World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Eurodrive Services and Distribution N.V v. Transure Enterprise Ltd, Host Master and Above.com Domain Privacy

Case No. D2012-1453

1. The Parties

The Complainant is Eurodrive Services and Distribution N.V of Drunen, the Netherlands, represented by Dreyfus & associés, France.

The Respondent is Transure Enterprise Ltd, Host Master of Tortola, the British Virgin Islands, Overseas Territory of the United Kingdom and Northern Ireland, and Above.com Domain Privacy of Beaumaris, Victoria, Australia.

2. The Domain Name and Registrar

The disputed domain name <euromaster-neumaticos.com> is registered with Above.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2012. On July 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 23, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 23, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 25, 2012.

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 the Respondent of the Complaint, and the proceedings commenced on July 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 16, 2012.

The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on August 24, 2012. 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 owns trademark registrations for EUROMASTER. Particularly, it owns British registration no. 2313137 dated October 14, 2002; French registration no. 3413193 dated February 23, 2006; German registration no. 30612135 dated February 23, 2006; Spanish registration no. 2696746 dated October 1, 2006; and Italian registration no. 00011234068 dated February 27, 2006.

Complainant’s Activities

The Complainant is an integrated tyre service and car maintenance network that operates in numerous cities of Europe.

The disputed domain name was registered on December 30, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant contends the following:

In relation to element (i) of paragraph 4(a) of the Policy, the Complainant contends that the disputed domain name <euromaster-neumaticos.com> is identical or at least confusingly similar to a trademark or service mark of its property.

In support of this statement, the Complainant contends that it owns numerous trademarks registered for EUROMASTER, which would be well-known in relation to tyre services and car maintenance.

Particularly, it contends that it owns British registration no. 2313137 dated October 14, 2002; French registration no. 3413193 dated February 23, 2006; German registration no. 30612135 dated February 23, 2006; Spanish registration no. 2696746 dated October 1, 2006; and Italian registration no. 00011234068 dated February 27, 2006.

Moreover, the Complainant contends that the disputed domain name incorporates the Complainant’s trademark in its entirety what would be sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered trademark.

The Complainant also asserts that the addition of the word “neumaticos” is not sufficient to avoid a risk of confusion but would reinforce the likelihood of confusion because it refers to the Complainant’s main business.

On the other hand, the Complainant also contends that the Respondent does not have any rights or legitimate interests in the disputed domain name and that the Respondent is not affiliated, nor has been authorized or licensed to use and register the Complainant’s trademark EUROMASTER, nor to seek registration of any domain name incorporating it.

Additionally, the Complainant also contends that the Respondent is not commonly known by the name “Euromaster” and that the disputed domain name resolves to a parking page containing sponsored links related to competing services of those of the Complainant.

Furthermore, the Complainant affirms that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services but rather to generate “click-through” revenues via advertised pay-per-click links.

In that connection, the Complainant contends that the Respondent was aware, or must have been aware of the Complainant’s business and trademark EUROMASTER before registering the disputed domain name.

Moreover, the Complainant also affirms that the incorporation of the word “neumaticos” in the disputed domain name also proves that the Respondent was aware of the existence of the Complainant‘s trademark and its main business and activities.

In connection with the use of the disputed domain name in bad faith, the Complainant contends that the Respondent uses the disputed domain name to direct Internet users to a website which displays sponsored links related to some of the Complainant’s competitors, what cannot be considered a good faith use.

For all the above, the Complainant requests that the disputed domain name be transferred to it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

For the Complainant to succeed in this proceeding, under paragraph 4(a) of the Policy, it must prove that:

(i) the disputed 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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall 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.

A. Identical or Confusingly Similar

The Complainant owns trademark registrations for EUROMASTER, as noted under Section 4, “Factual Background” above.

The disputed domain name incorporates the trademark EUROMASTER in its entirety. The Panel finds that the mere addition to the disputed domain name of the term “neumaticos”, the English translation of which is “tyres”, is not sufficient to avoid confusing similarity.

Moreover, the Panel finds that under the circumstances of the case, the addition of “neumaticos” would only increase such confusing similarity.

In view of the foregoing, the Panel finds that the disputed domain name <euromaster-neumaticos.com> is confusingly similar to the EUROMASTER trademark in which the Complainant has rights, and therefore, the Complainant has succeeded on this first element under the Policy.

B. Rights or Legitimate Interests

According to paragraph 4(a)(ii) of the Policy, the second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy in paragraph 4(c) sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name.

Although the Policy states that the complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in respect of a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a prima facie showing of a respondent’s lack of rights or legitimate interests in a domain name, the burden of submitting evidence therefore shifts to the respondent. The respondent must then by concrete evidence demonstrate its rights or legitimate interests in the domain name in order to refute the prima facie case.

The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and so the burden of production has effectively been shifted to the Respondent, who did not reply to the Complainant’s contentions and, therefore, has not made such showing.

In that connection, the Complainant has submitted relevant evidence showing that the Respondent has not made a bona fide offering of goods or services. Some of the pay-per-click links contained in the website to which the disputed domain names resolves offer competing goods to those offered by the Complainant.

In the terms of the Policy, such use in the present circumstances does not appear to be a noncommercial or fair use of the disputed domain name and, therefore, the Panel finds that the Respondent is trying to misleadingly divert consumers. Moreover, the Panel finds that the Respondent is attracting Internet users to its website for commercial gain. Such use cannot be considered a bona fide use, or fair or noncommercial use.

Additionally, there is no evidence that the Respondent is commonly known as or identified by “euromaster-neumaticos”. Furthermore, there is no evidence showing that the Respondent operates a business or any other organization under the disputed domain name.

For these reasons, and in the absence of a plausible explanation from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the domain name has been registered and is being used in bad faith.

The Policy in paragraph 4(b) sets out various circumstances, which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.

The Complainant has identified itself as a leading integrated tyre service and car maintenance network in Europe.

Moreover, the Complainant has filed relevant evidence to the Panel’s satisfaction showing that it owns trademark registrations for EUROMASTER, which has been registered before the disputed domain name was registered on December 30, 2011. The relevant evidence includes the following trademarks British registration no. 2313137 dated October 14, 2002; French registration no. 3413193 dated February 23, 2006; German registration no. 30612135 dated February 23, 2006; Spanish registration no. 2696746 dated October 1, 2006; and Italian registration no. 00011234068 dated February 27, 2006.

In view of the foregoing, and in the absence of a rebuttal from the Respondent, the Panel finds that the Respondent was aware or must have been aware of the trademark EUROMASTER before registering the disputed domain name, which evidences bad faith registration.

Moreover, as stated by the Complainant and on the basis of the printouts of the websites to which the disputed domain name resolves, and in the absence of a rebuttal by the Respondent, the Panel finds that by using the disputed domain names the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online locations, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.

For these reasons, the Panel finds that the Respondent both registered and is using the disputed domain name in bad faith and that the Complainant has therefore made out the third element of its case.

7. Decision

For 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-neumaticos.com> be transferred to the Complainant

Miguel B. O'Farrell
Sole Panelist
Dated: September 7, 2012

 

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