The Complainant is Eurodrive Services and Distribution N.V of Amsterdam, Netherlands, represented by Dreyfus & associés, France.
The Respondent is Mehdi Siami of London, United Kingdom of Great Britain and Northern Ireland.
The Disputed Domain Name <euromaster.tel> is registered with Mesh Digital Limited.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2010. On January 14, 2010, the Center transmitted by email to Mesh Digital Limited a request for registrar verification in connection with the Disputed Domain Name. On January 14, 2010, Mesh Digital Limited 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 January 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 9, 2010. On January 10, 2010, the Response due date was extended to January 16, 2009. The Response was filed with the Center on February 17, 2010. On February 19, 2010, the Complainant provided the Center with “additional observations”. Subsequently, on March 10, 2010, the Respondent attempted to submit a further supplemental filing.
The Center appointed Alistair Payne as the sole panelist in this matter on February 25, 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.
The Complainant owns trade mark registrations for EUROMASTER in numerous jurisdictions in Europe in relation to its tyre service and car maintenance business. In particular it owns trade mark registrations 2313137 and 1455074 in the United Kindom for EUROMASTER dating back to 1993. The Complainant has a very substantial network of outlets throughout Europe and in the United Kingdom where it trades as ATS EUROMASTER. It also operates a range of websites incorporating its EUROMASTER mark including “www.euromaster.com”, “www.euromaster.co.uk”, “www.euromaster.fr”, “www.euromaster.de”, “www.euromaster.ch”, “www.euromaster.at”, “www.euromaster.nl” and “www.euromaster.pl”.
The Complainant submits that the Disputed Domain Name is identical or confusingly similar to its EUROMASTER trademarks and in particular its' registered trade marks for EUROMASTER in the United Kingdom, as noted above.
The Complainant says that the Respondent has no rights or legitimate interests in the Disputed Domain Name. According to the Complainant it has never authorised the Respondent's use of its EUROMASTER mark and has no affiliation with the Respondent. There is no evidence to suggest that the Respondent is known under the EUROMASTER name or mark or has developed any business in relation to it. Since the Complainant first became aware in July 2009 of the Respondent's registration of the Disputed Domain Name, the Respondent has not developed a website and the Disputed Domain Name resolves to a registry-managed parking page. In any event the Complainant says that its' mark is famous and the Respondent could not pretend that it was not aware of the mark and was undertaking a legitimate activity.
The Complainant states that in fact the Respondent acknowledged that it was aware of the Complainant in its exchange of correspondence. The Respondent failed in its' initial correspondence to explain why it chose EUROMASTER or what its' proposed project was. Instead, it proceeded to offer the Complainant a series of advertising and marketing services for the Complainant's own business using the Disputed Domain Name.
Less than a month after the initial cease and desist letter, the Respondent proceeded to file a trade mark application for EUROMASTER in relation to beverages and spirits which the Complainant submits is unusual in the circumstances in that the Respondent initially suggested that it was a new media start-up. The Complainant suggests that the Respondent was in fact attempting to build a legitimate interest after the fact.
The Complainant further submits that the Respondent must have been aware of its mark when it registered the Disputed Domain Name because of the renown attaching to its EUROMASTER mark, use throughout Europe and in the United Kingdom under the ATS EUROMASTER name or style, the prevalence of the Complainant's entries on undertaking a simple Internet search and the Respondent's own admission that in its' correspondence that it was aware of the Complainant. In addition the Complainant says that the Respondent's detailed knowledge of its business as set out in the Respondent's proposal to provide services in its' initial e-mail can only be indicative of the Respondent's knowledge at the time of registration.
In circumstances that the Disputed Domain Name resolves to a Registry-hosted website, the Complainant submits that a determination of use in bad faith will turn on whether it can be said in all the circumstances that the Respondent has acted in bad faith. The Complainant says that the Respondent's inactivity amounts to a passive holding and that the Disputed Domain Name was registered in terms of paragraph 4(b)(ii) of the Policy for “holding” purposes and without any evidence of bona fide activity. In addition the Respondent's use of a privacy service is indicative of bad faith.
The Respondent submits that the words “euro” and “master” are generic and that there are 15 trade marks on the United Kingdom Intellectual Property Office's register for marks containing these words, and that the Complainant is not using the EUROMASTER mark on its own (except under the ATS EUROMASTER brand). Therefore, the Respondent states that the assertion that the Disputed Domain Name is confusingly similar to “a generic mark that is not in use” is tenuous.
In view of the generic nature of the component words of the EUROMASTER mark and the fact that it is used in common by numerous traders, the Respondent disputes that the Complainant's mark is well-known or that it has better rights or interests to the Disputed Domain Name than other traders. For this reason it says that it has as much of a legitimate interest or right in the Disputed Domain Name as any of these traders.
The Respondent says that it is an entrepreneur and has registered numerous domain names made up of generic words for a potentially diverse range of businesses and that this demonstrates its legitimate interest in the Disputed Domain Name. All of these businesses take time to develop and the Respondent has been putting its energies into developing various other businesses under certain of these generic domain names and has not been able to proceed with the project planned for the Disputed Domain Name, in part because it was frozen just four months after its registration as a result of the commencement of this proceeding. Its plan which it asserts is in part commercial and in part benevolent, is to develop a directory site for European makers of natural wines and beers and to charge a listing fee to cover promotional costs. The aim is to promote natural wine and beer makers so as to distinguish them from products made with fake flavours and colourings, which has nothing to do with the Complainant's business. In no way does it wish to take advantage of the Complainant's mark or goodwill.
The Respondent says that it has not acted in bad faith and that it did not realize prior to the Complainant's correspondence that it owned trade mark rights in EUROMASTER. It submits that it never offered to sell the Disputed Domain Name to the Complainant and that it was shocked that its offer to provide services by way of compromise was interpreted by the Complainant as acting in bad faith. The Complainant's correspondence contained details of its network of outlets and the Respondent simply used this information in formulating its proposal and did not intend to do more than to meet its programmers' costs. The only benefit to the Respondent could have been publicity or promotional opportunities for its wine makers and brewers' directory site, but it would have gained no direct financial advantage.
The Respondent further submits that it was not aware of the reputation of the Complainant's EUROMASTER mark and did not associate the Disputed Domain Name with the Complainant at the time of registration. As far as the Complainant's allegation of passive holding is concerned, it says that it had no chance to develop the planned website as the Disputed Domain Name was locked for these proceedings as noted above. The Respondent says that it used the available privacy service in order to avoid spam.
The Panel has discretion under the Rules whether to accept late or supplemental filings. In this case the filing date for the Response was extended with the consent of the Complainant and even then the Respondent managed to file its Response a day late. The Complainant filed observations in relation to the Response and subsequently the Respondent attempted to make a further supplemental filing on March 10, 2010, just before the due decision date. On this occasion the Panel is prepared to accept the late Response and Complainant's observations as supplemental filings but will not consider the Respondent's filing on March 10, 2010.
The first element of the Policy requires that a complainant demonstrates appropriate trade mark rights whether by showing evidence of a trade mark registration or of developed secondary meaning through use amounting to common law or unregistered rights in its mark.
The Complainant has demonstrated that it owns relevant trade mark rights in the EUROMASTER mark and in particular has registrations in the United Kingdom dating back to 1993. Although undoubtedly the Complainant has a very substantial and well established business through various European countries and consequently its mark has also developed a degree of secondary meaning in relation to its' particular services, there is insufficient evidence before the Panel to suggest that the Complainant's EUROMASTER mark is famous. However this does not detract from the Panel's finding of trade mark rights for the purposes of the first element of the Policy.
The Disputed Domain Name is clearly identical to the Complainant's EUROMASTER trade mark. It is well accepted by panels that the gTLD suffix should not be taken into account for this purpose.
Accordingly, the Complainant succeeds in relation to the first element of the Policy.
Under the Policy the Complainant is required to make out at least a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and it is then for the Respondent to rebut this case.
The Complainant says that it has no affiliation with the Respondent and that the Respondent is not known under the EUROMASTER name or mark and the Disputed Domain Name does not resolve to a website demonstrating any bona fide activity. Further the registration was made many years after the Complainant started using its mark and due to the renown of its mark and operations and its presence in on-line search engines, the Respondent must have been aware of the Complainant's existence at the time of registration. Instead of responding to the Complainant's cease and desist letter with an explanation of the project apparently planned for the Disputed Domain Name the Respondent proceeded to offer marketing services to the Complainant using the Disputed Domain Name. Approximately one week after the second response from the Complainant rejecting the Respondent's proposals, the Respondent made its' trade mark application for EUROMASTER in relation to wines and beers but omitted to mention this in its letter in September. The Complainant says that this amounts to an after the fact attempt by the Respondent to concoct a bona fide project to support its domain name registration.
The Panel is satisfied that the Complainant has made out its prima facie case. In the circumstances of a domain name comprising a mark with common elements such as EUROMASTER, which is used concurrently by traders across a number of fields of activity, the Respondent might have successfully rebutted the case under this element had it been able to make out a credible case that the Disputed Domain Name was registered in anticipation of a genuine business activity in a completely different field of activity. However in the Panel's view the Respondent has not succeeded in this case.
If the Respondent had the genuine intention from the outset of undertaking its' stated project concerning a directory for natural wine and beer products then it would have explained the nature of its project from the outset in its initial reply to the Complainant's cease and desist letter. It did not do so and instead chose brazenly to offer the Complainant a directory service customized for the Complainant's business using the Disputed Domain Name at a cost of 34,000 Sterling. This proposal is completely at odds with the Respondent's insistence that it was not aware of the Complainant's use of its EUROMASTER mark and with any suggestion that it registered the Disputed Domain Name in good faith and only for the purposes of its wine and beer directory project.
In the absence of any other evidence of the Respondent's preparations to use the Disputed Domain Name for its wine and beer marketing project, the Panel infers that the Respondent had not made any preparations for this project prior to receiving correspondence from the Complainant's representatives in terms of Paragraph 4(c)(i) of the Policy and that this project was most probably contrived after the fact. Nor is using the Disputed Domain Name to make a proposal to sell services at a substantial cost to the Complainant consistent with acting in a bona fide manner or having a legitimate interest in the Disputed Domain Name. As described in Section C below this amounts in the Panel's view to bad faith. There being no other credible explanation put forward by the Respondent to rebut the Complainant's case under this element, the Panel finds that the Complaint succeeds in relation to the second element of the Policy.
Although as noted in section A above the Panel does not consider that there is sufficient evidence to consider that the Complainant's EUROMASTER mark is famous, the Complainant does have a very substantial business operating through a large network of outlets through 12 jurisdictions including the United Kingdom and with a notable and obvious on-line presence through various domain names incorporating the EUROMASTER mark. Even though the Complainant operates under the ATS EUROMASTER name or style in the United Kingdom, it is on this basis unbelievable that a potential registrant of the Disputed Domain Name in 2009, such as the Respondent, would not have become aware of the Complainant's interest in the EUROMASTER mark when choosing its domain name.
In all the circumstances, the Panel finds that even if the Respondent was not aware of the Complainant's registered trade mark rights, it must have been aware at the time of registration of its very significant business activities and web presence under the EUROMASTER mark. With this in mind and taking into account the Respondent's conduct in proposing its directory services to the Complainant and the Panel's findings as set out under Section B above, it seems likely on the balance of probabilities that the Respondent purposefully registered the Disputed Domain Name to target the Complainant and in bad faith. Previous panels have made similar findings that a Respondent knew or should have known of the Complainant's rights in the particular factual circumstances of the case, for example Maori Television Service v. Damien Sampat, WIPO Case No. D2005-0524.
The Panel does not accept the Complainant's submission that the Respondent has made a passive holding of the Disputed Domain Name that amounts to preventing the Complainant from registering its mark in a corresponding domain name in terms of paragraph 4(b)(ii) of the Policy. In particular, the Respondent only registered the Disputed Domain Name around four months before it was locked for the purposes of this proceeding and there is no evidence before the Panel of the Respondent engaging in a course of such conduct.
However, the fact remains that the Respondent used the Disputed Domain Name as described under Section B above to promote a likely pre-meditated web based marketing directory scheme for the Complainant's business which was offered to the Complainant at considerable expense. In the Panel's view this amounts to use in bad faith.
For these reasons the Panel finds that the Respondent both registered and used the Disputed Domain Name in bad faith and the Complaint succeeds under the third element of the Policy.
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 <euromaster.tel> be transferred to the Complainant.
Dated: March 10, 2010