WIPO Domain Name Decision D2009-0491 for eurocar-rent-a-car.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Europcar International SASU v. Eurocar Rent-a-car d.o.o. Case No. D2009-0491 1. The Parties

The Complainant is Europcar International SASU of Guyancourt, France, represented by Field Fisher Waterhouse LLP, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Eurocar Rent-a-car d.o.o. of Igalo, Montenegro. 2. The Domain Name and Registrar

The disputed domain name is registered with I Corp. 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2009. On April 16, 2009, the Center transmitted by email to I Corp. a request for registrar verification in connection with the disputed domain name. On April 16, 2009, I Corp. 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”).

In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 24, 2009. In accordance with paragraph 5(a) of the Rules, the due date for Response was May 14, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 15, 2009.

The Center appointed Brigitte Joppich as the sole panelist in this matter on May 27, 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 paragraph 7 of the Rules.

On June 2, 2009, the Respondent sent an unsolicited email directly to the Panel. 4. Factual Background

The Complainant is the European leader and among the top three global players in the car rental market. The Complainant was founded in Paris in 1949 and today serves business and leisure customers with 8,000 employees and a fleet exceeding 190,000 vehicles through a network that spans more than 150 countries. In 2008, the Complainant signed more than 10 million rental contracts and generated revenue in excess of EUR 2.l billion. The Complainant has operated in Montenegro respectively the former Yugoslavia since 1989.

The Complainant owns a multitude of registrations worldwide for its EUROPCAR trade mark, in particular the following trade mark registrations for EUROPCAR (the “EUROPCAR Marks”):

- United States Registration No. 1066416 EUROPCAR in class 39, filed on December 9, 1974 and registered on May 24, 1977;

- United States Registration No. 2804097 EUROPCAR & device in classes 35 and 39, filed on March 12, 2002 and registered on January 13, 2004;

- Community Trade Mark Registration No. 3993789 EUROPCAR in classes 12, 36 and 39, filed on August 23, 2004 and registered on August 4, 2006;

- Community Trade Mark Registration No. 4016002 EUROPCAR & device in classes 12, 35, 36 and 39, filed on September 8, 2004 and registered on December 21, 2005;

- International Registration No. 708414 EUROPCAR & device in class 39, filed on January 8, 1999 covering Montenegro;

- International Registration No. 547531 EUROPCAR & device in classes 12 and 39, filed on January 13, 1990 covering Montenegro; and

- International Registration No. 426021 EUROPCAR & device in classes 7, 12, 16, 36, 39 and 42, filed on August 26, 1976 covering Montenegro.

The Complainant provides its services on the Internet mainly at ””, with approximately 200,000 unique visitors per month. Furthermore, the Complainant has at least 66 country or region specific websites, which are mainly operated under country related domain names, including , , , and .

The disputed domain name was registered on April 27, 2006 by a company named IT Montenegro and was first used in connection with a website offering services identical to those of the Complainant and including a logo nearly identical to the Complainant's logo displayed on its website. After receipt of the Complainant's cease and desist letter dated February 2, 2009, the disputed domain name was transferred to the Respondent and the website was redesigned, mainly by omitting the Complainant's logo on the first page of the website at the disputed domain name, while it still appeared further down such site. Later on, the disputed domain name redirected Internet users to the domain name . 5. Parties' Contentions A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:

(1) The disputed domain name is confusingly similar to the Complainant's extensive rights in the EUROPCAR Marks as it comprises an insignificant misspelling of the Complainant's EUROPCAR Marks, the additional words “rent a car”, which are merely descriptive, and the top-level domain name “.com”, which does not affect the decision whether the disputed domain name is identical or confusingly similar.

(2) The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. With regard to the Respondent's business name, which is identical to the second level of the disputed domain name, the Complainant contends that the Respondent cannot rely on rights in the name “Eurocar Rent A Car” in this proceeding. The Complainant argues that the disputed domain name was first registered in the name of IT Montenegro, that the registrant was changed after the Complainant sent a cease and desist letter to IT Montenegro on February 2, 2009, and that the Respondent's company (which has the same address as the former registrant IT Montenegro) does not exist in the Montenegrin Commercial Register. Based on these facts, the Complainant contends that the Respondent is not commonly known by the disputed domain name either. The Complainant further contends that it has not authorized the Respondent to use the EUROPCAR Marks and that the Respondent's use of the disputed domain name is neither non-commercial nor fair. With regard to the Respondent's offer of goods and services under the disputed domain name, the Complainant contends that such use is not bona fide under the Policy because the Respondent offered services identical to those of the Complainant while using a logo nearly identical to the logo of the Complainant - therefore the Respondent's use of the disputed domain name constitutes an infringement of the Complainant's rights in the EUROPCAR Marks.

(3) Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith: The Complainant asserts that the Respondent chose the disputed domain name in a deliberate attempt to attract customers to its website by creating confusion with the EUROPCAR Marks. Furthermore, the Complainant contends that by using the domain name in connection with a website offering goods and services identical to the core business of the Complainant under a virtually identical mark and by using identical colours and website design, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark. The Complainant further argues that the provision of a false identity in the whois database is further evidence of bad faith as well as the fact that the Respondent registered the domain name on March 23, 2009, and therefore acted in a pattern of registering infringing domain names. B. Respondent

The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings

The Panel decided not to take the Respondent's email to the Panel dated June 2, 2009 into account. Firstly, any direct communication between the parties and the Panel is prohibited by paragraph 8 of the Rules. Secondly, even if such email was admissible and meant to serve as a response (which is not clear from its content), it was filed with a considerable delay (i.e. almost three weeks after its due date) and is therefore time-barred under paragraph 14 of the Rules.

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

(i) the domain name is identical or confusingly similar to the Complainant's trade mark; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar

The disputed domain name fully includes the EUROPCAR Marks by merely omitting the letter “p” in the middle. The Panel believes that even without the letter “p” the average person will readily recognize the term “eurocar” in this domain name as corresponding to the Complainant's EUROPCAR Marks.

The addition of the generic words “rent a car” following the trademark does not eliminate the similarity between the Complainant's marks and the domain name as these words only describe the Complainant's business. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words (cf. Dr. Grandel GmbH v. Drg Randel Inc.,WIPO Case No. D2005-0829; Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 and RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242).

Furthermore, it is well established that the specific top level domain name generally is not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant's trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429 and Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374).

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's EUROPCAR Marks and that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is consensus view among panels that a complainant has to make only a prima facie case to fulfil the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of proving that the respondent has rights or legitimate interests in the disputed domain name will then shift to the respondent.

The Complainant has asserted that the Respondent neither uses the domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, nor is known by the disputed domain name, that the Respondent is not making any legitimate non-commercial or fair use of the disputed domain name, and that the Respondent therefore cannot have any rights or legitimate interests in the domain name. The Complainant has therefore fulfilled its obligations under paragraph 4(a)(ii) of the Policy.

The Respondent did not deny these assertions in any way.

Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the domain name under paragraphs 4(a)(ii) and 4(c) of the Policy. C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.

The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of the third requirement of paragraph 4(a)(iii) of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith. This point is clear from the wording of the Policy and has been confirmed ever since Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (cf. also Telstra Corporation Limited v. Adult Web Development and Telstraexposed,WIPO Case No. D2002-0952; Telstra Corporation Ltd v. David Whittle,WIPO Case No. D2001-0434 and Prada S.A. v. Mr. Chuan Sheng Wang,WIPO Case No. D2003-0758).

Evidence of bad faith registration and use is shown when registration of a domain name occurs in order to utilize another's well-known trade mark by attracting Internet users to a website for commercial gain (cf. America Online, Inc. v. Tencent Communications Corp., NAF Case No. FA 93668; Lilly ICOS LLC v. John Hopking / Neo net Ltd.,WIPO Case No. D2005-0694 and Lilly ICOS LLC v. East Coast Webs, Sean Lowery,WIPO Case No. D2004-1101).

The Complainant is widely-known internationally and has been carrying on business activities under the name EUROPCAR for many decades in numerous countries worldwide, including Montenegro and the former Yugoslavia, where the Respondent is located. It is hardly conceivable that the Respondent registered the disputed domain name, which consists of a misspelling of the Complainant's EUROPCAR Marks and the words “rent a car”, describing the Complainant's services, without knowledge of the Complainant's rights in the EUROPCAR Marks. This finding is supported by the fact that the Respondent used a logo on its website which is nearly identical to the Complainant's logo regarding font, colour and the overall look and feel. The Panel is therefore satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant's marks and thus in bad faith under paragraph 4(a)(iii) of the Policy.

As to bad faith use, the Respondent has displayed a logo on its website which is optically identical to the Complainant's logo and uses the same font and colour as the Complainant's logo on its website. Furthermore, the Respondent was using the disputed domain name in connection with services identical to those offered by the Complainant. Thereby, the Respondent created a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website, trying to divert Internet users to its website. As a result, the Panel finds that the Respondent has used the domain name in bad faith under the Policy, paragraph 4(b)(iv), attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on its website or location.

Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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 name be transferred to the Complainant.

Brigitte Joppich
Sole Panelist

Dated: June 9, 2009

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