No transfer of 'startpagina.be' to owner of 'startpagina.nl'
In Startpagina BV v Take BVBA, a Belgian Centre for Arbitration and Mediation (CEPINA) panellist has refused to order the transfer of the domain name 'startpagina.be' to the Dutch internet company Startpagina BV.
Startpagina runs a popular website under the domain name 'startpagina.nl'. It also owns different Benelux trademarks that contain the word 'startpagina' (including that word in combination with the extensions '.nl' and '.be').
Take BVBA is a management company linked to the domain name agent Besite BVBA. It registered 'startpagina.be' as a domain name on September 1 2003.
In August 2004 Startpagina started domain name arbitration to obtain the transfer of 'startpagina.be'.
Similarly to the provisions of the Uniform Domain Name Dispute Resolution Policy, Article 10(b) of the terms and conditions for transfer under the DNS Belgium dispute resolution policy provides that the complainant has to demonstrate that:
- the domain name is identical or confusingly similar to a trademark, trade name, social name or corporation name, geographical designation, name of origin, designation of source, personal name or name of a geographical entity in which it has rights;
- the registrant has no rights or legitimate interests in the domain name; and
- the domain name has been registered or is being used in bad faith.
CEPINA panellist Catherine Erkelens dismissed Startpagina's complaint. She accepted Take's arguments that:
- the word 'startpagina' in itself is descriptive;
- although known to the Dutch public, Startpagina's trademark, company name, trade name and domain name are not particularly well known to the Belgian public; and
- Take had serious plans (including contacts with eBay Benelux) to run a Belgian portal site, based on its own concept, that differed from Startpagina's site.
Erkelens stated that given the particular circumstances of the case, despite the similarity between the disputed domain name and Startpagina's trademarks and trade/company name, there did not seem to be a risk of confusion.
She also held that although the website hosted at the domain name 'startpagina.be' was only in an embryonic stage at the time of the complaint, Take had shown a legitimate interest, especially since it had started to develop its website prior to the domain name complaint.
Finally, she held that even if Take knew of the existence of the 'startpagina.nl' site, such knowledge did not imply bad faith, given the (geographically) different target public and the fact that the concept and intended look of Take's website differed in various ways from Startpagina's.
Accordingly, Erkelens refused to transfer the domain name.
The decision is important in the sense that it underlines the national character of '.be' and '.nl' domain names, despite the fact that for trademark purposes Belgium, the Netherlands and Luxembourg are considered as one territory.
It remains to be seen whether Startpagina will take further action before the ordinary courts.
Michel Draps, Altius, Brussels
Copyright © Law Business ResearchCompany Number: 03281866 VAT: GB 160 7529 10