WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Europay International S.A. v. E, Inc., EuroC, and Chad Folkening
Case No. D 2000-0173
1. The Parties
1.1 Complainant is a corporation headquartered in Belgium. Complainant is represented in this proceeding by Mr. Griffith B. Price, Jr. and Mr. B. Brett Heavner of the law firm Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.
1.2 Respondents are Mr. Chad Folkening, E, Inc., and EuroC. Mr. Folkening, E, Inc. and EuroC all have the same address in the State of Indiana, United States of America. Complainant says that Mr. Folkening owns and controls the other Respondents. It is unclear whether E, Inc. and EuroC are corporations, partnerships or trading styles.
2. The Domain Name and Registrar
2.1 This proceeding is concerned with the following domain names ("Domain Names"):
2.2 The Domain Names are registered with Network Solutions, Inc. ("NSI"), of Herndon, Virginia, United States of America.
2.3 The Domain Name is registered in the name of E, Inc. The Domain Name is registered in the name of EuroC. The records of NSI show that both registrants use the address 88 Rogers Rd., Carmel, Indiana, United States of America, 46632.
3. Procedural History
3.1 This proceeding was initiated under and is being conducted pursuant to:
(a) the Uniform Domain Name Dispute Resolution Policy ("Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, and approved by ICANN on October 24, 1999;
(b) the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") adopted by ICANN on August 26, 1999, and approved by ICANN on October 24, 1999; and
(c) the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999.
3.2 The Complaint was received by the World Intellectual Property Organization ("WIPO") in electronic form on March 17, 2000, and in hard copy on March 21, 2000. As Rule 3(b) requires that complaints be filed in electronic and hard copy form, a complaint is not officially received until both versions have been received. In this case, the Complaint was officially received on March 21, 2000. On March 22, 2000, WIPO issued an Acknowledgement of Receipt to Complainant.
3.3 Also on March 22, 2000, WIPO sent to NSI a Request for Registrar Verification. NSI issued verification on March 24, 2000.
3.4 On March 28, 2000, WIPO sent a Complaint Deficiency Notification to Complainant advising that Complainant had failed to pay the required filing fee. On the same date, Complainant dispatched the filing fee to WIPO and sent an e-mail to WIPO confirming that the filing fee had been dispatched. Complainant's filing fee was received by WIPO on March 30, 2000.
3.5 On April 2, 2000, WIPO completed its Formal Requirements Compliance Review and forwarded a Notification of Complaint to Respondents by courier and e-mail, with a copy to Complainant by e-mail.
3.6 No Response was received by WIPO from Respondents within the time prescribed by Rule 5(a). On April 24, 2000, WIPO dispatched to Respondents a Notification of Respondent Default by e-mail, with a copy to Complainant by e-mail.
3.7 On May 7, 2000, WIPO issued a Notification of Appointment of Administrative Panel and Projected Decision Date. Copies of that document were forwarded to Complainant and Respondents by e-mail.
3.8 On May 10, 2000, WIPO received by facsimile transmission a letter dated May 9, 2000, from Mr. Jonathan G. Polak, a lawyer acting on behalf of Respondents. The letter referenced three separate UDRP proceedings administered by WIPO, including this one. The letter made the following requests:
"This communication is pursuant to Paragraph 3(a)(i) and (3)(c) of the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy. Specifically, we request an additional 30 days to respond to the allegations in these matters. We need additional time to investigate both the factual and legal issues concerning these matters and to prepare the appropriate responses. Please also note that our client only recently received a notice of these complaints."
3.9 On May 12, 2000, the Panel denied Respondents' request for the following reasons:
"The letter asserts that additional time is needed to investigate both the factual and legal issues and to prepare an appropriate response. The letter also says that the Respondent only received a notice of the Complaint, but it does not provide any details or explanation of the circumstances.
Several paragraphs of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") are relevant to the Respondent's request, including Rules 5(d), 5(e), 10(c), 14(a), 14(b) and 15(b). The fundamental principle running through all those Rules is that both parties and the Panel will abide by the prescribed deadlines unless, in the discretion of the Panel, exceptional circumstances justify a variation from those deadlines.
The Respondent has not demonstrated that there are any exceptional circumstances justifying any variation from the deadlines and other requirements established by the Rules. The Respondent's request comes approximately 17 days after the deadline for filing the Response. The Respondent requests a further 30 days for responding. It would take extraordinarily exceptional circumstances to justify the requested extension."
3.10 Although the Panel denied Respondents' request to extend the deadline for filing a Response, Respondents proceeded to file a Response and to make additional submissions on whether or not Complainant had complied with procedural requirements.
3.11 The Panel is electing not to allow the Response or any other representations, statements or submissions made by either party after May 12, 2000. However, the Panel will address an administrative deficiency that it learned about as a consequence of a communication received from Respondents after May 12, 2000.
4.0 Administrative Deficiency
4.1 Rule 3 sets out the formal requirements for complaints. Rule 3(b)(xiv) reads as follows:
"(b) The complaint shall be submitted in hard copy and (except to the extent not available for annexes), in electronic form and shall:
....
(xiv) Conclude with the following statement followed by the signature of the Complainant or its authorized representative:
'Complainant agrees that its claims and remedies concerning the registration of the domain name, the dispute, or the dispute's resolution shall be solely against the domain name holder and waives all such claims and remedies against (a) the dispute resolution provider and panelists, except in the case of deliberate wrongdoing, (b) the registrar, (c) the registry administrator, and (d) the Internet Corporation for Assigned Names and Numbers, as well as their directors, officers, employees and agents.'
'Complainant certifies that the information contained in this Complaint is to the best of Complainant's knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good faith and reasonable argument.' "
4.2 As required by the Rules, Complainant filed the Complaint in both hard copy and electronic form. The electronic copy of the Complaint included paragraph 44 setting out all of the wording required by Rule 3(b)(xiv). The hard copy of the Complaint did not include paragraph 44. The hard copy was physically signed by Complainant's representative by hand. The electronic copy identified the signing parties appropriately in the signature space and is accepted by the Panel as an electronic signature.
4.3 Complainant's failure to include the required statements on both copies of the Complaint is an administrative deficiency. The question is: what effect, if any, should that administrative deficiency have on these proceedings?
4.4 This administrative deficiency was not noticed by WIPO, presumably because its Formal Requirements Compliance Review focussed on the electronic version of the Complaint. The administrative deficiency was not made the subject of a Complaint Deficiency Notice. Hence, the Complainant was not given the opportunity to correct the hard copy version of the Complaint in accordance with Rule 4. Nonetheless, when Complainant learned of the administrative deficiency through communications it received from Respondents, Complainant filed a corrected signature page of the hard copy version of the Complaint that included paragraph 44.
4.5 The Panel is of the view that this administrative deficiency is in the nature of a clerical oversight.
4.6 The Rules expressly provide for electronic communication, including the submission of complaints and responses by electronic means. The electronic version of the Complaint complied with the Rules from the outset. In the circumstances, Complainant could not have denied the binding effect of paragraph 44 of the electronic version of the Complaint even though that paragraph was omitted from the hard copy version of the Complaint. That being the case, no one is prejudiced by the omission of paragraph 44 from the original hard copy version of the Complaint.
4.7 The Panel finds that this administrative deficiency is a clerical oversight having no material impact on these proceedings.
5. Factual Background
5.1 This is a default proceeding governed by Rules 5(e) and 14, which reads:
"5. The Response
....
(e) If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint."
"14. Default
"(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate."
5.2 The Panel relies on the statements of fact set out in the Complaint.
5.3 Complainant provides international payment products and systems to European Banks. Complainant's products include credit cards, debit cards, eurocheques, and electronic purse cards. Many of those products and services are provided under Complainant's registered trademarks "EUROCARD", "E EUROCARD", and "EUROCARD E" ("Complainant's Trademarks").
5.4 Complainant has been carrying on business for several years. Complainant does not say precisely how long it has been carrying on business and selling products and services in association with Complainant's Trademarks, but Complainant has submitted evidence shedding light on that issue. Complainant filed for and registered some of Complainant's Trademarks in certain countries at least as early as 1964 (for example, United Kingdom registration No. B873715 for EUROCARD). The registration particulars for United States registration number 886893 indicate that the trademark EUROCARD and E design has been used in commerce in the United States of America beginning in 1965.
5.5 By 1998, Complainant held a 74% market share for debit cards and a combined 60% market share in Europe for debit and credit cards. At the end of the third quarter of 1999, 58,948,000 EUROCARD cards were in use in Europe, and there were 4,553,711 EUROCARD acceptance points in Europe.
5.6 Complainant has a long-standing strategic alliance with Master Card International Incorporated. Complainant has the exclusive responsibility for marketing and transaction processing in Europe for the CIRRUS, EUROCARD/MASTERCARD and MAESTRO brands.
5.7 Complainant's Trademarks are registered in numerous countries, including Respondents' home jurisdiction, the United States of America.
5.8 Complainant's Trademarks have received exposure through sponsorship of various sporting events such as the UEFA European Football Championship, the UEFA Champions' League, and the 2002 FIFA World Cup. Complainant maintains a website on the Internet.
5.9 Complainant's business and Complainant's Trademarks are famous and valuable.
5.10 Respondents registered in October of 1998 and in December of 1999.
5.11 Respondents have not yet used either of the Domain Names as a uniform resource locator for any website.
5.12 Complainant says that Mr. Folkening is a well-known cybersquatter who registers trademark-related domain names under fictitious company names, incorporating the trademarks of others in the domain names and the company names. Complaint believes that Mr. Folkening does this to evade service of process and to conceal his true identity from trademark owners.
5.13 Complainant says that Respondent, Chad Folkening, has registered over 7,000 domain names using 88 Rogers Rd., Carmel, Indiana, 46032, U.S.A as the registrants' address. Those registrations show Domainr Parks as the administrative, technical and zone contact and associate that contact with the NIC handle DP8015.
5.14 Exhibit 22, attached to the Complaint, is a copy of an e-mail demonstrating a direct personal involvement of Mr. Folkening with the registration for . In that e-mail, Mr. Folkening purports to speak on behalf of EuroC, Inc. That e-mail gives 88 Rogers Rd., Suite 22, Carmel, Indiana, 46032 as the address for both Mr. Folkening and EuroC, Inc.
5.15 In the past, Mr. Folkening has registered the domain names and .
5.16 Complainant says that Respondent, Chad Folkening, has no intention of offering bona fide products and/or services under any of his domain name registrations, but instead intends to sell the domain names to the highest bidder.
5.17 Complainant has not provided a direct written offer to sell the Domain Names to Complainant. Complainant believes that this is because Respondents have learned from being sued that such an offer will be produced as evidence against Respondents in a dispute. Complainant says that Respondents have never used the Domain Names and holds them waiting to be approached by the Complainant.
5.18 At some time before April 9, 1999, Complainant contacted Respondents by e-mail and offered to pay Respondents for creating a link from Respondents' web page to Complainant's website. On April 9, 1999, Mr. Folkening replied to that inquiry with an e-mail (Exhibit 22), stating:
"Thanks for your time.* Our firm will consider your request at our next board meeting. I can state that EuroC, Inc. has been in production for 9 weeks and is not scheduled to debut for another 8 weeks.* I will inform you about our decision late next week."
5.19 Complainant believes that Respondents did not in fact have any intention to begin business under the name E, Inc.
5.20 Mr. Folkening and the domain name registrants having addresses at 88 Rogers Rd., Carmel, Indiana, have been sued in three separate cases in the United States, namely, Uniphase Corporation v. JDS-U, Inc. and JDSU (United States District Court, Northern District of California, San Jose Division, C-99 20536), Zeneca Limited and Astra USA, Inc. v. The Stat and Chad Folkening (United States District Court, Southern District of New York, 99 Civ. 1670), and Interleaf, Inc. v. Hunter Investments and Chad Folkening (United States District Court, Southern District of Indiana, Indianapolis Division, IP99-0791). The Zeneca case has resulted in a default judgment against Chad Folkening and The Stat. The other cases are on-going.
5.21 By a letter dated September 29, 1999, Complainant, through its lawyers, notified Mr. Folkening that his use and registration of the Domain Names and violate Complainant's Trademark rights and requested that Mr. Folkening discontinue all use of the word EUROCARD and transfer those domain names to Complainant. Respondents have not replied to that correspondence.
6. Parties' Contentions
Complainant's Contentions
6.1 Complainant asserts that:
(a) Complainant's Trademarks are distinctive and famous and symbolize the tremendous goodwill associated with Complainant;
(b) Respondents had knowledge of the foregoing facts at the time that the Domain Names were registered;
(c) The second level of both Domain Names - - is identical to Complainant's Trademark EUROCARD and is confusingly similar to Complainant's Trademarks EUROCARD E and E EUROCARD;
(d) Respondents are not using and do not intend to use the Domain Names in connection with a bona fide offering of goods or services;
(e) Respondents are not commonly known by the Domain Names;
(f) Respondents do not hold a licence from Complainant permitting them to use Complainant's Trademarks;
(g) Respondents are not making legitimate noncommercial or fair use of the Domain Names;
(h) Respondents registered the Domain Names to:
(i) sell, rent or otherwise transfer the Domain Names to Complainant for valuable consideration in excess of documented out-of-pocket costs directly relating to the Domain Names,
(ii) prevent Complainant from reflecting the mark EUROCARD in a corresponding domain name, and has engaged in a pattern of such conduct, and
(iii) cause confusion, mistake or deception as to the affiliation, connection, or association of Respondents and Complainant, and the origin, sponsorship or approval of the Complainant, its services and commercial activities, and Complainant's ability to have a business presence on the Internet under its EUROCARD mark;
(i) Respondents have registered several thousand domain names, many of which incorporate the trademarks of others, including and ;
(j) in litigation with third parties, Respondents have admitted to patterns of acquiring domain names for the sole purpose of re-sale;
(k) Respondents� misappropriation of the Domain Names will irreparably injure the reputation and goodwill associated with Complainant and Complainant's Trademarks; and
(l) if Respondents retain ownership of the Domain Names, Complainant will be unable to use Complainant's Trademarks to designate and identify a website by the name most likely to be used by persons looking for the genuine EUROCARD and its services on the Internet.
Respondents� Contentions
6.2 Respondents failed to file a Response within the time limit prescribed by the Rules.
7. Discussion and Findings
Complainant's Burden of Proof
7.1 Paragraph 4(a) of the Policy places a burden on Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(a) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(b) Respondents have no rights or legitimate interests in the Domain Names; and
(c) the Domain Names have been registered and are being used by Respondents in bad faith.
The First Element
7.2 The first element of the test established by Paragraph 4(a)(i) of the Policy has two components, namely:
(a) the complainant must establish that it has rights in a particular trademark or service mark; and
(b) the complainant must establish that a domain name being used by the respondent is identical or confusingly similar to the complainant's mark.
7.3 Complainant has established rights in Complainant's Trademarks by virtue of use and registration.
7.4 Complainant has established that Complainant's Trademarks are famous.
7.5 Complainant has established that the second level of both Domain Names is identical to Complainant's Trademark EUROCARD.
7.6 The word EUROCARD is the dominant distinctive feature of Complainant's Trademark EUROCARD E and E EUROCARD. The E emphasizes and calls attention to the first letter of the word EUROCARD. Complainant has established that the second level of both Domain Names is confusingly similar to Complainant's Trademarks EUROCARD E and E EUROCARD.
7.7 The Panel finds that Complainant has satisfied its burden regarding Paragraph 4(a)(i) of the Policy.
The Second Element
7.8 The second element of the test set out in Paragraph 4(a)(ii) of the Policy requires Complainant to prove that Respondents have no rights or legitimate interests in respect of the Domain Names.
7.9 It is relatively difficult for any complainant to prove beyond a shadow of a doubt that a respondent has no rights or legitimate interests in a domain name. For the most part, that information is known to and within the control of the respondent. Accordingly, the burden on a complainant in respect of this element must, by necessity, be light. In any event, Paragraph 4(c) of the Policy gives a respondent ample opportunity to demonstrate its rights and interests.
7.10 Based on the record before the Panel, the Panel finds:
(a) Respondents are not using, have not used, are not demonstrating, and have not demonstrated an intent to use the Domain Names in connection with a bona fide offering of goods or services;
(b) Respondents are not and have not been commonly known by the Domain Names;
(c) Respondents are not making legitimate noncommercial or fair use of the Domain Names without intending to mislead and divert customers or to tarnish Complainant's Trademarks for commercial gain;
(d) Respondents� use of EUROCARD in the Domain Names is not authorized by Complainant;
(e) the business names EuroC, Inc. and EuroC are trading styles of Chad Folkening, who is engaged in a pattern of conduct of registering domain names that incorporate trademarks owned by others using contrived business names that incorporate the same trademarks, not for legitimate commercial or non-commercial purposes; and
(f) the Domain Names are not currently being used by Respondents or anyone else as uniform resource locators.
7.11 The Panel finds that Complainant has satisfied its burden regarding Paragraph 4(a)(ii) of the Policy.
The Third Element
7.12 The third element of the test set out in Paragraph 4(a) of the Policy requires Complainant to prove that Respondents have registered and are using the Domain Names in bad faith.
7.13 Complainant has established that Complainant's Trademarks have been used extensively throughout the world for at least 25 years and that Complainant's Trademarks are famous and valuable.
7.14 Complainant has established that Respondents have previously registered and .
7.15 Complainant has established that Respondents have engaged in a pattern of conduct whereby they register Domain Names that incorporate trademarks owned by others not for legitimate commercial or non-commercial purposes.
7.16 The behavior of Respondents in this particular case as well as Mr. Folkening's general pattern of conduct in relation to domain names that incorporate the trademarks of others is consistent with the profile of a professional cybersquatter.
7.17 It is of fundamental importance that Complainant's Trademarks were famous at the time that the Domain Names were registered. On the record before the Panel, it is difficult to imagine any good faith purpose for which Respondents might have registered domain names having a second level that is identical to the famous trademark EUROCARD.
7.18 The Panel finds that Respondents registered the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names to the Complainant for valuable consideration in excess of Respondents� documented out-of-pocket costs directly related to the Domain Names. The Panel finds that Respondents have registered and are using the Domain Names in bad faith within the meaning of paragraph 4(b)(i) of the Policy.
7.19 The circumstances are also consistent with Respondents registering the Domain Names in order to prevent Complainant from reflecting Complainant's Trademarks in a corresponding domain name. The record before the Panel indicates that Respondents have engaged in a pattern of such conduct. The Panel finds that Respondents have registered and are using the Domain Names in bad faith within the meaning of paragraph 4(b)(ii) of the Policy.
7.20 If one gives credence to the assertion made by Mr. Folkening in his e-mail message to Complainant of April 9, 1999, that E EuroC, Inc. had "been in production" for nine weeks and "was scheduled to debut" eight weeks later, that indicates an intention to use the Domain Names for the purpose of attempting to attract, for commercial gain, Internet users to Respondents� website by creating a likelihood of confusion with Complainant's Trademarks as to the source, sponsorship, affiliation or endorsement of Respondent's website or of a product or service on Respondents� website. That behavior does not fall squarely within the parameters of paragraph 4(b)(iv) of the Policy, which appears to require Respondents to operate a website using the Domain Names. However, the Panel is satisfied that registering a domain name for the purpose of operating such a website and then taking steps to begin operating such a website is, in itself, registration and use of the domain name in bad faith. The Panel finds that Respondents registered and are using the Domain Names in bad faith for this reason.
7.21 The Panel finds that the Complainant has satisfied its burden regarding Paragraph 4(a)(iii) of the Policy.
8. Decision
8.1 The Panel finds that the Complainant has proven the presence of all three elements required by Paragraph 4(a) of the Policy.
8.2 For the reasons given above, the Panel orders that Respondents' domain name registrations of and be transferred to Complainant.
Robert A. Fashler
Presiding Panelist
Dated: May 22, 2000
Full & Egal Universal Law Academy