WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Europcar International SASU v. Nicolas Faure Case No. D2009-0031 1. The Parties
1.1 The Complainant is Europcar International SASU of Guyancourt, France, represented by Field Fisher Waterhouse, United Kingdom of Great Britain and Northern Ireland.
1.2 The Respondent is Nicolas Faure of Lausanne, Switzerland. 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with Gandi SARL (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2009. On January 13, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 13, 2009, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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”).
3.2 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 5, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 6, 2009.
3.3 The Center appointed Matthew S. Harris as the sole panelist in this matter on February 16, 2009. 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
4.1 The Complainant is part of the Europcar group, which is a well known car rental company both in Europe and elsewhere. In 2007 Europcar generated revenue in excess of €2 billion. It operates business from a number of websites but its primary corporate website operates from the Domain Name . It has operated in Switzerland since 1973 and currently operates from over fifty locations in that territory.
4.2 The Complainant has trade mark registrations around the world1 that comprise or incorporate the term “Europcar”. These include:
(i) United States registered trade mark no, 1066416 for the word EUROPCAR in class 39 filed on December 9, 1974;
(ii) Community trade mark registration number 003993789 for the word EUROPCAR in class 39 filed on August 23, 2006;
(iii) International trade mark registration 196011 for the word EUROPCARS in class 12 filed on October 16, 1956 and designating, inter alia, Switzerland.
4.2 Not much is known about the Respondent. He would appear to be an individual located in Lausanne, Switzerland.
4.3 The Domain Name is a “.pro” domain name and was reserved by the Respondent on July 25, 20082. On August 28, 2008, upon discovering that the Respondent had reserved the Domain Name, the Complainant sent a “cease and desist letter” or “letter before action” in French to the Respondent demanding that the Respondent stop using the EUROPCAR mark and cancel the Domain Name. The Respondent did not respond to that letter and when the “.pro” second level domain was re-launched on September 8, 2008, the domain name was registered to the Respondent as a second level resolving domain name.
4.4 At all material times the Domain Name has resolved to a parking page generated by the Registrar. It declares “The web site you have requested doesn't exist” and “The domain name associated with this website is currently being ‘parked' by its current owner”. This webpage continues to operate as at the date of this decision. 5. Parties' Contentions A. Complainant
5.1 The Complainant contends that the Domain Name incorporates the Complainant's EUROPCAR mark in its entirety and therefore contends that it is identical to the Complainant's mark.
5.2 The Complainant also contends that there is no evidence of the Respondent making any use of the Domain Name and that given the extent of the Complainant's rights “it would be impossible for the Respondent to acquire any rights or legitimate interest in the Domain Name in question”.
5.3 The Complainant also claims that although in this case there has only been passive holding of the Domain Name, there has nevertheless been both registration and use in bad faith since the facts of this cases are essentially the same as those in Telstra Corporation Limted v Nuclear Marshmallows, WIPO Case No. D2000-0003. In particular the Complainant:
(i) refers to the scope of the Complainant's rights
(ii) refers to the Complainant's activities in Switzerland;
(iii) claims that is “impossible to conceive of any plausible actual or contemplated actual use of the [D]omain [N]ame by the Respondent that would not infringe the Complainant's rights in the EUROPCAR mark”; and
(iv) refers to the Respondent's failure to respond to the Complainant's letter before action.
5.4 So far as remedies are concerned the Complainant asks for the Domain Name to be transferred to it or “if the Panel considers it is unable to make such a decision, that the domain name be cancelled”. B. Respondent
5.5 The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”. A. Identical or Confusingly Similar
6.4 This aspect of this case is straight forward. The Panel accepts that the Complainant is the owner of a large number of trade marks some of which comprise the word “Europcar” alone. The Domain Name comprises this term with the addition of the “.pro” TLD. The Panel therefore accepts that the Domain Name is essentially identical to a trade mark in which the Complainant has rights.
6.5 In the circumstances the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.6 This Complainant accepts that the Respondent has never used the Domain Name in relation to a bona fide offering of goods and services and that there is no other evidence that any other of the examples of rights or legitimate interest set out in paragraph 4(c). Whilst the Complainant does not expressly assert this in the Complainant, it nevertheless clear (particularly given the content of its letter before action) that at no time has the Complainant authorised the Respondent to use the EUROPCAR mark.
6.7 Many panels when faced with these circumstances would assert (perhaps reciting the fact that it is difficult for a complainant to prove a negative) that in such a case the burden of proof passes to a respondent to show that it has a right or legitimate interest and that if no response has been filed, the complainant has made out it case.
6.8 This Panel would prefer to address the question slightly differently. For the reasons that are explained under the heading of bad faith below, although the Respondent's exact motivations are unknown, the only reasonable inference that can be drawn is that the Respondent sought to register and retains the Domain Name with a view to take unfair advantage of the reputation that the Complainant has built up in the EUROPCAR mark. That is sufficient to justify a positive finding by the Panel that the Respondent does not have a right or legitimate interest in the Domain Name for the purposes of the Policy.
6.9 However, whichever approach is adopted, the outcome is the same. The Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
6.10 There is another aspect to this case. The Domain Name is a “.pro” domain name. These domain names are only available to “professionals” and Paragraph 2 of the Terms of Use agreement that applies in relation to these domain names3 states as follows:
“Professional Use. The Service is made available to you for your professional use only. As such, you agree that you are a person or entity who provides professional services and has been admitted to or licensed by, and is in good standing with, a government certification body or jurisdictional licensing entity recognized by a governmental body, which body requires that its members be licensed or admitted to a certifying or licensing entity and regularly verifies the accuracy of its data.”
6.11 In this case there is nothing to suggest that the Respondent intended to use the term “Europcar” in relation to the provision of professional services. Indeed, without intending in this decision to set down any guidance as to what might qualify as “professional services” for the purposes of “.pro” registrations, the very term “Europcar” (being an obvious portmanteau of the words “Europe” and “car” and thereby suggestive of goods or services with these characteristics) strikes the Panel as an unlikely name for any professional services entity.
6.12 This in turn raises the interesting question as to whether in the unusual case of “.pro” domain names, even if a respondent would be able to show a right that would ordinarily constitute a right or legitimate interest for the purposes of the Policy it nevertheless would not have a right or legitimate interest for the purposes of a “.pro” domain name unless the domain name was also intended to be used in a way that complied with paragraph 2 of the Terms of Use agreement.
6.13 However, this is not an issue that has been argued before the Panel, nor is it necessary to form a view on this question for the purpose of this decision given the findings already set out above. C. Registered and Used in Bad Faith
6.14 The Panel accepts the Complainant's contention that given the reputation of the Complainant's EUROPCAR mark around the world and the extent of the Complainant's activities in Switzerland, where the Respondent appears to reside, that the Respondent must have been aware of the existence of the Complainant's rights at the time of registration4 of the Domain Name.
6.15 Further the Panel also finds that although it is not entirely clear why the Respondent sought to register the Domain Name, the only credible explanation is that it sought in some unfair way to take some unfair advantage of the reputation that the Complainant had built up in the EUROPCAR name. Exactly, how the Respondent seeks to do this is unclear, but that does not matter. The Panel accepts that the Respondent's mark is sufficiently well known and distinctive (notwithstanding its suggestive content) that this is more likely than not to have been the purpose of the registration.
6.16 The Panel also accepts, with one qualification, the Complainant's contention that this is a case where the reasoning in the Telstra supra decision applies. The qualification relates to that factor identified in the Telstra supra decision and claimed to be applicable here that it is “not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under trademark law”. As this Panel stated in La Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Grozea RomicaWIPO Case No. D2008-1377:
“6.15 However, this approach [i.e. an assertion that a domain name cannot be conceivably used without infringement] is problematic in a number of respects. First, to assert that a domain name cannot be used without infringement of national laws is an extraordinarily far reaching statement. In this case the Complainant has brought forward evidence of a Monaco trade mark. It has not evidenced rights anywhere else in the world. Further, there are legal systems that may permit certain uses of a mark without the consent of the mark owner. Might not a domain name be used for one of those uses? Second, this Panel would suggest that the questions of trade mark infringement, passing off and other similar national laws are typically quite distinct from any assessment of bad faith under the Policy. They may overlap but are not the same. Therefore, even if it is correct that any conceivable use of a domain name would involve trade mark infringement, it does not necessarily follow that there is bad faith use under the Policy.
6.16 The Panel would, therefore, suggest that this aspect of decision in Telstra should be re-read by those invoking the Policy with this view of the relevance of trade mark infringement in mind. This was, for example, the approach that was followed by the three-person panel in Mr. Talus Taylor, Mrs. Anette Tison v. Vicent George Warning/Fayalobi Interaction Management,WIPO Case No. D2008-0455. In that case the panel stated at paragraph 6.21 as follows:
‘The Complainants' reference to the Telstra decision is also relevant here. The Domain Name is essentially identical to the name by which the Complainants' stories are known and it is hard to conceive of any use of the Domain Name that might be a legitimate one. The Panel is not saying that all and any use of the Domain Name would necessarily involve some form of trade mark infringement. The issues of trade mark infringement and abusive registration, whilst they often overlap, are separate and one does not necessarily follow from the other (see for example, Delta Air Transport NV (trading as SN Brussels Airlines) v. Theodule [D]e Souza,WIPO Case No. D2003-0372; and, 1066 Housing Association Ltd. v. Mr. D. Morgan,WIPO Case No. D2007-1461). It is simply that it is difficult to conceive of any substantive use of the Domain Name that would not involve use in bad faith'.”
6.17 The Panel accepts that in the current case it is difficult to conceive of any use of the Domain Name by the Respondent that would not involve bad faith. Accordingly the Telstra supra criteria apply.
6.18 Once again the fact that the case involves a “.pro” domain name potentially raises an additional issue. Presumably, the Respondent made certain representations as to his “professional” status at the time of registration. However, as has already been discussed, it seems improbable that the Domain Name is one that would be chosen by an individual or entity offering professional services. Any misrepresentation made to the Registry at the time of registration would be another factor that would suggest bad faith. However, once again the Complainant puts forward no argument in these terms, and it is not necessary to form any view on this issue in this case.
6.19 The Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. D. Remedies
6.20 The Complainant unusually asks for the Domain Name to be transferred to it or “if the Panel considers it is unable to make such a decision, that the domain name be cancelled”. It is also noticeable that in its initial letter before action the Complainant demanded that the Domain Name be cancelled rather than transferred.
6.21 Given that the Domain Name is a “.pro” domain name it is not surprising that the Complainant has expressed itself in these terms. As has already been explained in this decision, ordinarily to register a “.pro” domain name a registrant must self certify that it offers professional services and holds credentials from a certifying governmental authority. No such self certification or other argument or evidence is offered to the Panel by the Complainant in this case. In the circumstances, the Panel considers it inappropriate to order a transfer of the Domain Name in this case. The Panel will instead order that the Domain Name be cancelled. 7. Decision
7.1 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 name, be cancelled.
Matthew S. Harris
Sole Panelist
Dated: February 17, 2009
1 It appears to have marks “in territories ranging from Afghanistan to Zimbabwe”.
2 The “.pro” TLD was launched by RegisterPro in 2004 to provide a domain space for “professionals”. The TLD subsequently developed primarily to provide third level domain names (e.g. [name].) to accountants, engineers, lawyers and medical professionals in Canada, Germany, the United Kingdom and the United States of America.
However, in May 2008, ICANN agreed to the allow RegisterPro to become available to any professional or professional entity holding credentials from a certifying governmental authority anywhere in the world. Second level domains became easier to acquire and Registrants were required simply to self certify their professional status by identifying their name, profession, jurisdictional country, licensing authority, licence number and a link to the relevant licensing authority's website.
The TLD was “re-launched” on September 8, 2008, but from July 21, 2008 it was possible to “pre-register” second level domain names. These domain names were issued as “non-resolving domain names” but converted into resolving domain names on September 8, 2008.
3
4 The Complainant contends that this was so both at the time at which the Complainant “reserved” the domain name on July 25, 2008 and when it was subsequently “registered” on September 8, 2008. This raises the interesting question as to which of these two dates should be considered the date of registration for the purposes of any bad faith assessment. The Panel believes that July 25, 2008 is probably the right date. This is because it understands that at this time the Domain Name was recorded as being in the Respondent's name in the RegisterPro WhoIs database. This meant that no other person could register the Domain Name even though the Domain Name was not capable of resolving to a webpage until September 8, 2008. There is an obvious analogy here with the position on deletion or expiry as discussed in Grundfos A/S v. Bridge Port Enterprises LimitedWIPO Case No. D2008-1263. However, the point has not been argued before the Panel and there is no need for it to decide this issue. The Panel accepts that whichever date applies in this case, the Respondent had the necessary knowledge at that time.
Full & Egal Universal Law Academy