WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Champion Products Europe Ltd. v. eNominee Privacy Protection Service
Case No. D2016-0504
1. The Parties
The Complainant is Champion Products Europe Ltd. of Dublin, Ireland, represented by Studio Crea Avvocati Associati, Italy.
The Respondent is eNominee Privacy Protection Service of Roadtown 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 <championeurope.com> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2016. On March 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 15, 2016, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 12, 2016.
The Center appointed Sir Ian Barker as the sole panelist in this matter on April 25, 2016. 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 sent a request to the Registrar to disclose the identity of the Respondent since it seemed clear from the name of the registered Respondent that it was a Privacy Protection provider.
Despite the name of the Registrar (“eNom”) and the name of the Respondent (“eNominee”) the Registrar declined to provide any relevant information on the grounds that it and the Respondent were different entities.
The Complainant sent four letters to the Respondent seeking information on the identity of the true Respondent but received no reply. It sent the same letters to the Post Office box in the British Virgin Islands which was the address of the Respondent on a WhoIs search. Again there was no reply.
4. Factual Background
The Complainant is an Irish-registered corporation which since 1900 has been producing and marketing fashion sportswear under the CHAMPION brand. The Complainant sells its products worldwide.
Much of its sales are conducted on the Internet. The quality of its products has been recognized internationally.
The Complainant has registered a large number of trademarks including the word “Champion” in many jurisdictions including Italy, Germany, United Kingdom of Great Britain and Northern Ireland (“UK”) and the European Union. Some of these trademarks were first registered in 1956 (i.e., Germany). The UK trademark was registered in 1982 and the European Union one in 1996.
The Complainant owns and uses several domain names registered since 1997 including <champion-europe.com> and <champion-eu.com>.
The disputed domain name was registered on June 18, 1999 and appears to be registered to a Privacy service.
During 2013, the Complainant made some offers to buy the disputed domain name but received no reply.
The website accessed by the disputed domain name hosts a “parking page” providing advertising to the website “www.enominee.com”.
The Complainant tried to contact the Respondent on several occasions between August 2013 and August 31, 2015 advising the Respondent of alleged infringements of its brand but received no reply.
5. Parties’ Contentions
The disputed domain name <championeurope.com> is confusingly similar to the Complainant’s trademarks. The disputed domain name includes the whole of the trademark plus the generic term “Europe” which only enhances the level of confusion.
The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant gave it none. None of the situations in paragraph 4(c) of the Policy apply to the Respondent.
The disputed domain name was registered and is being used in bad faith. This is demonstrated by a) the use by the Respondent of a privacy shield, b) the refusal of the Respondent to reply to the Complainant’s various communications concerning the identity of the true Respondent, c) the passive holding by the Respondent of the disputed domain name, d) the obvious confusion to Internet users caused by the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Respondent’s Identity
The difficulties caused by registrants hiding behind the shield of a privacy service provider have been discussed in several decisions under the Policy. This panelist acknowledges and adopts the dicta of the panelist in Association Robert Mazars v. Private Whois Service, c/o mazarsrevenge.com, WIPO Case No. D2009-0183. There, as here, the registrar did not disclose the identity of a registrant who used a privacy service despite the request from the Center. The following quotation from that case is appropriate in the present case:
“Increased use of privacy services has required a number of panels to consider their ramifications in Policy proceedings. A threshold issue is to determine whether the Respondent is ‘the holder of the domain-name registration against which a Complaint is initiated’. See Rules, paragraph 1 (definition of Respondent). A few panels have interpreted this definition literally and found the privacy service to be the respondent. Most panels, however, have considered the actual registrant, the party that registered through the privacy service, to be the respondent, at least in cases in which the identity of the registrant was determined by some means. Here the registrant’s identity remains unknown, but the Panel still concludes, on essentially the same rationale as the cases cited or referred to in notes 2 and 3, that this actual registrant, even though a cipher, should be considered the respondent in this proceeding. To do otherwise would thwart the purpose if not the literal language of the Policy and Rules, common sense, and the Registrar’s express disclaimer of any ownership interest in the disputed domain name. All these factors point to the owner of the disputed domain name, not its agent the privacy service, as the party with which Complainant has a grievance.”
B. Policy Requirements
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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.
C. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant’s numerous registered trademarks. The disputed domain name incorporates the trademarked word “Champion” then adds the generic word “Europe” which does nothing to diminish the similarity. Rather the word “Europe” increases the confusing similarity for the general public because the Complainant uses the domain name <champion-eu.com> in its online sales program.
Accordingly, this Panel concludes that paragraph 4(a)(i) of the Policy is satisfied.
D. Rights or Legitimate Interests
The Complainant gave the Respondent no authority of any sort to reflect its trademark in the disputed domain name. This fact is enough to satisfy paragraph 4(a)(ii) of the Policy in the absence of any Response from the Respondent.
The Respondent could have claimed that one or other of the situations envisaged by paragraph 4(c) of the Policy applied to its registration of the disputed domain name. Had it invoked paragraph 4(c) and satisfied the Panel that one of its three provisions applied in this case, then the Respondent would have had a defense. However, the Respondent chose not to file a Response.
Accordingly, this Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
E. Registered and Used in Bad Faith
In this Panel’s opinion the disputed domain name is being used in bad faith. It hosts a passive site. It is confusingly similar to the Complainant’s trademark. Internet users are easily led into thinking that it has some connection with the Complainant.
However, bad faith registration of the disputed domain name in 1999 has to be proved separately from current bad faith use. The Complainant had traded for many years before 1999 using the trademark. It is a long-established international producer and marketer of upmarket sportswear. Its reputation in 1999 would have been established so much so that its trademark attracted the registrant of the disputed domain name who wished to hide identity behind a privacy service.
Use of a privacy service, standing alone, is not evidence of bad faith registration and use of a domain name. However, the failure of the Registrar and the Respondent to respond to the Complainant’s legitimate enquiries and warning letters points to bad faith registration and use (see Groupon, Inc v Domain Admin / Privacy Protection Service INC d/b/a Privacy.Protect.org / Tapash Kar, WIPO Case No. D2015-1818; and Association Robert Mazars v. Private Whois Service, c/o mazarsrevenge.com, WIPO Case No. D2009-0183..
As was pointed out in Air Austral v WWW Enterprise, Inc, WIPO Case No. D2004-0765 the following are some indicia of bad faith:
a) strength of reputation of the trademark;
b) no evidence from the Respondent of actual or contemplated good faith use;
c) steps by the Respondent to conceal identity;
d) lack of any plausible actual or contemplated active use of the disputed domain name by the Complainant.
All the above are present in this case.
Accordingly, this Panel concludes that paragraph 4(a)(iii) of the Policy is satisfied.
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, <championeurope.com>, be transferred to the Complainant.
Sir Ian Barker
Date: May 4, 2016