WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Electricit� de France (EDF) v. Richard Anthony Winter
Case No. D2007-1183
1. The Parties
The Complainant is Electricit� de France (EDF) of Paris, France, represented by DS Avocats, France.
The Respondent is Richard Anthony Winter of Brighton, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrar
The disputed domain names , and are registered with Tucows Inc (“Tucows”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2007. On August 14, 2007, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain names at issue. On the same day, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On August 17, 2007, the Center acknowledged receipt of the Complaint.
On August 31, 2007, Kate Harrison of Harrison Grant sent an e-mail to the Center, informing the Center that Harrison Grant is the legal representative of Greenpeace Ltd., who, according to Harrison Grant, registered the disputed domain names. Harrison Grant informed the Center that the correct Respondent in the proceeding should therefore be Greenpeace Ltd., since Mr. Winter had incorrectly been registered as the Registrant and Administrative Contact for the disputed domain names. Mr. Winter is an employee of Greenpeace Ltd.
On September 5, 2007, the Center replied to Harrison Grant that the Registrar of the disputed domain names had confirmed that “Richard Anthony Winter” was the holder of the disputed domain names. The Center informed Harrison Grant that the “Respondent” in a UDRP proceeding is defined as “the holder of a domain-name registration against which a Complaint is initiated”.
On September 6, 2007, Harrison Grant sent an e-mail to the Center, contending without providing supporting materials that Mr. Winter had not registered the disputed domain names, and requested the Center to direct all correspondence to Harrison Grant and not to Mr. Winter.
On September 10, 2007, the Center reiterated in its response to Harrison Grant that Mr. Winter had been confirmed by the Registrar as the holder of the disputed domain names. Therefore, Mr. Winter was considered to be the Respondent in the proceedings and each communication related with the proceedings was to be sent to Mr. Winter. The Center also informed Mr. Winter and Harrison Grant that the Respondent was invited to provide the Center the name of its legal representative, to which no reply was received.
On September 7, 2007, the Complainant filed an amendment to the Complaint requesting the transfer of the disputed domain names instead of their cancellation. On September 10, 2007, the Center acknowledged the receipt of the request for amendment.
On September 9, 2007, the Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
On September 10, 2007, the Center formally notified the Respondent of the Complaint in accordance with the Rules, paragraphs 2(a) and 4(a), and the proceedings commenced on the same day. In accordance with the Rules, paragraph 5(a), the due date for Response was September 30, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 3, 2007.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on October 22, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is Electricit� de France (EDF), a company in the energy and electricity industry.
The Complainant is the owner of the following trademark registrations:
- EDF (word mark), registered with the French Intellectual Property Office on September 3, 2001, under registration number 013119175;
- EDF (word mark), registered with the Office for Harmonization in the Internal Market on November 16, 2001, under registration number 002467652;
- EDF (word and device mark), registered with the United Kingdom Intellectual Property Office on April 28, 2006, under registration number 2420592;
- EDF ENERGY (word mark), registered with the United Kingdom Intellectual Property Office on June 25, 2003, under registration number 2335999;
- EDF (word and device mark), an international trademark designated for the European Community, registered with the United Kingdom Intellectual Property Office on December 5, 2005, under registration number 887857.
The Complainant is the owner of the following domain name registrations:
- , registered on April 15, 1999;
- , registered on June 8, 2002;
- , registered on February 16, 1998;
- , registered on February 16, 1998.
The disputed domain names were registered on June 4, 2007.
On June 18, 2007, the Complainant wrote a cease and desist letter to the Respondent, which the Respondent did not reply.
5. Parties’ Contentions
A. Complainant
Identical or confusingly similar
The Complainant contends that the gTLD denomination (‘.com’, ‘.info’, ‘.net’; ‘.biz’, ‘.org’) has to be ignored for the purpose of assessing similarity.
The Complainant furthermore contends that it has trademark rights in the term ‘EDF”, and that its trademarks are well-known throughout Europe.
The Complainant furthermore contends that the disputed domain names include the Complainant’s trademarks, which constitute the most distinctive and significant part of the disputed domain names.
According to the Complainant, the ‘-uk’ part of the disputed domain names is generic and does not distinguish the disputed domain names from the Complainant’s registered trademarks.
Rights or legitimate interest of the Respondent
The Complainant contends that it has not authorized the Respondent to register the disputed domain names, nor to use the Complainant’s trademarks in the disputed domain names.
The Complainant furthermore contends that the Respondent is not known and has not been known under the term ‘EDF’, nor under the term ‘EDF-uk’.
According to the Complainant, the Respondent has no connection with the disputed domain names.
Finally, according to the Complainant, its trademarks were well established before the Respondent’s registration of the disputed domain names.
Registration and use in bad faith
The Complainant contends that the Respondent had knowledge or should have had knowledge of the Complainant’s trademarks, since the Complainant’s trademarks are widely known and enjoy a strong reputation in Europe and in the United Kingdom in particular.
According to the Complainant, the Respondent does not use the disputed domain names for a website. Given the notoriety of the Complainant’s trademarks, the Respondent registered the disputed domain names with the sole purpose of preventing the Complainant from registering the disputed domain names itself.
The Complainant contends that the absence of use indicates illegitimate passive holding, which previous panels have considered to be ‘use in bad faith’. In this respect, the Complainant relies on Telstra Corporation Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In Telstra, the panel found that passive holding of a domain name may amount to use in bad faith, especially when the complainant’s trademark has a strong reputation and is widely known in the concerned territories, and when the respondent provides no evidence allowing to conceive a plausible actual or contemplated use of the domain name that would not be illegitimate.
The Complainant contends that it has sent an official letter to the Respondent by courier, which the Respondent has not answered.
The Complainant contends that any use of the disputed domain names by the Respondent would infringe on the Complainant’s trademark rights.
The Complainant finally contends that by registering the disputed domain names, the Respondent hampers the Complainant in the development and legitimate use of its trademarks.
B. Respondent
The Respondent did not reply to the Complainant’s contentions1.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant has demonstrated trademark rights in the name ‘EDF’ and that the disputed domain names are confusingly similar with Complainant’s trademarks.
The disputed domain names incorporate the trademarks of Complainant, followed by the element ‘-uk’. This is a generic and non-distinctive term and does not detract from the confusing similarity (see Heidelberger Druckmaschinen AG v. Wayne Graham (Trading) Limited,WIPO Case No. D2006-1131, and the decisions cited therein).
B. Rights or Legitimate Interests
The Complainant has contended that it has not authorized the Respondent to register the disputed domain names, nor to use the Complainant’s trademarks in the disputed domain names and that the Respondent is not known and has not been known under the term ‘EDF’, nor the term ‘EDF-uk’.
As the Respondent has not submitted a Response, these contentions have remained undisputed.
Based on the record and in the absence of a rebuttal by the Respondent, the Panel finds that the Complainant has shown that the Respondent does not have a right or a legitimate interest in the disputed domain names.
C. Registered and Used in Bad Faith
The disputed domain names do not resolve to an active website. In such cases of ‘passive holding’, the consensus view of WIPO UDRP panelists is that the lack of active use of the domain name does not as such prevent a finding of bad faith. The Panel must examine all the circumstances of the case to determine whether Respondent is acting in bad faith.
For the reasons set out below, the Panel finds that the Complainant has proven that the Respondent has registered and uses the disputed domain names in bad faith.
The Panel finds that the Respondent most likely had prior knowledge of Complainant’s trademarks when registering the disputed domain names. The Complainant has provided evidence that its trademarks are widely known in Europe, including the United Kingdom, the place of residence of the Respondent. The Complainant has submitted to the Panel clippings from various press media, including the Financial Times, the International Herald Tribune, the Guardian Unlimited online, F and the New York Times. From this evidence, it appears that the Complainant is a leading company in the European electricity and energy market and a leading energy supplier in the United Kingdom. In addition, the Complainant is a top-tier sponsor of the 2012 London Olympics. Under these circumstances, it can be inferred that the Respondent was aware of the Complainant’s trademarks when registering the disputed domain names.
In view of the notoriety of Complainant’s trademarks, the Panel furthermore finds that any future good faith use of the disputed domain names appears inconceivable.
Finally, the Panel finds that by registering the disputed domain names, the Respondent is preventing the Complainant from reflecting its trademarks in the disputed domain names. Since the Respondent registered the same domain name with five different generic top level domains (gTLD’s), the Panel finds that the Respondent has engaged in a pattern of such conduct.
For the reasons set out above, the Panel finds that the Respondent has registered and uses the disputed domain names in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names , , , and be transferred to the Complainant.
Wolter Wefers Bettink
Sole Panelist
Dated: November 5, 2007
1 The Panel has noted the unsupported contention made by Harrison Grant that the listed registrant of record for the disputed domain names, Mr. Winter, is an employee of Greenpeace and Greenpeace is according to Harrison Grant the actual owner of the disputed domain names. However, the registrar of record has nevertheless confirmed Mr. Winter as the listed registrant for the disputed domain names, and this is reflected in the publicly accessible Whois data. Without more, the Panel is not in a position to further assess these claims, and has little choice in the circumstances other than to proceed on the assumption that Mr. Winter is the registrant of the disputed domain names, and therefore the appropriate Respondent in this matter.
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