WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AMS Sourcing B.V. v. Mizan Ahmed, TATAMAX Limited
Case No. D2020-0943
1. The Parties
Complainant is AMS Sourcing B.V., Netherlands, represented by Meisser & Partners, Switzerland.
Respondent is Mizan Ahmed, TATAMAX Limited, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <euroshopperbd.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2020. On April 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 17, 2020, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on April 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 11, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 12, 2020.
The Center appointed Marina Perraki as the sole panelist in this matter on May 21, 2020. 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 non-profit buying alliance that offers its services on behalf of European food retailers. It provides everyday commodities under the brand EURO SHOPPER since 1996. Products under this brand have been successfully sold in various countries in Europe since 1996.
Complainant owns various trademark registrations for EURO SHOPPER, including European Union Trade Mark registration No. 001518067 EURO SHOPPER (logo), filed on February 21, 2000 and registered on September 25, 2002, for various goods and services in international classes 3, 4, 5, 6, 8, 9, 11, 16, 20, 21, 24, 26, 28, 29, 30, 31, 32, 33, 34, 35, 39, 41 and 42.
The Domain Name was registered on September 27, 2019 and, as Complainant demonstrated, was previously used to host a website which offered online retail store services and prominently displayed Complainant’s logos and trademarks. Currently it leads to an inactive page.
Complainant sent a cease and desist letter to Respondent on October 31, 2019, to which Respondent did not reply.
5. Parties’ Contentions
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.
Respondent did not submit a formal response to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
A. Identical or Confusingly Similar
The Panel finds that the Domain Name is confusingly similar to the EURO SHOPPER mark in which Complainant has rights.
The Domain Name incorporates the trademark EURO SHOPPER in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
The letters “bd” which are added in the Domain Name do not prevent a finding of confusing similarity (see Accenture Global Services Limited v. Jean Jacque / Luck Loic, WIPO Case No. D2016-1315; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin, WIPO Case No. D2015-0135; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.
Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.
On the contrary, as Complainant demonstrated, the Domain Name resolved to a website prominently displaying Complainant’s trademark and offering retail services suggesting falsely that the website was of Complainant or of an affiliated entity or of an authorized partner of Complainant.
Per Complainant, Respondent is not an affiliated entity or an authorized distributor or partner of Complainant and no agreement, express or otherwise, exists allowing the use of Complainant’s trademarks on the website of Respondent.
The use of a domain name which intentionally trades on the fame of another and suggests affiliation with the trademark owner cannot constitute a bona fide offering of goods or services (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847; AB Electrolux v. Handi Sofian, Service Electrolux Lampung, WIPO Case No. D2016-2416; WIPO Overview 3.0, section 2.5).
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Domain Name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and is using the Domain Name in bad faith. Because the EURO SHOPPER mark had been widely used and registered at the time of the Domain Name registration, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering this Domain Name (WIPO Overview 3.0, section 3.2.2).
Respondent should have known about Complainant’s rights, due to the fact that Complainant’s mark had goodwill when the Domain Name was registered.
Furthermore, as Complainant demonstrated, the website’s content related to the Domain Name was targeting Complainant’s trademark, as it prominently displayed Complainant’s trademark and offering retail services. This further supports registration in bad faith (WIPO Overview 3.0, section 3.1.4), reinforcing the likelihood of confusion, as Internet users were likely to consider the Domain Names as in some way endorsed by or connected with Complainant (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, supra; Marie Claire Album v. Whoisguard Protected, Whoisguard, Inc. / Dexter Ouwehand, DO, WIPO Case No. D2017-1367). This also further supports knowledge of Complainant and its field of activity.
As regards bad faith use of the Domain Name, Complainant has demonstrated that the Domain Name was used to create a website, which prominently displayed Complainant’s registered trademark, thereby giving the false impression that it was operated by Complainant or a company affiliated to Complainant or an authorized partner of Complainant. The Domain Name operated therefore by intentionally creating a likelihood of confusion with Complainant’s trademark and business as to the source, sponsorship, affiliation or endorsement of the website it resolved to. This supports the finding of bad faith use (Aktiebolaget Electrolux v. Priscilla Quaiotti Passos, WIPO Case No. D2011-0388 and WIPO Overview 3.0, section 3.1.4).
Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Names in bad faith.
Complainant has established Policy paragraph 4(a)(iii).
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 <euroshopperbd.com> be transferred to Complainant.
Date: June 4, 2020