DECISION

Claessens Product Consultants BV v. Claessens International Ltd.

Claim Number:  FA0402000238656

PARTIES

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.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <claessensproductconsultants.com>, registered with Core-1.

PANEL

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.

PROCEDURAL HISTORY

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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

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.

FINDINGS

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.

DISCUSSION

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.

Identical and/or Confusingly Similar

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).

Rights or Legitimate Interests

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).

Registration and Use in Bad Faith

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).

DECISION

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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