WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eurodrive Services and Distribution BV v. WhoisGuard Protected, WhoisGuard, Inc. / Kiril Zaycev
Case No. D2018-1599
1. The Parties
Complainants are Eurodrive Services and Distribution BV, World Trade Center of Amsterdam, Netherlands, represented by Dreyfus & Associés, France.
Respondents are WhoisGuard Protected, WhoisGuard, Inc., of Panama, Panama / Kiril Zaycev of Larnaka, Cyprus.
2. The Domain Name and Registrar
The disputed domain name <solitaire-euromaster.info> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2018. On July 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 16, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 1, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 6, 2018.
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 Respondent of the Complaint, and the proceedings commenced on August 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 27, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 28, 2018.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on September 7, 2018. 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 is a subsidiary of Compagnie Générale des Etablissements Michelin Group and offers tire and vehicle maintenance to professionals and consumers throughout Europe. Complainant has developed its business in two distinct markets – the general public (e.g., tourism, light truck, and 4x4 vehicles) and professional customers (e.g., car fleets, heavy goods vehicles, agrarian fleets, materials handling, and civil engineering). Complainant has an international presence with a European network of more than 2,300 light and industrial vehicle maintenance centers in 17 countries, including Austria, Denmark, Romania, Germany, United Kingdom of Great Britain and Northern Ireland, Sweden, and Switzerland.
Complainant owns numerous EUROMASTER trademark registrations, including the following trademarks:
- French trademark EUROMASTER No. 1624667, dated July 25, 1990, covering goods and services in classes 12 and 37;
- French trademark EUROMASTER No. 3413193, dated February 23, 2006, covering services in class 39;
- Benelux trademark EUROMASTER No. 0495020, registered on November 1, 1991, covering goods and services in classes 12 and 37;
- Benelux trademark EUROMASTER No. 0798204, dated of June 7, 2006, covering services in class 39.
Complainant operates the domain name <euromaster.com>, registered on March 29, 1996.
Before filing this case, Complainant attempted to resolve the matter amicably. On January 4, 2018, Complainant sent a cease-and-desist letter to Respondent via registered letter and email on the basis of its trademark rights. The cease-and-desist letter requested Respondent to cease the use of the Domain Name and to transfer it to Complainant free of charge. However, Respondent did not reply to Complainant’s cease-and desist letter, despite several reminders.
The Domain Name was registered on November 10, 2017 and resolves to a parking page displaying commercial links, some of which are related to automotive products and services, including those of Complainant and its competitors.
5. Parties’ Contentions
(i) Identical or confusingly similar
Complainant states that the Domain Name associates Complainant’s EUROMASTER trademark with the generic term “solitaire,” together with the placement of a hyphen between the two words. Complainant thus contends that the Domain Name, which reproduces Complainant’s EUROMASTER mark in its entirety, is confusingly similar to that mark. Complainant also observes that a previous UDRP panel has considered that the EUROMASTER trademark is a well-known mark. See Eurodrive Services and Distribution N.V v. Emir Aslan, WIPO Case No. D2016-0104.
Complainant also states that the addition of the generic term “solitaire” to Complainant’s EUROMASTER mark in the Domain Name (connected by a hyphen) is insufficient to avoid any likelihood of confusion. Generally, the French term “pneu solitaire”, – translated into English as “isolated tire” – is used on the Internet to sell precisely one tire. Moreover, Complainant states that prior UDRP panels have concluded that hyphenation in domain names is insufficient to distinguish a respondent’s domain name from the complainant’s trademark because the dominant portion of each domain name is the complainant’s mark.
Complainant indicates that it has used the trademark EUROMASTER in connection with a variety of products and services. Consequently, the public has learned to perceive the goods and services offered under this mark as being those of Complainant. Therefore, the public would reasonably assume that the Domain Name would be owned by Complainant or at least related to Complainant. Complainant thus contends that the Domain Name creates a likelihood of confusion with Complainant’s trademark, as it could mislead Internet users into thinking that it is in some way associated with Complainant.
For all of the above mentioned reasons, Complainant argues the Domain Name is confusingly similar to the EUROMASTER mark in which Complainant has rights, and therefore paragraph 4(a)(i) of the Policy is satisfied.
(ii) Rights or legitimate interests
Complainant states that Respondent is not affiliated with Complainant in any way, nor has Respondent been authorized or licensed by Complainant to use and register its EUROMASTER trademark, or to seek registration of any domain name incorporating the mark. Moreover, Respondent is not known by the name Euromaster. Complainant contends that Respondent has no prior rights or legitimate interests in the Domain Name. The registration of the EUROMASTER trademarks preceded the registration of the Domain Name by many years.
Complainant also argues that the Domain Name is so similar to the EUROMASTER mark that Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the Domain Name. Complainant states that in previous decisions, UDRP panels have found that in the absence of any license or permission from a complainant to use a trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed. In this case, Respondent has not demonstrated use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. Instead, the Domain Name resolves to a parking page displaying pay-per-clicks links, some of which are related to automotive products and services, including those of Complainant and its competitors, and which are likely to generate revenues. Consequently, it cannot be inferred that Respondent is making a legitimate noncommercial or fair use of Domain Name. In addition, after investigations made by Complainant, it was discovered that email servers have been configured on the Domain Name. Thus, there might be a risk that Respondent is engaged in a phishing scheme.
Complainant also indicates that Respondent never answered Complainant’s cease-and desist letter. Complainant states that UDRP panels have repeatedly stated that when respondents do not avail themselves of their rights to respond to complainants, it can be assumed that respondents have no rights or legitimate interests in a disputed domain name. Finally, Respondent registered the Domain Name with a privacy shield service to hide his identity. Complainant asserts that such behavior highlights the fact that Respondent has no rights or legitimate interests in respect of the Domain Name.
For all of the above reasons, Complainant contends that Respondent has no rights or legitimate interests in respect to the Domain Name under paragraph 4(a)(ii) of the Policy.
(iii) Registered and used in bad faith
Complainant states that it is implausible that Respondent was unaware of Complainant when he registered the Domain Name. Complainant and its trademark are well-known throughout the world. UDRP panels have previously noted its worldwide reputation, making it unlikely that Respondent was unaware of Complainant’s proprietary rights in the EUROMASTER trademark. In addition, doubts concerning Respondent’s knowledge of Complainant’s trademark cannot even arise since the composition of the Domain Name is too similar to Complainant’s EUROMASTER mark.
The Domain Name resolves to a parking page displaying commercial links, and some of them are related to automotive products and services, including those of Complainant and its competitors. Given these facts, Complainant asserts that it is impossible that Respondent was unaware of Complainant’s trademark and products and services at the time of registration of the Domain Name. Bad faith has previously been found where a domain name is so obviously connected with a trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith.
Complainant states that paragraph 2 of the Policy establishes that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. Complainant argues that this means it was Respondent’s duty to verify that the registration of the Domain Name would not infringe the rights of any third party before registering it. Additionally, a EUROMASTER trademark search would have revealed to Respondent the existence of Complainant and its trademark. Complainant states that Respondent’s failure to do so is a contributory factor to its bad faith. Moreover, supposing that Respondent was unaware of the possibility of searching trademarks online before registering the Domain Name, a simple search via Google or any other search engine using the keyword “Euromaster” demonstrates that all top results relate to Complainant’s field of activities or news. Taking into account the worldwide reputation of Complainant and its trademark, it is hard to believe that Respondent was unaware of the existence of Complainant and its trademark at the time of registration of the Domain Name. In addition, Respondent could have provided an explanation of its choice in the Domain Name. However, Respondent neither tried to defend his rights nor stated any valid argument to justify the registration of the Domain Name in response to Complainant’s cease-and-desist letter.
Furthermore, Complainant states that Respondent registered the Domain Name through a privacy shield service to hide identity and contact details, thus, preventing Complainant from contacting him. Prior UDRP panels have confirmed that a deliberate concealment of identity and contact information may in itself indicate registration in bad faith. Consequently, in view of the above-mentioned circumstances, it is established that Respondent registered the Domain Name in bad faith.
Previous UDRP panels have also considered that in the absence of any license or permission from Complainant to use such widely known trademark, no actual or contemplated bona fide or legitimate use of the Domain Name could reasonably be claimed. Complainant asserts that there is no doubt that many Internet users attempting to visit Complainant’s website have ended up on the site of Respondent. As the Domain Name is confusingly similar to Complainant’s trademark, previous panels have ruled that a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from Complainant’s site to Respondent’s site.
Complainant observes that Respondent uses the Domain Name to direct Internet users to a parking page displaying commercial links, with some of them are related to automotive products and services, including those of Complainant and its competitors. Complainant states that numerous UDRP panels have previously considered that this behavior was additional proof of bad faith. Complainant argues that it is more likely than not, that Respondent’s primary motive in registering and using the Domain Name was to capitalize on or otherwise take advantage of Complainant’s trademark rights, through the creation of initial interest of confusion. Moreover, Respondent might be engaged in a phishing scheme where he can clearly aim at stealing valuable information, such as credit cards from Complainant’s clients through the use of email addresses and redirecting towards fraudulent websites. Panels have agreed that there is no better evidence of bad faith than a fraudulent phishing scheme set up with the help of a domain name containing the trademark of a company.
Finally, Complainant contends that it can be deduced that Respondent registered the Domain Name to prevent Complainant from using its trademark in the Domain Name, which also constitutes evidence of Respondent’s bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In order to succeed on its Complaint, Complainants must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainants have rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in its well-known EUROMASTER trademark, based on longstanding trademark registrations and widespread use of the mark throughout Europe.
Further, the Panel determines that the Domain Name is confusingly similar to the EUROMASTER mark. The Domain Name incorporates the mark in its entirety, while adding the term “solitaire” in the Domain Name, placed in front of the word “Euromaster” and separated by a hyphen, “solitaire-euromaster”. This configuration, with the mark EUROMASTER a dominant element in the Domain Name, does not prevent confusing similarity. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”); TREDNET, Direct Distribution International Ltd (“DDI”) v. WhoisGuard NameCheap / BODYPOWER, WIPO Case No. D2012-2001 (“The mere addition of a hyphen being insufficient to exclude the likelihood of confusion resulting from the entire capture of the Complainants’ trademarks in the disputed domain names …”).
Accordingly, the Panel finds that that the Domain Name is confusingly similar to a trademark in which Complainant has rights, in accordance with paragraph (4)(a)(i) of the Policy.
B. Rights or Legitimate Interests
Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to reply to Complainant’s contentions. The Panel finds that Complainant has not authorized Respondent to use its EUROMASTER mark; that Respondent is not commonly known by the Domain Name; that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services. Instead, the Domain Name is linked to a landing webpage with links that are related to automotive products and services, including those of Complainant and its competitors. In the context of this case, where the Domain Name is confusingly similar to Complainant’s distinctive EUROMASTER mark, Respondent’s use of the Domain Name in this manner does not give rise to any rights or legitimate interests in it.
This point is reinforced by the circumstances where Complainant’s sent Respondent a cease-and-desist letter and Respondent had an opportunity to respond and explain its registration of the Domain Name, but did not do so. See GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090, quoting Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493 (“non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”).
Accordingly, the Panel determines that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark.”
Here, the Panel determines that the Domain Name was registered and is being used in bad faith. First, based on the evidence, the Panel finds, on the balance of the probabilities, that Respondent was likely aware of Complainant and its EUROMASTER mark, and targeted that mark, when registering the Domain Name. The Panel observes that Respondent registered the Domain Name, which incorporates Complainant’s distinctive EUROMASTER trademark in its entirety, along with the word “solitaire,” these two terms being separated by a hyphen. Respondent has provided no explanation for registering the Domain Name, and the Panel can think of no explanation for why Respondent registered the term, “solitaire-euromaster”, except to make reference to Complainant and its mark. Given the fame of the EUROMASTER mark, and the fact that the Domain Name is so obviously connected with Complainant’s mark, the Panel considers that the only logical conclusion is that Respondent targeted Complainant and its EUROMASTER mark when registering the Domain Name. See, Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 (where a domain name is “so obviously connected with such a well-known name and products … its very use by someone with no connection with the products suggests opportunistic bad faith”); see also, Clearwater Systems, Inc. v. Glenn Johnson / Clear Water Systems of Remington Inc., WIPO Case No. D2014-0878 (“Knowledge and targeting [of a trademark] may be proven inferentially”).
The Panel also determines that the Domain Name has been used in bad faith. The Domain Name resolves to a pay-per-click landing page with links to automotive products and services, including those of Complainant and its competitors. The evidence indicates that Respondent used a privacy service for registration of the Domain Name and did not respond to the cease-and-desist letter sent by Complainant. At the same time, an email server was configured using the Domain Name, raising the risk that the Domain Name could be used in connection with a phishing scheme. Under the circumstances, Respondent could have responded to Complainant’s letter or to the Complaint in this case to provide an explanation of its choice of the Domain Name, as well as evidence of any actual or contemplated good faith use of the Domain Name. However, Respondent failed to respond to all of these contacts.
In conclusion, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied the third element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <solitaire-euromaster.info>, be transferred to Complainant.
Christopher S. Gibson
Date: September 22, 2018