WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Europages v. Biz World
Case No. D2008-1118
1. The Parties
The Complainant is Europages, Neuilly Sur Seine, France, represented by DS Avocats, Paris, France.
The Respondent is Biz World, Tortola, British Virgin Islands, Overseas territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <eurobizpages.com> (the “Domain Name”) is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2008. On July 24, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On July 24, 2008, Network Solutions, LLC 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”), 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 August 7, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 28, 2008. On September 1, 2008, the Respondent apologized for missing the deadline and asked the Center for an extension of the deadline. On September 2, 2008, the Center replied that it is at the sole discretion of the Panel as to whether it wishes to consider the Response submitted after the due date passed. On September 8, 2008, the Respondent submitted its Response.
The Center appointed Alfred Meijboom as the sole panelist in this matter on September 8, 2008. 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, Europages, is a publisher of directories and mailing lists on the French and European market. Europages was previously named Euredit, which name is mentioned besides Europages in the extract of the mercantile register submitted by the Complainant.
The Complainant holds the following trademarks registered for goods and services related to publishing and editing:
- French device mark EURO PAGES (1224050) of 1982 (registered in the name of Euredit S.A.).
- International device mark EURO PAGES (626221) of 1994, designated for Algeria, Germany, Austria, Belarus, Benelux, Bulgaria, China, Croatia, Spain, Macedonia, Russian Federation, Hungary, Italy, Kazakhstan, Liechtenstein, Morocco, Monaco, Uzbekistan, Poland, Portugal, Czech Republic, Romania, San-Marin, Serbia, Slovakia, Slovenia, Ukraine;
- French device mark EUROPAGES (08/3547846) of 2008;
- European device mark EUROPAGES (6567614) of 2008.
The Complainant holds and uses the domain names <europages.com> (registered since 1995), <europages.fr> (registered since 2000) and <europages.eu> (registered since 2006) in the name of Euredit S.A. The websites offer a search and find function for companies and their potential customers.
The Domain Name was registered on December 24, 2003.
The website behind the Domain Name is used for the Respondent's business operations, consisting of collecting data and making it available to the public, resulting in a search and find function for companies and their potential customers.
The Complainant has submitted invoices of itself and of the Respondent, which are of a later date. The invoices display a similar logo of exactly the same size in the upper left corner: “euro” with respectively “pages” or “bizpages” printed directly underneath, in both cases matching the length of the word “euro” as a result of which the two words would fit into a rectangle. The typeface appears to be identical. The invoices of the Respondent at the top state “reminder” and mention that it only concerns an offer and that there is no obligation to pay in small print.
Furthermore, the Complainant has submitted a few prints of correspondence from the companies that had received such invoice of the Respondent confirming that they are/were clients of the Complainant and not of the Respondent. Apparently some of them had turned to the Complainant to ask for an explanation and to sort the matter out.
5. Parties' Contentions
The Complainant has contended that the Domain Name is confusingly similar to the Complainant's well-known EUROPAGES trademarks. The word “europages” is the most distinctive part of the Complainant's trademarks. The Domain Name <eurobizpages.com> entirely reproduces this distinctive part, which in itself is already sufficient to establish confusing similarity. Furthermore, “biz” is not the principal element of the Domain Name and does not sufficiently distinguish is from the Complainant's trademarks to avoid confusion. Moreover, the mere addition of a generic or descriptive term to a distinctive and well-known trademark is not relevant when assessing the confusing similarity.
Furthermore, the Complainant has contended that the Complainant's rights in the EUROPAGES trademarks were well established before the Respondent registered the Domain Name in 2003. The Complainant has not authorized the Respondent to use its trademarks or to register and use the Domain Name nor is the Respondent in any other way linked to the Complainant's business. The Respondent is not known and has not acquired a reputation under the term “Europages”. Consequently, the Complainant has held that the Respondent has no rights or legitimate interests in the Domain Name.
Lastly, the Complainant has contended that the Respondent has registered and is using the Domain Name in bad faith. The Complainant's EUROPAGES trademarks are well- known and enjoy a strong reputation in Europe. Therefore, the Respondent had knowledge or should have had knowledge of these trademarks when registering the Domain Name.
The Complainant has received and has submitted invoices sent by the Respondent to the Complainant's customers. The Complainant has stated that these invoices are identical to those used by itself and therefore created confusion with its customers. According to the Complainant some of its customers have proceeded to pay the Respondent, although no services have been performed in return. Furthermore, the Complainant has stated that the graphics, colour, codes and nomenclature of the Respondent's website accessible through the Domain Name are very similar, even identical to those of the Complainant's website <europages.com>. The Complainant has put forward that this has led to confusion between the Complainant and the Respondent by the Complainant's customers.
Consequently, the Complainant has asserted that the Respondent has chosen to register the Domain Name and use the corresponding website to create confusion with the Complainant's EUROPAGES trademarks in order to be able to charge the Complainant's customers for non-existing services. The Complainant suffers damages as a result of this use by the Respondent.
The Respondent has disputed that the Domain Name and the Complainant's EUROPAGES trademarks are identical or confusingly similar. The word “biz” in the Domain Name is a characteristic of the Respondent's company name, Bizworld, and therefore is a principal part of the Domain Name. According to the Respondent the insertion of the word “biz”, referring to Bizworld, gives the Domain Name a completely different look, pronunciation, length and meaning. It distinguishes the Domain Name from the Complainant's trademarks and domain names and is sufficient to avoid any confusion.
Furthermore, the Respondent has claimed rights and/or legitimate interests in the Domain Name. The business carried out by the Respondent is part of the concept of Bizworld which, since 2003, takes aim at creating a global Internet based search and find function for companies and their potential customers. According to the Respondent this business idea is not unique for the Respondent nor for the Complainant; there thousands of companies providing the same legitimate services under various names, logotypes and trademarks. The Respondent has contended that it does not wish to have any link to the Complainant's business. It registered the Domain Name five years ago, in 2003, and ever since has used the Domain Name for a bona fide offering of services. The Respondent has claimed that, during the years, it has gained a considerable customer base and has become commonly known by the Domain Name. Therefore, the Respondent has asserted that the conclusion must be that the Domain Name is easily recognisable and sufficiently different from the Complainant's EUROPAGES trademarks and domain names to grant the Respondent a fair and legitimate right and interest in the use of the Domain Name.
Lastly, the Respondent has denied the accusations that it has registered and is using the Domain Name in bad faith. The use of the Domain Name is part of a long term business operation and using part of the Respondent's business name, Bizworld, in order to identify the business. The Respondent has put forward that it has not registered the Domain Name for the purpose of selling it to the Complainant or a competitor, or to prevent the Complainant from registering the Domain Name, or to disrupt the Complainant's business, or to intentionally attempt to attract, for commercial gain, Internet users to the Respondent's 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 products or services offered on the website. Finally, the Respondent refuted the Complainant's accusation that it has chosen the Domain Name in order to charge its customers for non-existing services.
6. Discussion and Findings
Late Submission of Response
The Respondent has stated that due to the holidays it missed the Notification of Complaint and Commencement of Administrative Proceeding sent on August 7, 2008 with a Response time of 20 days. The Respondent claimed that it only became aware of the Complaint when it received the Notification of Respondent Default on August 28, 2008. On September 1, 2008 the Respondent asked the Center for an extension of the deadline and subsequently submitted its Response on September 8, 2008.
Although it was submitted late the Panel accepts the Response and will take it into consideration, since it has not caused for a delay in the proceedings and under these circumstances the Panel finds that accepting the Response is consistent with the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The Panel therefore declines to reject the Response on formal procedural grounds in this particular case.
Prior Initiated Legal Proceedings
The Complainant has claimed that it has commenced legal proceedings in France in connection with or relating to the Domain Name. The Respondent has stated that it has not been made aware of any such legal proceedings.
According to Article 18(a) of the Rules, in the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain name dispute that is the subject of the Complaint, the Panel has the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision. Since neither the Complainant or the Respondent have asked for suspension or termination of the proceeding, the Panel decides to proceed to a decision.
According to paragraph 4(a) of the Policy, the requested remedy can be granted if the Complainant asserts and proves each of the following:
A. that the Domain Name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
B. the Respondent has no rights or legitimate interests in respect of the Domain Name; and
C. the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant holds several trademark registrations in numerous countries for the device marks EUROPAGES and EURO PAGES. Furthermore, the Panel notes some are of a far older date than the date of the Domain Name was registered. Consequently, the Panel finds that the Complainant holds rights in the EUROPAGES trademarks.
For the purpose of assessing whether the Domain Name is identical or confusingly similar to the trademarks in which the Complainant has rights, the gTLD “.com” is disregarded, being a necessary element of domain names. Furthermore, the Panel finds that the term “Europages” unarguably is the most distinctive part of the Complainant's trademarks. Therefore, the only significant difference between the Domain Name <eurobizpages.com> and the EUROPAGES trademarks is the insertion of the word “biz”. “Biz” is a common abbreviation for business and the alleged reference to the Respondent's company name, Bizworld, does not, nor from the Domain Name or the website, become (immediately) clear. Furthermore, the Respondent has acknowledged that the Complainant and the Respondent operate in the same, competitive area of business.
Taking these circumstances into account the Panel finds that the insertion of the word “biz” cannot be considered to be sufficient to avoid confusion with the Complainant's EUROPAGES trademarks. Consequently, comparing the Domain Name <eurobizpages.com> with the Complainant's (older) EUROPAGES trademarks, the Panel finds them to be confusingly similar.
B. Rights or Legitimate Interests
As mentioned before, the Respondent has acknowledged that it is operating in the exact same business field as the Complainant. Furthermore, it is a fact that the Complainant holds EUROPAGES trademarks and domain names that predate the registration of the Domain Name by the Respondent in 2003. The Complainant has not authorized the Respondent to use its EUROPAGES trademarks in general or as part of a domain name. The Respondent has not denied that it knew the Complainant and/or its EUROPAGES trademarks when registering the Domain Name. The Respondent has claimed that it has become commonly known under the Domain Name and has acquired a considerable customer base over the years, but has not submitted any persuasive evidence that supports these claims. To the contrary, the Respondent has not contested the authenticity of the invoices submitted by the Complainant sent by the Respondent to the Complainant's customers. (These invoices appear to be a reminder of late payment, but in reality there seems to be no obligation to pay. The invoice - in small print, which can easily be overlooked - mentions that it should only be considered as an offer and that there is no obligation to pay). The Eurobizpages logo on these invoices is very similar to the Europages logo on the Complainant's invoices and is printed in the same place. The Panel finds that these similarities cannot convincingly be explained, as suggested by the Respondent, merely by the use of the same administrative program for invoicing.
Consequently, the Panel finds that the Respondent was aware of the EUROPAGES trademarks when registering the Domain Name and intentionally attempts to create confusion with the Complainant and/or its EUROPAGES trademarks in order to make money by misleading the Complainant's customers. The Domain Name and the corresponding website are seemly used as a part of this façade. The Respondent's use of the Domain Name clearly cannot be considered as the bona fide offering of services, or as legitimate, noncommercial or fair use. For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
For substantially the same reasons as mentioned under paragraph B of the decision, the Panel comes to the conclusion that the Respondent has registered and is using the Domain Name in bad faith.
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 <eurobizpages.com> be transferred to the Complainant.
Date: September 22, 2008