WIPO Arbitration and Mediaton Center
ADMINISTRATIVE PANEL DECISION
Eurobank Ergasias S.A. v. Super Privacy Service co Dynadot / Steven Gary
Case No. D2016-0532
1. The Parties
The Complainant is Eurobank Ergasias S.A. of Athens, Greece, represented by Nabarro LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Super Privacy Service c/o Dynadot of San Mateo, California, United States of America / Steven Gary of San Mateo, California, United States of America, self-represented
2. The Domain Name and Registrar
The disputed domain name <eurobankgroup.com> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2016. On March 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 20, 2016, 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 March 23, 2016 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 March 23, 2016. A communication from the Respondent was received by the Center on March 25, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 21, 2016. The Respondent did not file a formal response with the Center.
The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on May 2, 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.
4. Factual Background
The Complainant, Eurobank Ergasias S.A., is one of the largest banking and financial institutions in Greece which provides retail banking and business banking services in several countries, including Greece.
The Complainant owns rights in various trademarks which include the term “Eurobank” in many jurisdictions, including a European Union trademark registration No. 9305822 for the word mark EUROBANK in classes 9, 16, 35, 36, 38, 41 and 42 filed on August 10, 2010 and registered on February 18, 2011. Ownership of this registration by the Complainant was acknowledged by the Respondent in its above-mentioned communication to the Center of March 25, 2016.
The Complainant owns other trademarks including the term “Eurobank” registered well before the Respondent registered the disputed domain name <eurobankgroup.com> on January 25, 2016.
Furthermore, the Complainant owns many domain name registrations containing the EUROBANK trademark such as <eurobank.gr>, <eurobank.co.uk> and others.
5. Parties’ Contentions
The Complainant contends the following:
That it was founded in 1990 and began to use the Eurobank name in 1999. By the time the disputed domain was registered on January 25, 2016 the Complainant was Greece’s third largest bank and that together with its group of companies it has made a longstanding and widespread use of the word mark EUROBANK alone in Greece since 1992 and elsewhere since 1999 in combination with other elements.
That it enjoys a high degree of consumer recognition.
That the disputed domain name is confusingly similar with the trademark EUROBANK in which the Complainant has rights.
That the Respondent has no rights or legitimate interests in respect of the disputed domain name.
That the Respondent has not used the disputed domain name or a name corresponding to the disputed domain name in connection with bona fide offering of goods or services
That the Respondent has not been commonly known by the disputed domain name.
That the Respondent registered the disputed domain name primarily for the purpose of selling or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant.
That the Respondent is not making a noncommercial or fair use of the disputed domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
That the disputed domain name was registered and is being used in bad faith.
Finally, the Complainant requests the Panel to order the transfer of the disputed domain name to the Complainant.
The Respondent contends the following in its March 25, 2016 email:
The Complainant is the owner of the EUROBANK trademark only in the European Union while the disputed domain name is to lodge in the United States and the Respondent is American.
Another competitor to the Complainant has registered international trademarks for the term “Eurobank”.
The disputed domain name was the object of a previous proceeding, Eurobank Ergasias S.A. v. Domain Manager / Domain Manager, WIPO Case No. D2014-1728, and the Complainant let the disputed domain name expire showing the fact that it does not use it and has no interest to be the owner.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel considers that under the Policy the disputed domain name <eurobankgroup.com> and the trademark EUROBANK are confusingly similar.
Following what has become the consensus view among UDRP panels (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 1.2) the Panel shall disregard the generic Top-Level Domain (gTLD) suffix “.com” from the confusing similarity test.
The trademark EUROBANK is clearly the principal identifying element in the disputed domain name <eurobankgroup.com>. The addition of the descriptive word “group” not only does not suffice to avoid confusion to Internet consumers, but it rather helps to emphasize confusion by leading them to think that the disputed domain name refers to a business of one of the Complainant’s group of companies.
In addition, following paragraph 1.1 of the WIPO Overview 2.0 the location of the trademark is irrelevant for the purpose of the analysis of the first element of the UDRP.
Therefore, the Complainant has succeeded on this first element of the Policy.
B. Rights or Legitimate Interests
The second element that the Complainant must prove pursuant to paragraph 4(a)(ii) of the Policy is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy in paragraph 4(a) 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 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 production shifts to the respondent. The respondent must then come forth with evidence showing its rights or legitimate interests in the domain name in order to refute the prima facie case. If the Respondent fails to do so, the Complainant is deemed to have satisfied the second element of the Policy.
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 submit any evidence showing its rights or legitimate interests in the disputed domain name.
None of the circumstances provided in paragraph 4(c) of the Policy, nor any other circumstances to demonstrate legitimate interest in the disputed domain name have been provided by the Respondent.
Therefore, the Panel considers that the Respondent has no rights or legitimate interest in the disputed domain name and that the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
In accordance with 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.
In the light of the information and evidence produced by the Complainant, when the Respondent registered the disputed domain name <eurobankgroup.com> on January 25, 2016 it knew or should have known the existence of the Complainant’s EUROBANK name and trademark which evidences bad faith registration.
In addition, according to the evidence provided by the Complainant, the disputed domain name leads to a website displaying a message that the disputed domain name is for sale, offering the possibility to “buy now” for “USD 8,800” or “make your offer […] offer (minimum: USD 500.00)”.
It seems to this Panel that the registration and use of the disputed domain name by the Respondent was motivated by the intention to capitalize on the reputation of the Complainant’s trade name and trademark EUROBANK and sell the disputed domain name for a profit.
The Complainant has produced evidence to show that the Respondent has offered the disputed domain name for sale for a price in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name, which the Panel agrees does not constitute a bona fide offering of goods or services, but rather an attempt by the Respondent to profit from the fame the trademark EUROBANK in which the Complainant has rights.
There is nothing in the information provided by the Respondent that may lead this Panel to a different conclusion, especially since the Respondent is referring to the previous proceeding under the Policy involving the same disputed domain name and the same Complainant, that the Respondent has carried out a search for EUROBANK trademarks and the Respondent has acknowledged the Complainant’s rights in the EUROBANK trademark.
For such reasons and in the absence of any plausible response from the Respondent to the Complainant’s allegations, 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.
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 <eurobankgroup.com> be transferred to the Complainant.
Miguel B. O’Farrell
Date: May 16, 2016