WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eurail Group GIE v. DOTrader
Case No. D2003-0422
1. The Parties
The Complainant is Eurail Group GIE, Utrecht, of Netherlands, represented by De Brauw Blackstone Westbroek N.V. of Netherlands.
The Respondent is DOTrader, Philip Temperley, Chisholm, ACT, of Australia.
2. The Domain Name and Registrar
The disputed domain name <eurail.org> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 3, 2003. On June 3, 2003, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On June 4, 2003, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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").
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 June 24, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2003. The Response was filed with the Center on July 14, 2003.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on July 29, 2003. 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
Complainant Eurail GIE (Eurail) is a joint venture of 34 European railway companies and European shipping lines offering worldwide sales of railroad and shipping transportation and other related travel services. Eurail offers tickets and passes for its railroad and shipping lines. The Eurailticket is a point-to-point ticket and is intended for people who, prior to their departure to Europe, already know their destination. Eurailtickets are available for travel in and between 26 European countries. The Eurail Passes of Eurail offer practically unlimited possibilities of travel by boat and train throughout 17 European countries, and are designed for travelers who want to plan their trip on the spot.
In 2001, more than 400,000 people traveled with a Eurail Pass and, every year, approximately 450,000 people travel with a Eurailticket. The worldwide revenues that Eurail generated with the sale of Eurail Passes amounted to approximately $169 million (U.S.) in 2001 and $141 million (U.S.) in 2002. The annual worldwide turnover from the sale of Eurailtickets is approximately $30 million (U.S.). Each year, Eurail and its agents spend between $5 and 6 million (U.S.) on marketing and advertising the Eurail Passes and Eurailtickets.
Eurail owns a U.S. registration (No. 1,755,757), an Argentine registration (No. 1,683,348), and a Brazilian registration (No. 816667748) for the mark EURAIL. See Annex C to Complaint.
The disputed domain name was registered with Go Daddy Software, Inc. on August 30, 2001. See Annex A to Complaint. The domain name <eurail.org> leads to a directory.engine 54.com, a webpage of the website "engine54.com". This is an internet search engine facilitating the search as to online casinos, gambling, betting, travel, hotels, and finance. The domain name <eurail.org> is used as a hyperlink to the website engine 54. Upon clicking on one of the hyperlinks, the visitor is led to an overview of the search result of the search engine "www.engine54.com". See Annexes B and D to Complaint.
On May 12, 2003, a "cease and desist" letter was sent on behalf of Complainant to Respondent, in which Respondent was warned that legal proceedings would be commenced if it did not transfer the domain name to Complainant. See Annex E of Complaint. Respondent did not respond to the letter.
5. Parties’ Contentions
Complainant alleges that the disputed domain name, <eurail.org>, is, if not identical, at least confusingly similar to a mark in which Complainant has rights.
It further contends that Respondent has no legitimate interest in the domain name. According to Complainant, Respondent is not licensed or otherwise permitted to use the EURAIL mark or to register the disputed domain name, is not commonly known under the domain name, and, given that it does not actually use the domain name, cannot claim a legitimate noncommercial interest or fair use of the name.
With respect to the issue of "bad faith" registration and use, Complainant contends that its EURAIL mark currently enjoys such fame internationally that it cannot be argued that Respondent could not have been aware of the use made by Complainant and of the trademark rights of Complainant when it registered the domain name in issue. Moreover, Complainant adds, any use of the domain name by Respondent will misrepresent an association with Eurail.
Respondent, which operates in Australia, argues that EURAIL is not registered in Australia and that the domain name in issue is neither identical nor confusingly similar to the EURAIL mark, given that the name includes the generic top level domain "org."
Respondent also maintains that it has a legitimate interest in the domain name for the purpose of providing travel information services and notes that it has registered other travel-related domains, such as visitorvisas.com, for use in providing such services. While conceding that it has no active web site under the <eurail.org> domain name, Respondent observes that it has limited resources and is not able to develop domains immediately upon registration but that there is no legal obligation for it to do so.
On the issue of "bad faith" registration and use, Respondent contends that none of the circumstances set forth in paragraph 4(b) of the Policy is applicable. In particular, Respondent urges that Respondent is not a competitor of Complainant and that there is no possibility that Respondent's current web site could be confused with Complainant's web site, or be thought to have any association with Complainant, since it does not contain the word "Eurail" or the "Eurail" logo. In any case, Respondent adds, there is nothing on the search engine page to tarnish Complainant's mark. While conceding that it had heard of the name "Eurail" and understood it to be a term used to describe the European rail network, Respondent maintains that it was not aware that EURAIL had been registered as a trademark and confirmed that it was not registered in Australia. "It follows that the domain name was not registered in bad faith," Respondent declares.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel concludes that Complainant, through its use of, and registrations covering, the EURAIL mark, has rights in the mark. It is also clear that the disputed domain name <eurail.org>, for all intents and purposes, is identical to Complainant's EURAIL mark. It is well accepted that a top-level domain, in this case .org," is to be ignored when assessing identity of mark and domain name. See, e.g., VAT Holding AG v. vat.com, WIPO Case No. D2000-0607 (August 22, 2000).
B. Rights or Legitimate Interests
The Panel concludes that the evidence does not support a finding that Respondent has rights or legitimate interests in the <eurail.org> domain name. Respondent appears to contend that its actions fall within paragraph 4.c.(i) of the Policy, which provides, in relevant part, that a registrant's "demonstrable preparations" to use a domain name in connection with a "bona fide" offering of goods or services is evidence of rights or legitimate interests.
Respondent's argument must be rejected on at least two grounds. First, there is no evidence that it has undertaken any actions in preparation to use the domain name. Respondent, for example, has presented no evidence of any business or marketing plan or of advertising or promotional materials relating to the use of the <eurail.org> domain name. While Respondent may be under no obligation to use a domain name within a particular period of time, the applicable Policy requires some evidence of efforts in preparation to use the domain name in connection with a "bona fide" offering of goods or services. There is no such evidence in this case.
Secondly, any use of the domain name in issue by the Respondent could rarely be considered "bona fide", as the domain name is legally identical to the Complainant’s mark. See Barnes & Noble College Bookstores, Inc. v. Leasure Interactive, WIPO Case No. D2001-1216 (March 25, 2002) (although <bunsandnoble.com> registrant used domain name in connection with the offering of adult goods and services, it nonetheless had no legitimate interests in the name because registration was motivated by a desire to benefit from the famous mark, and thus use was not bona fide).
C. Registered and Used in Bad Faith
Finally, the Panel concludes that the domain name was registered and used in "bad faith." The Panel accepts Respondent's claim that it did not know of Complainant's registrations for the EURAIL mark. This fact, however, is not controlling where, as here, the evidence establishes that Respondent knew of Complainant's use of the term "Eurail" and that the EURAIL mark has been widely advertised and promoted through the years. Respondent's reliance on the panel decision in John Fairfax Publications Pty Ltd. v. Domain Names 4U and Fred Gray, WIPO Case D2000-1403 (December 13, 2000), is misplaced since, in that case, there was no evidence that the domain name registrant knew or ought to have known of the publication in issue. Here, as noted above, Respondent concedes knowledge of Complainant's mark and business.
Many UDRP panels have found that a domain name registrant's knowledge of a Complainant's mark at the time of registration is sufficient, in and of itself, to establish "bad faith" under the Policy. See, e.g., Paxton Herald v. Truth Squad, NAF File No. 114766 (August 21, 2002) (registration of paxtonheraldonline.com with knowledge of complainant's preexisting rights in itself demonstrates bad faith). The facts of this case warrant application of such precedent.
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 <eurail.org> be transferred to the Complainant.
Jeffrey M. Samuels
Dated: August 1, 2003