potentially interested party in the circumstances of this case, the Dispute Setter deems normal business activity and not per se in bad faith, so that the Plaintiff has not demonstrated that the Defendant is not entitled to or has a legitimate interest in the domain name in question as referred to in Article 2.1 sub b of the Regulations.
C. Registered or Used in Bad Faith
Since the Dispute Settlement has determined that the Plaintiff has not demonstrated the second element of Article 2.1 of the Scheme, the third element of Article 2.1 of the Scheme does not require discussion. However, the Dispute Settlement considers superfluous, and also to reinforce what has been considered above in 7.B, as follows.
Because at the time of the registration of the domain name in question by the Defendant the Plaintiff did not yet use the trade name “YB” and had not yet registered the YB trademark, and apparently had not yet made an intention to do so, the Dispute Settlement deems it within the scope of the In the context of this case, it is not plausible under the Scheme that the Respondent at the time of registration of the domain name in question had in mind the Plaintiff or his trade name or trademark corresponding to the domain name in question. For this reason, there is therefore no registration in bad faith of the domain name in question.
The Dispute Settlement also considers that the Respondent’s use of the domain name in question is not in bad faith, because offering a domain name for sale only for profit is permissible as such (see 7.B for this). The fact that the Defendant has actively approached the Plaintiff about the sale (at a high price) of the domain name in question, which the Defendant furthermore qualifies as generic, and the conversion of the domain name holdership from the Defendants sole proprietorship to him in private while he was talking was with the Plaintiff, may raise questions, which, however, cannot be answered on the basis of the file before the Dispute Settlement.
8. Reverse Domain Name Hijacking
Finally, the Defendant argues that the Plaintiff is abusing the Scheme through his conduct and is therefore guilty of Reverse Domain Name Hijacking as referred to in Article 1 of the Rules for Uniform Domain Name Dispute Resolution Policy (“UDRP” or “Policy”). , which defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” However, the Regulation is not identical to the UDRP and does not contain any regulations for reverse domain name hijacking (see, among others, Koen Konings hodn ZENN v. Zenn , WIPO Case no. DNL2013-0060 and Stichting RTV NH, thodn NH v. Windkracht Internet BV thodn Ziber, WIPO Case no. DNL2016-0042 ). The Dispute Settlement can therefore not come to the assessment whether the Plaintiff has attempted to take the domain name in question from the Defendant in bad faith by filing the Claim.
Based on the above, the Dispute Setter rejects the claim.
Date: February 11, 2022