The Complainant is Eurobank Ergasias S.A. of Athens, Greece, represented by Nabarro, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
The Respondent is Domain Manager of Indianapolis, Indiana, United States of America (“United States”) / Domain Manager of Boynton Beach, Florida, United States. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with TurnCommerce, Inc. DBA NameB (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2014. On October 7, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 8, 2014, the Registrar transmitted by email to the Center its verification response disclosing Registrar and contact information for the Disputed Domain Name which differed from the named Registrar and contact information in the Complaint. The Center sent an email communication to the Complainant on October 9, 2014, providing the Registar and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 9, 2014.
The Center verified that the Complaint together with the amended 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 October 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 30, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 31, 2014.
The Center appointed Charné Le Roux as the sole panelist in this matter on November 6, 2014. 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 one of the largest banking and financial institutions in Greece and is listed on the Athens Stock Exchange. It was founded in 1990 and began using the “Eurobank” name in Greece in 1992 and in Europe in 1997. By November 2005 (when the Disputed Domain Name was registered), the Complainant had over 13,700 people in its employ, both in Greece and abroad, with a local distribution network of over 300 branches and 700 ATM’s. The Complainant’s assets in 2004 were nearly EUR 32 billion. Today, the Complainant and its group of companies (which it refers to as the Eurobank Group) have over 500 branches and a head count of over 18,000 people and provide retail banking and other financial services across seven countries in Europe. The Complainant registered the domain name in 1997. It also owns over 100 trade mark registrations which comprise of or contain EUROBANK. Those registrations which pre-date the registration of the Disputed Domain Name include registrations in Greece, United Kingdom, Albania, Macedonia and Georgia, for the marks EUROBANK and EFG EUROBANK (EFG referring to the Complainant’s predecessor EFG GROUP), filed over the period April 1992 to February 2005 respectively. The Complainant’s portfolio of these earlier registrations also include three Community Trademark registrations for EFG EUROBANK, EFG EUROBANK ERGASIAS (the Complainant’s previous name) and EUROBANK, filed in December 2001 and August 2010 respectively. The registrations cover various goods and services in classes 6, 9, 16, 35, 36, 38, 41, 42 and 45.
The Disputed Domain Name was registered by the Respondent on November 4, 2005. The website attached to the Disputed Domain Name is a classic pay-per-click (“PPC”) site with sponsored listings linking to a number of other websites offering a variety of services covered by the Complainant’s registrations referred to, including to websites of the Complainant’s competitors, such as BCEN EUROBANK and CREDIT EUROBANK. The Complainant’s full historic name EFG EUROBANK ERGASIAS is also referenced in the said website. 5. Parties’ Contentions A. Complainant
The Complainant asserts that it is the owner of the trade mark EUROBANK, that it owns an extensive portfolio of registered trade mark rights for it and that it has used the trade mark in Greece since 1992 and elsewhere in Europe since 1997, continuously on its own and in combination with other elements. The Complainant states that it enjoys a high degree of consumer recognition.
The Complainant contends that the Disputed Domain Name is confusingly similar to a trade mark in which it holds rights, being EUROBANK, the only difference being the addition of the non-distinctive and generic word “group” to the Disputed Domain Name which should, the Complainant argues, be disregarded for the purposes of this dispute.
The Complainant asserts that the Respondent lacks rights or legitimate interests in the Disputed Domain Name in that:
(a) there is no evidence that the Respondent has made use of or demonstrable preparation to use the Disputed Domain Name in connection with the bona fide offering of goods or services, in that the website attached to the Disputed Domain Name uses the Complainant’s trade mark to promote services of parties competing with that of the Complainant. The Complainant states that the Respondent is seeking to capitalize on the Complainant’s EUROBANK trade mark and take unfair advantage of its rights and that this cannot constitute a bona fide offering of services;
(b) there is no evidence to suggest that the Respondent was commonly known by the Disputed Domain Name, prior to its registration; and
(c) it misleadingly diverts consumers to the PPC website attached to the Disputed Domain Name through the Respondent’s use of the Complainant’s EUROBANK trade mark, with the intent of commercial gain.
The Complainant submits that the Disputed Domain Name was registered and is being used in bad faith. It states that the Respondent is intentionally attracting, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trade mark. It states that the Respondent selected the Disputed Domain Name specifically to trade on the fame of the Complainant’s EUROBANK trade mark in the financial sector and that even with the term GROUP included in the Disputed Domain Name, it can only be understood to refer to the Complainant. The Complainant points out that the Disputed Domain Name was registered well after the Complainant’s mark had become synonymous with financial services.
The Complainant points out that the Respondent has under various guises, including E- and Chad Folkening, been the subject of a number of complaints under the Policy and that the respective complainants succeeded in at least four such complaints already.
The Complainant also submits, with reference to paragraph 4(b)(iii) of the Policy that the Respondent’s purpose in registering the Disputed Domain Name was to unfairly disrupt the Complainant’s business. It states that the Respondent, after registering the Disputed Domain Name, also registered the domain name . With Greece being one of the most important territories for the Complainant, the Complainant argues that it is inconceivable that the Respondent could not have registered that domain name without being aware of the Complainant and that this later action of the Respondent also supports an argument of the Respondent’s intention to disrupt the Complainant’s business.
The Complainant requests that the Disputed Domain Name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Disputed Domain Name, the Complainant must prove on a balance of probabilities:
(i) that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in
which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has demonstrated that it has acquired rights in the EUROBANK trade mark as a consequence of the registrations that it holds for it, as referenced above. Ignoring for this purpose the generic Top-Level Domain (“gTLD”) suffix “.com” (as the Panel is entitled to do), the Panel finds that the complete incorporation of the Complainant’s trade mark in the Disputed Domain Name, distinguishable from the Complainant’s trade mark only with a generic and non-distinctive word “group”, will suffice for the purposes of finding that the Disputed Domain Name is confusingly similar to a mark in which the Complainant has rights.
The Complainant has satisfied this Policy requirement. B. Rights or Legitimate Interests
The Complainant asserts that the Respondent has not made any use of or made any demonstrable preparations to use the Disputed Domain Name in connection with the bona fide offering of goods or services, that it has not made any legitimate or noncommercial or fair use of the Disputed Domain Name and that the Respondent is not known by a name that corresponds to the Disputed Domain Name.
The Panel finds that the Respondent has made a prima facie case under paragraph 4(a)(ii) of the Policy and consequently that the burden of production shifts to the Respondent to come forward with evidence demonstrating rights or legitimate interests. There is therefore a case for the Respondent to answer. The Respondent has not disputed any of the claims made by the Complainant and has not provided any answer. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. C. Registered and Used in Bad Faith
The Respondent has clearly registered the Disputed Domain Name primarily with an intention to capitalize on a trade mark owned by the Complainant by diverting Internet users seeking information about the Complainant to the Respondent’s own website in order to obtain financial reward through the sponsored listings that appear on the website, many of which link to competitors of the Complainant. Furthermore, the fact that the Disputed Domain Name was registered well after the Complainant’s trade mark was adopted and extensively used, makes it difficult to believe that the Respondent did not appreciate that EUROBANK was a trade mark owned by the Complainant and that it would have commercial value.
The Complainant did not specifically request a finding in respect of paragraph 4(b)(ii) of the Policy in connection with the pattern of conduct of the Respondent, but this evidence nevertheless points to the fact that the Respondent, under its various guises, uses and registers domain names in bad faith and lends support to a finding that the Respondent acted in bad faith in this instance too.
The Respondent had an opportunity in this administrative proceeding to demonstrate its rights or legitimate interests, or its good faith conduct, or to challenge the Complainant’s contentions, but it elected not to take up these opportunities.
Taking all of the above circumstances into account, the Panel finds that Disputed Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii), 4(b)(ii) and 4(b)(iv) of the Policy. 7. Decision
For 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.
Charné Le Roux
Sole Panelist
Date: November 20, 2014
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