WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Europcar International SASU v. PJ H
Case No. D2011-0264
1. The Parties
Complainant is Europcar International SASU, of Guyancourt, France, represented by Field Fisher Waterhouse, of United Kingdom of Great Britain and Northern Ireland.
Respondent is PJ H, of Beirut, Lebanon.
2. The Domain Names and Registrar
The disputed domain names <europcarbahrain.com>, <europcardubai.com> and <europcarqatar.com> (the “Disputed Domain Names”) are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2011. On February 8, 2011, the Center transmitted by email to GoDaddy.com a request for registrar verification in connection with the Disputed Domain Names. On February 9, 2011, GoDaddy.com transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 10, 2011 providing the registrant and contact information disclosed by GoDaddy.com. Complainant filed an amended Complaint on February 11, 2011. The Center received two email communications from Respondent on February 9 and 11, 2011 regarding this matter.
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 Respondent of the Complaint, and the proceedings commenced on February 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 8, 2011. Respondent did not submit any formal response. Accordingly, the Center notified Respondent’s default on March 9, 2011.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on March 15, 2011. 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 states that it was founded in 1949 and, through itself “and its various subsidiaries, group companies and franchisees […] is the European leader and among the top three global players in the car rental market”. Complainant further states that it operates in approximately 150 countries, including Lebanon (since January 1977).
Complainant states that it generated revenue in 2006 in excess of EUR 1,469 million, including approximately EUR 366,100 in Lebanon.
Complainant states that it “holds many hundreds of trade mark registrations comprising of or incorporating the mark EUROPCAR throughout the world, in territories ranging from Afghanistan to Zimbabwe.” In support thereof, Complainant provided a schedule of relevant trademark registrations. These are collectively referred to hereafter as the “EUROPCAR Trademark.”
Complainant states that it operates a website using the domain name <europcar.com>, which was registered in March 24, 1997, as well as websites for specific regions, including one using the domain name <europcar-middleeast.com>.
Complainant provided copies of printouts from the Internet Archive’s “Wayback machine” showing that the Disputed Domain Names were not being used in connection with any active websites, and Complainant states that it “is not aware of any current or previous use of the domain names at issue”. Complainant further provided copies of correspondence with Respondent in which Respondent stated: “[S]hould you wish the buy these domain names you can have them for USD 15000.”
5. Parties’ Contentions
Complainant contends, in relevant part, as follows:
Each of the Disputed Domain Names is identical or confusingly similar to the EUROPCAR Trademark because “[p]anels considering similar cases where registrants have simply added a country name to a registered trade mark have consistently found such domain names to be confusingly similar.”
The Respondent has no rights or legitimate interests in respect of any of the Disputed Domain Names because, inter alia, “[g]iven the extent of the Complainant’s rights in the EUROPCAR Trademark, it would be impossible for the Respondent to acquire any rights or legitimate interests in the domain names in questions.”
Each of the Disputed Domain Names was registered and is being used in bad faith because Respondent offered to sell the Disputed Domain Names for USD 15,000, “considerably in excess of the Respondent’s out-of-pocket costs directly related to the domain names”; and “the domain names were registered in order to prevent the Complainant from reflecting its mark in a corresponding domain name.”
Respondent did not reply to Complainant’s contentions.
However, Respondent submitted two informal email communications on February 9 and 11, 2011, confirming that he was the registrant of the Disputed Domain Names and that he “legally register these domain names and never used these domain names in competition”.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names have been registered and are being used in bad faith. Policy, paragraph 4(a).
A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it appears that Complainant has trademark rights in the mark EUROPCAR, and Respondent does not dispute the validity of these trademarks.
As to whether the Disputed Domain Names are identical or confusingly similar to this trademark, the relevant comparison to be made is with the second-level portion of the domain names only (i.e., “europcarbahrain”, “europcardubai” and “europcarqatar.com”), as it is well-established that the top-level domain name (i.e., “.com”) may be disregarded for this purpose.
Numerous previous decisions under the Policy have found that use of a complainant’s trademark in its entirety plus a geographic term in a domain name (especially where the complainant conducts business in the geographic region) creates a domain name that is confusingly similar to the relevant trademark. See, e.g., Six Continents Hotels, Inc., v. EnterSports Inc., WIPO Case No. D2008-1951 (“the combination of its trademark with the name of South Carolina, where Complainant owns or operates approximately 49 ‘Holiday Inn’ and ‘Holiday Inn Express’ hotels, would serve to add to such confusion rather than distinguish the mark and the domain name”).
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of any of the Disputed Domain Names because, inter alia, “[g]iven the extent of the Complainant’s rights in” the EUROPCAR Trademark”, it would be impossible for Respondent to acquire any rights or legitimate interests in the domain names in questions.”
Under the Policy, “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.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, paragraph 2.1.
Accordingly, as a result of Complainant’s allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
In this case, Complainant appears to argue that bad faith exists pursuant to paragraphs 4(b)(ii) and 4(b)(iii). However, Complainant’s arguments are cursory and do not address (with respect to 4(b)(i) and 4(b)(iii)) whether Respondent is a “competitor” of Complainant or (with respect to 4(b)(i)) the value of “the registrant’s documented out-of-pocket costs”.
Nevertheless, given the strength of the EUROPCAR Trademark – due to its long history, numerous registrations and widespread usage – the Panel believes that the Disputed Domain Names are “so obviously connected with” Complainant that Respondent’s actions suggest “opportunistic bad faith” in violation of the Policy. Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492. Further, the Panel finds that “it is inconceivable that Respondent chose the contested domain name[s] without knowledge of Complainant’s activities and the name and trademark under which Complainant is doing business.” Pancil LLC v. Domain Deluxe, WIPO Case No. D2003-1035. Accordingly, given that bad faith has repeatedly been found even in the presence of, as here, “passive holding” of a domain name (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), the Panel is satisfied that Complainant has proven 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 Names <europcarbahrain.com>, <europcardubai.com> and <europcarqatar.com> be transferred to Complainant.
Douglas M. Isenberg
Dated: March 29, 2011