WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Euronics Italia S.p.A. v. Forsyte Corporation Case No. D2010-0687 1. The Parties
The Complainant is Euronics Italia S.p.A. of Milano, Italy, represented by Perani Pozzi Tavella, Italy.
The Respondent is Forsyte Corporation of Nassau, Bahamas. 2. The Domain Name and Registrar
The disputed domain name is registered with PriceD Internet Services Corporation. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2010. On April 30, 2010, the Center transmitted by email to PriceD Internet Services Corporation a request for registrar verification in connection with the disputed domain name. On the same date, 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”).
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 May 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 27, 2010.
The Center appointed Selma Ünlü as the sole panelist in this matter on June 3, 2010. 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 facts stated in the Complaint are as follows:
(1) The Complainant, established in 1999, is the leading distributor of household appliances and consumer electronics and successor of the historic mark GET founded in 1972. The GET Group promoted the creation of Euronics International that is present within Europe holding over 11,500 outlets and realizing a turnover of EUR 33 million.
(2) The Complainant conducts its business almost exclusively in connection with the name and trademarks EURONICS and EURONICS POINT. As per the information provided by the Complainant and the evidence filed under Annex E, the Complainant is the registered owner of the EURONICS trademark registration and applications (such as “Euronics”, “Euronics Point & logo”, “Shop on line Euronics”), both word and figurative marks, in many jurisdictions (including but not limited to Italy and the European Union Community), the earliest of which dates back to September 1998.
(3) Euronics Italia runs also an e-commerce business on its website “” and “” managed by a marketing agency.
(4) The Complainant has been informed of the registration of the disputed domain name on June 29, 2008 with PriceD Internet Services Corporation.
(5) The Panel visited the web site to which the disputed domain name resolves and noted that the disputed domain name is active and is used as a parking-page, as described by the Complainant, containing several links to other websites owned by third parties, concerning different services, including computer software, travels, on-line dates, videogames and other matters, which do not appear to be connected either to the Complainant or the Respondent. 5. Parties' Contentions A. Complainant
The Complainant requests the Panel to issue a decision transferring the disputed domain name to the Complainant on the following grounds:
(i) The disputed domain name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith. (i) Identical or Confusingly Similar
The Complainant alleges that the disputed domain name is almost identical to its trademark EURONICS POINT, except for the hyphen, which does not provide any distinctiveness. The disputed domain name consisting of “euronics”, “-” and “points”, is the reproduction of the Complainant's registered trademarks and constitutes the unauthorized use of the Complainant's trademarks and its registered trade name. The disputed domain name is linked to a parking-page that contains links to other websites owned by direct competitors of the Complainant and also to different websites providing irrelevant services with the Complainant. (ii) Rights or Legitimate Interests
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name since the Respondent is not commercially connected to the business of the Complainant and has never been authorized by the Complainant to use the name EURONICS POINT. In addition, the Respondent is not commonly known as “Euronics Point”. Furthermore, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services, since the disputed domain name is linked to a parking-page that contains links to other websites owned by direct competitors of the Complainant and also to different websites providing irrelevant services with the Complainant. (iii) Registered and Used in Bad Faith
The Complainant argues that the Respondent has registered and used the disputed domain name in bad faith as the Respondent should have known the Complainant's well known trademarks well before the registration of the disputed domain name and that the Respondent registered the disputed domain name primarily for the purpose of unfair commercial benefit and the Complainant suffers from serious damages to its reputation. Moreover, the Respondent has been called as a respondent in many cases that have concluded in the transfer of the disputed domain names. Further, the registration activities of the Respondent proves per se its bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) The disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant has the burden of proving that all these requirements are fulfilled, even if the Respondent has not formally replied to the Complaint.
Upon careful review of the evidential materials submitted by the Complainant to support its contentions, the Panel finds the following: A. Identical or Confusingly Similar
The Panel finds out that the Complainant has produced sufficient evidence to prove its earlier registered rights; in other words, it is observed that the Complainant has registered trademark rights for the marks EURONICS and EURONICS POINT in various jurisdictions.
The Panel finds that the disputed domain name comprise the Complainant's trademarks EURONICS and EURONICS POINT and is the complete reproduction of the Complainant's trademarks,with an additional hyphen that does not have a distinctiveness. (AT&T Corp. v. WorldclassM, WIPO Case No. D2000-0553; Columbia Sportswear Company v. Mahlon Keeler,WIPO Case No. D2000-0206).
Considering the fact that the Complainant is also the registered owner of many trademarks containing the word “Euronics” which is also one of the core elements of the Complainant's trademark, the Panel finds that the Respondent has intended to create confusion among the consumers.
It is clear that as a result of the recognition of the Complainant and its trademarks EURONICS and EURONICS POINT, the disputed domain name may well be regarded by many Internet users as a domain name associated with or connected to the Complainant's business in selling and manufacturing household appliances and consumer electronics.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant's mark and the first requirement under paragraph 4(a) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy rules that, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The burden of proof rests in principle with the Complainant who must demonstrate a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once the Complainant has made out a prima facie case, then the Respondent may, by showing one of the following elements, prove rights or legitimate interests in the disputed domain name.
The Panel finds that the Respondent has not provided evidence of the circumstances of the type specified in paragraph 4 (c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Thus, the Panel finds that the Respondent is unable to adduce evidence to show cause that it has rights or legitimate interests to the disputed domain name.
Considering that the use of EURONICS POINT trademark has not been authorized or licensed to the Respondent and the disputed domain name does not apparently correspond to the Respondent's name by which it has become commonly known and the website at the disputed domain name includes several links to the websites of the competitors of the Complainant, the Panel observes that the Respondent can not be regarded as using the disputed domain name in connection with a bona fide offering of goods or services.
Hence, as the rights or legitimate interests of the Respondent could not be duly demonstrated under paragraph 4 (c)(ii) of the Policy, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy enumerates four, non-inclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has 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 trademark 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 trademark 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 web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's web site or location or of a product or service on respondent's web site or location.
The foregoing considered, the Panel is of the opinion that the Respondent has registered and used the disputed domain name in bad faith since the Panel observed the circumstances that the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor and attempted to attract, for commercial gain, Internet users to its website or other on-line location or websites, by creating an apparent likelihood of confusion with the Complainant's earlier registered rights. In particular, when considering the fact that the Respondent also registered many domain names seemingly infringing the registered rights of third parties and the Respondent has been called in many cases under the applicable Policy, the Panel believes that the Respondent, who did not submit a formal response to the Complaint, has acted in bad faith to have unfair benefits from the reputation of third parties' trademarks.
Furthermore, it is very likely that the Respondent knew of the Complainant's trade marks and the Panel finds that that the registration and use of a domain name, as in this case, incorporating a widely known trademark without demonstrating a legitimate interest indicates strongly a registration in bad faith.
Hence, the Panel is convinced that the disputed domain name has been registered and used in bad faith and that the Complainant has satisfied the third element under 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 disputed domain name be transferred to the Complainant.
Selma Ünlü
Sole Panelist
Dated: June 17, 2010
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