WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Europ Assistance Holding v. Whois Privacy Protection Service by onamae.com / Makoto Igarashi, Igarashi Makoto
Case No. D2021-2737
1. The Parties
The Complainant is Europ Assistance Holding, France, represented by Cabinet Lavoix, France.
The Respondent is Whois Privacy Protection Service by onamae.com / Makoto Igarashi, Igarashi Makoto, Japan.
2. The Domain Name and Registrar
The disputed domain name <assistancedogseurope.info> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2021. On August 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 23, 2021, 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 August 27, 2021 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 in English on August 30, 2021.
On August 27, 2021, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On August 30, 2021, the Complainant submitted a request that English be the language of the proceeding. The Respondent responded in an email stating that he did not understand English but did not otherwise comment on the language of proceedings. The contents of the email are dealt with in Section 5.B below.
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 in English and Japanese of the Complaint, and the proceedings commenced on September 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2021. The Respondent did not submit any formal response. The Center received the Respondent’s communications by email on August 30, 2021. The proceeding was suspended at the Complainant’s request from October 27, 2021 until November 30, 2021. On November 30, 2021, the proceeding was reinstituted and the Center informed the Parties that it would proceed to panel appointment.
The Center appointed Douglas Clark as the sole panelist in this matter on December 16, 2021. 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 original decision was due on December 30, 2021. The Panel extended the deadline to January 5, 2021.
4. Factual Background
The Complainant is a French company that provides assistance and insurance to travellers under the name EUROP ASSISTANCE. This includes services relating to pets, especially dogs.
The Complainant owns a wide range of trademarks registered all around the world for EUROP ASSISTANCE. The Complainant bases the present complaint on a Japanese trademark and one of the oldest trademark detailed below:
- Japanese trademark EUROP ASSISTANCE and device n° 3112155 filed on September 28, 1992, registered on January 31, 1996 for the following services in class 39: Agencies or liaison services for travel contracts, excluding those for lodging.
- International trademark EUROP-ASSISTANCE n°272559 filed on August 2, 1963 and designating Bosnia and Herzegovina, Benelux, Switzerland, Egypt, Croatia, Hungary, Italy, Liechtenstein, Morocco, Monaco, Montenegro, Romania, Serbia, Slovenia, and Viet Nam in classes 5, 12, 16, 36, 37, 39 and 42.
The Complainant is also the owner the domain names including the words “Europ Assistance”, such as <europ-assistance.com> registered and used since June 19, 1997.
The Respondent is an individual based in Japan.
The disputed domain name was registered on May 29, 2021 and resolved to an active page providing intermediary and support services for employees upon termination of their employment contracts. At the date of this decision it does not resolve to any active website.
5. Parties’ Contentions
Identical or confusingly similar
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s EUROP ASSISTANCE trademark.
The disputed domain name <assistancedogseurope.info> reproduces the verbal elements “Europe” and “assistance” of the trademarks of the Complainant. Moreover, the Respondent included the term “dogs” as part of the disputed domain name, which refers to a characteristic of the Complainant’s services (i.e. services and advices to ensure the safety of pets, especially dogs). The addition of the word "dogs" increases the likelihood of confusion since it refers to the activity of the Complainant.
Rights or legitimate interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant asserts that the Respondent is not identified in the WhoIs database as the disputed domain name and thus, the Respondent is not known as the disputed domain name.
The Complainant contends that the Respondent is not affiliated with nor authorized by the Complainant in any way. The Respondent has no rights or legitimate interests in respect of the disputed domain name, and he is not related in any way to the Complainant’s business. The Complainant does not carry out any activity for, nor has any business with the Respondent. The Complainant further submits that neither license nor authorization has been granted to the Respondent to make any use of the Complainant’s EUROP ASSISTANCE trademark or apply for registration of the disputed domain name by the Complainant.
Registered and used in bad faith
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith.
The disputed domain name completely incorporates the Complainant’s trademarks (although in a different order) and was acquired long after the trademarks EUROP ASSISTANCE became well-known. The name of the registrant was hidden by a privacy service and the disputed domain name has no connection with its business. By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location.
The Respondent did not reply to the Complainant’s contentions substantively. In response to the Complainant’s request the language of proceedings be English he stated that he had deleted the site under the disputed domain name and would not use the disputed domain name in the future and wanted it to be “abolished”. The Japanese word used by the Respondent for “abolished” is “廃止”. The Panel reads this to be a clear statement the Respondent wishes to cancel the disputed domain name. The Respondent further stated he wished to be withdrawn from the proceedings which confirms he no longer wishes to be involved with the disputed domain name.
6. Discussion and Findings
6.1 Language of the proceedings
The language of the Registration Agreement is in Japanese.
The Complainant requested the language of the proceedings be in English on the grounds that the Respondent used English words in his email address and was therefore familiar with English.
The Respondent responded as set out under section 5.B above that he wished to withdraw from the proceedings.
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Japanese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceedings lies with this Panel.
The Respondent did not object to English being the language of the proceeding, but he indicated that he did not understand English.
This Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a Respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceedings “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.
The Panel further notes that the Complaint was notified by the Center in both Japanese and in English but the Respondent stated that he wished to be withdrawn from the proceedings and, as such, did not formally submit a response.
As set out below, the Panel considers the case should be decided in favour of the Complainant. Translating the Complaint would cause unnecessary delays and expense. This factor leads the Panel to determine to follow the Center’s preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English.
6.2 Consent to Cancellation
Paragraph 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") sets out the current views of UDRP panelists when a respondent consents to transfer or cancel the disputed domain name. This provides:
“Where parties to a UDRP proceeding have not been able to settle their dispute prior to the issuance of a panel decision using the “standard settlement process” described above, but where the respondent has nevertheless given its consent on the record to the transfer (or cancellation) remedy sought by the complainant, many panels will order the requested remedy solely on the basis of such consent. In such cases, the panel gives effect to an understood party agreement as to the disposition of their case (whether by virtue of deemed admission, or on a no-fault basis).
In some cases, despite such respondent consent, a panel may in its discretion still find it appropriate to proceed to a substantive decision on the merits. Scenarios in which a panel may find it appropriate to do so include (i) where the panel finds a broader interest in recording a substantive decision on the merits – notably recalling UDRP paragraph 4(b)(ii) discussing a pattern of bad faith conduct, (ii) where while consenting to the requested remedy the respondent has expressly disclaimed any bad faith, (iii) where the complainant has not agreed to accept such consent and has expressed a preference for a recorded decision, (iv) where there is ambiguity as to the scope of the respondent’s consent, or (v) where the panel wishes to be certain that the complainant has shown that it possesses relevant trademark rights.”
This Panel considered this issue in detail in Rockwool International A/S v. Lin Chengxiong, WIPO Case No. D2012-0472 and the Panel will not repeat its reasoning here. The Panel finds the circumstances which previous UDRP panels found appropriate to proceed to a substantive decision on the merits are not present in this proceeding.
In this case, the Respondent has given its consent to cancellation. However, the Complainant seeks a transfer. The Panel also considered a similar issue in the Rockwool case and will also not repeat its reasoning. The Respondent has unequivocally stated that it wished to abolish (or cancel) the disputed domain name. The Complainant has established its standing to obtain a transfer. If the disputed domain name is cancelled it could be registered by another party. The Panel will, therefore, order a transfer.
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 <assistancedogseurope.info> be transferred to the Complainant.
Date: January 10, 2022