WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
EGL AG v. Maurice Nathan
Case No. D2010-1012
1. The Parties
The Complainant is EGL AG of Dietikon, Switzerland, represented by Piana.eu, Italy.
The Respondent is Maurice Nathan of Paris, France.
2. The Domain Name and Registrar
The disputed domain name <eglitalia.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2010. On June 21, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On June 22, 2010, GoDaddy.com, Inc. 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 July 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 25, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on July 26, 2010.
The Center appointed The Hon Neil Anthony Brown QC as the sole panelist in this matter on August 6, 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 Complainant is a Swiss energy company that also operates in Italy under the name of its fully-owned subsidiary EGL Italia Spa. It is the registered owner of numerous trademarks for EGL including the international trademarks no. 1033268 and no. 971224, (collectively referred to as the “EGL trademarks”).
The Complainant has registered and has used the domain names <egl-italia.it> and <egl-italia.com> since 2000 in the course of its business.
The Respondent registered the disputed domain name on April 15, 2010.
5. Parties’ Contentions
The Complainant alleges that the domain name <eglitalia.com> should no longer be registered with the Respondent, but that it should be transferred to the Complainant.
It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is confusingly similar to the Complainant’s registered EGL trademarks, the Respondent has no rights or legitimate interests in the domain name, and the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.
In support of its case on the first of these three elements, the Complainant relies on the registered EGL trademarks to which reference has already been made. It then says that the domain name <eglitalia.com> is confusingly similar to the EGL trademarks as the spelling of that word in the domain name is the same as the spelling of the same word in the trademarks the addition of the word “italia”, which is a clear reference to Italy, a country in which the Complainant carries on business, thus suggesting that the domain name relates to the Complainant and its business in Italy.
The Complainant then contends, to establish the second element, that the only apparent use to which the Respondent has put the domain name is to provide a deceptive website that falsely pretends to belonging to the Complainant, which it does not. The deceptive nature of the website is shown by the fact that it is very similar to the website of the Complainant, except that it includes a different telephone number that does not belong to the Complainant or any of its affiliates. There is no demonstrable preparation to use the domain name for a bona fide offering of goods or services. Moreover, the Respondent has provided a false name and a false address, showing that it is not a legitimate business.
Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith, because it is used as a tool to impersonate the website of the Complainant through the use of the same content, trademarks, graphics and even HTML code used in the Complainant’s own website. Moreover, the disputed domain name is not the only one registered in the name of the Respondent, as there are several others so registered, most of which are in the energy sector, as is the Complainant and they all resolve to websites that are similarly deceptive. This shows a clear pattern of abuse of the domain name system by the Respondent, thus showing further that the Respondent registers and uses domain names in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In that regard, the Panel also notes that the fact that the Respondent has not made a submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the Complainant to make out its case and past UDRP panels have said many times that despite the absence of a submission from a respondent, a complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.
However, as the Panel will illustrate later, it is possible to draw inferences from the evidence that has been submitted and in some cases from silence. Indeed, paragraph 14 of the Rules incorporates both of those notions into the procedures of the Panel.
The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.
For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
It is to be noted that paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn.
A. Identical or Confusingly Similar
The Panel accepts the evidence submitted by the Complainant that it owns the registered EGL trademarks to which reference has been made, that they are all current and that it therefore has rights in those marks.
The Panel also finds that the disputed domain name is confusingly similar to the EGL trademarks. All that has been done to create the disputed domain name is to add to the EGL mark the word “italia” which is the Italian spelling of the word Italy, one of the countries in which the Complainant carries on business. This suggests to the objective bystander that the disputed domain name relates to the Complainant and its business carried on in Italy. Numerous UDRP decisions have held that adding the name of a geographic entity to a trademark is insufficient to give any distinctiveness to the domain name in dispute; for instance, it was said in Toyota Jidosha Kabushiki Kaisha a/k/a Toyota Motor Corporation v. Atma Estate, WIPO Case No. D2006-1231 that:
“It is evident that under the Policy the trademark LEXUS is confusingly similar to the domain name <lexus-ukraine.com>. The mere addition of the geographical term “Ukraine” and a hyphen to the LEXUS mark does not grant distinctiveness to the domain name in the present case. See Nike, Inc. v. Jaeik Jung, WIPO Case No. D2000-1471; Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd) v. Jongchan Kim, WIPO Case No. D2003-0400; Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd) v. Baroli, S.L., WIPO Case No. D2005-0365. The consumer is likely to think that the contested domain name constitutes a variation of the trademark LEXUS owned by Complainant, which does business and has a base in Ukraine.”
It has also long been held that suffixes such as the gTLD suffix “.com” cannot negate confusing similarity where it otherwise exists, as it does in the present case.
For these reasons, the Panel finds that the disputed domain name is confusingly similar to the EGL trademarks and that the Complainant has made out the first of the three elements that it must establish.
B. Rights or Legitimate Interests
Under paragraph 4(a) (ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a 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.
Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or legitimate interest in the domain name, the Complainant will have failed to discharge its onus and the Complaint will fail.
It is also well established that, as it is put in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions:
“…a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a) (ii) of the UDRP”.
The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name.
The prima facie case is based on the facts amply demonstrated in the Complainant’s case that:
(i) the EGL trademarks are registered internationally;
(ii) they indicate the name of a well-established company in the energy field that also operates in Italy;
(iii) the Respondent chose this name and trademark for its domain name and added the word “italia”, suggesting that the domain name relates to the Complainant’s business conducted in Italy, although this was done without the consent or permission of the Complainant;
(vi) the Respondent has prima facie been using the domain name for an illegitimate purpose, namely to give the impression that the business and the goods and services promoted on the website are those of the Complainant, which they are not.
As to whether the Respondent has rebutted the prima facie case, it was given notice that it had until July 25, 2010 to submit its Response, but it failed to do so.
The Panel therefore finds that the prima facie case has not been rebutted and that consequently the Complainant has made out the second of the three elements that it must establish.
C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or 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, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website 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 website or location or of a product or service on the site or location.
The Complainant relies on paragraphs 4(b)(iv) of the Policy and also on the general notion of bad faith, which it is clearly entitled to do, for there have been many UDRP decisions that have held that bad faith is not limited to the factors set out in paragraph 4(b) of the Policy.
The Complainant contends with respect to the first ground that the domain name was registered and is being used in bad faith, because it is used as a tool to impersonate the website of the Complainant through the use of the same content, trademarks, graphics and HTML code in its website as those used in the Complainant’s own website. In support of this contention the Complainant has annexed a copy of the home page of the Respondent’s website and in the opinion of the Panel, having compared the two websites, there is enough of a similarity between them to conclude that they are so similar that they create the likelihood of confusion and that the Respondent’s site was intended to produce that result. The Panel therefore finds that the facts come squarely within the meaning of paragraphs 4(b)(iv) of the Policy. Moreover, the Panel draws the inference that when the disputed domain name was registered, it was registered with the intention of creating the deception that has resulted and that it was therefore registered in bad faith. The Respondent has also had the opportunity to dispel the inference that is naturally drawn from a comparison of the two websites, but has declined to do so. The fact that the evidence is that the Respondent has also registered other domain names in the energy field reinforces these conclusions. These conclusions also show that, using the general notion of bad faith, the Complainant has shown that the Respondent registered and has used the domain name in bad faith.
Accordingly, the Complainant has made out the third of the three elements that it must establish.
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 <eglitalia.com> be transferred to the Complainant.
The Hon Neil Anthony Brown QC
Dated: August 17, 2010