WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
France Manche (SA), Groupe EUROTUNNEL (SE) v. Tulip Trading Company
Case No. D2017-0721
1. The Parties
The Complainants are France Manche (SA) ("Complainant France Manche") and Groupe EUROTUNNEL (SE) ("Complainant EUROTUNNEL") of Paris, France (collectively, the "Complainant"), represented by Jurisexpert, France.
The Respondent is Tulip Trading Company of Charlestown, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <myeurotunnel.com> (the "Disputed Domain Name") is registered with Key-Systems GmbH d/b/a domaindiscount24 (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 10, 2017. On April 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 11, 2017, 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 April 13, 2017 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 April 18, 2017.
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 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 11, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 15, 2017.
The Center appointed Lynda M. Braun as the sole panelist in this matter on May 24, 2017. 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 France Manche (SA) finances, constructs, operates, and maintains the fixed link under the Channel between the United Kingdom of Great Britain and Northern Ireland (the "United Kingdom") and France. Founded in 1985, the Complainant France Manche operates as a subsidiary of the Complainant Groupe EUROTUNNEL. Since opening in May 1994, more than 350 million passengers, 320 million tons of freight and 60 million vehicles have passed through the tunnel.
The Complainant has owned a trademark for EUROTUNNEL in France since 1986. Since then, the Complainant has obtained registrations for EUROTUNNEL trademarks in many classes of goods and services in many countries, including, but not limited to, France, the United Kingdom, the European Union, Switzerland, China, Serbia, Montenegro and others (the "EUROTUNNEL Mark"). The Complainant's EUROTUNNEL Mark is distinctive and well known throughout the world.
In addition, the Complainant also owns more than 148 domain names incorporating the EUROTUNNEL Mark, including <eurotunnel.com>, <eurotunnel.fr>, and <eurotunnel.co.uk> and many others.
The Respondent registered the Disputed Domain Name on April 23, 2015. The Disputed Domain Name currently resolves to a parking page website that displays links to third-party advertisements for various transportation services, including those of the Complainant and its competitors.
The Complainant's counsel requested, and then received, an order dated July 6, 2016 from the District Court of Paris, ordering the Registrar to identify the owner of the Disputed Domain Name. Upon receipt of the order, the Registrar responded by stating that it could not execute the order until it received a certification of enforceability from Germany. The Registrar further recommended that the Complainant commence the appropriate domain name dispute proceeding to resolve the issue.
5. Parties' Contentions
In summary, the following are the Complainant's contentions:
- The Disputed Domain Name is confusingly similar to the Complainant's trademark.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Disputed Domain Name was registered and is being used in bad faith.
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to prevail in this proceeding:
(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 was registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the EUROTUNNEL trademark based on both long and continuous use as well as its various trademark registrations worldwide for the EUROTUNNEL Mark. The Disputed Domain Name <myeurotunnel.com> consists of the EUROTUNNEL Mark preceded by the descriptive word "my", and followed by the generic Top-Level Domain ("gTLD") ".com".
Numerous UDRP decisions have reiterated that the addition of a descriptive or generic word to a trademark is insufficient to avoid confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795. Specifically, UDRP panels have concluded that the addition of the prefix "my" to a complainant's trademark does not preclude confusing similarity. See General Motors LLC v. John Brady/N2 The Net, WIPO Case No. D2012-2109 (<mychevrolet.com>); Volvo Trademark Holding AB v. SooKwan Park, WIPO Case No. D2005-0448 (<myvolvo.com>).
Finally, the addition of a gTLD such as ".com" in a domain name is technically required. Thus, it is well established that such element may generally be disregarded when assessing whether a disputed domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0"), paragraph 2.1.
The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its EUROTUNNEL Mark. The Complainant does not have any type of business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Panel finds that the Respondent was improperly using the Disputed Domain Name for commercial gain and thus, has no rights or legitimate interests in the Disputed Domain Name.
Moreover, the Respondent's registration and use of the Disputed Domain Name to resolve to a website with commercial links to advertisements for various transportation services, including those of the Complainant and its competitors, does not constitute a bona fide offering of goods or services or noncommercial fair use under the Policy. See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 (use of a domain name to post landing pages and pay-per-click links does not confer rights or legitimate interests in that domain name when resulting in a connection to goods or services competitive with those of the trademark holder).
Finally, where a respondent has registered and is using a domain name in bad faith (see the discussion below), the respondent cannot for that reason be found to have made a bona fide offering of goods or services. In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant's prima facie case.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent's bad faith pursuant to paragraph 4(b) of the Policy.
First, the Panel finds that the Respondent is using the Disputed Domain Name in bad faith by attempting to attract for commercial gain Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's EUROTUNNEL trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website. The Respondent's registration and use of the Disputed Domain Name indicates that such registration and use was done for the specific purpose of trading on the name and reputation of the Complainant and its well-known EUROTUNNEL trademark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847 ("[t]he only plausible explanation for Respondent's actions appears to be an intentional effort to trade upon the fame of Complainant's name and mark for commercial gain" and "[t]hat purpose is a violation of the Policy, as well as U.S. Trademark Law").
The Respondent's action of registering the Disputed Domain Name and using it to direct Internet traffic to its website evidences a clear intent to disrupt the Complainant's business, deceive customers and trade off the Complainant's goodwill by creating an unauthorized association between the Respondent and the Complainant's EUROTUNNEL Mark. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552.
Second, the website to which the Disputed Domain Name currently resolves contains hyperlinks that are pay-per-click sponsored ads that promote, among other things, transportation services, including those of the Complainant's competitors. As such, the Respondent is not only trading on consumer interest in the Complainant in order to generate Internet traffic and to commercially benefit from the sponsored links that appear on the website, but the Respondent also derives commercial advantage in the form of referral fees. In the Panel's view, this constitutes bad faith. Fox News Network, LLC v. Warren Reid, WIPO Case No. D2002-1085; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; Lewis Black v. Burke Advertising, LLC, WIPO Case No. D2006-1128.
Third, bad faith may be found where the Respondent knew or should have known of the registration and use of the Complainant's trademark prior to registering the Disputed Domain Name. See Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Name decades after the Complainant first used the EUROTUNNEL trademark. The continuous and public use of the EUROTUNNEL trademark would make it disingenuous for the Respondent to claim that he was unaware of the Complainant's trademark rights. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant's trademarks). Thus, the timing of the Respondent's registration and use of the Disputed Domain Name indicates that it was made in bad faith.
Finally, the registration of a domain name that is confusingly similar to a well-known registered trademark by an entity that has no relationship to that mark suggests bad faith registration and use. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith). Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to create a likelihood of confusion with the EUROTUNNEL trademark.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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, <myeurotunnel.com>, be transferred to the Complainant.
Lynda M. Braun
Date: June 7, 2017