WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ED&F Man Holdings Limited v. DV Villes
Case No. DEU2018-0023
1. The Parties
The Complainant is ED&F Man Holdings Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is DV Villes of Duttlenheim, France.
2. The Domain Name, Registry and Registrar
The Registry of the disputed domain name <edfman.eu> is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the disputed domain name is AXC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2018. On July 17, 2018, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On July 19, 2018, the Registry 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 July 23, 2018 providing the registrant and contact information disclosed by the Registry, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 24, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 25, 2018. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was September 6, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 10, 2018.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on September 13, 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 ADR Rules, Paragraph B(5).
4. Factual Background
The Complainant is a limited company incorporated in England which operates as an agricultural commodities merchant.
The Complainant is the owner of trademark registrations across various jurisdictions including the ED&F MAN mark (European Union Trade Mark registration for goods and services in classes 1, 5, 31, 35, 36, 39, registered on September 7, 2004 under No. 002314763).
The Complainant maintains an Internet presence through its primary website at <edfman.com>. It also owns other domain names which incorporate its ED&F MAN trademark.
The disputed domain name was registered on February 14, 2018 and resolved, at the time of filing the Complaint, to a website featuring adult content.
The Complainant’s representative sent three cease and desist letters to the Respondent (on April 17, 2018, on April 24, 2018 and on May 2, 2018), but the latter has never replied.
5. Parties’ Contentions
Firstly, the Complainant contends that the disputed domain name is confusingly similar to the ED&F MAN mark. In the Complainant’s opinion, the omission of the symbol “&” does not distinguish the disputed domain name from its registered mark.
Secondly, the Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant alleges that the Respondent is not commonly known by the disputed domain name as the WhoIs information identities the Respondent as “DV Villes” which does not resemble <edfman.eu>. The Complainant also claims that it has not licensed, authorized, or permitted the Respondent to register a domain name incorporating the ED&F MAN mark. Furthermore, according to the Complainant, the Respondent is currently using the disputed domain name to direct Internet users to a website that features adult content.
Thirdly, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. According to the Complainant, the disputed domain name was registered on February 14, 2018, which is significantly after the Complainant filed for registration of its ED&F MAN mark with the European Union Intellectual Property Office (“EUIPO”), and also after the Complainant registered <edfman.com> on December 3, 1995. Moreover, the Complainant claims that the ED&F MAN mark is well known across the European Union. Therefore, the Complainant believes that at the time of registration, the Respondent knew, or at least should have known, of the existence of the Complainant’s rights.
In the Complainant’s opinion, the fact that the website under the disputed domain name features adult content is enough to conclude that <edfman.eu> is being used in bad faith. The Complainant also emphasizes that the Respondent has ignored its attempts to resolve this dispute outside of this administrative proceeding.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under Article 21(1) of Regulation (EC) No. 874/2004 (“the Regulation”) and Paragraph B(11)(d)(1) of the ADR Rules, in order for the Complaint to succeed, the Complainant is required to establish:
(i) that the disputed domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or Community law and; and either
(ii) that the disputed domain name has been registered by Respondent without rights or legitimate interest in the name; or
(iii) that the disputed domain name has been registered or is being used in bad faith.
The requested remedy may only be granted if the above criteria are met.
A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or Community law
The Complainant has established that it is the owner of European Union trademark registrations for ED&F MAN. Such trademark registrations are among the rights recognised and established by Community law; see Article 10(1) of the Regulation.
The disputed domain name is confusingly similar to the Complainant’s ED&F MAN mark as it fully mirrors this mark. The omission of the symbol “&” does not distinguish the disputed domain name from the Complainant’s mark.
For the purpose of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, the Top Level-Domain <.eu> may be disregarded (LEGO Juris A/S v. Whois Data Protection Sp. z o.o. / Mirek Nowakowski ROSTALCO Sp. z o.o., WIPO Case No. D2012-0607 1 ).
The Panel therefore finds that the disputed domain name is confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or Community law and that the Complainant has therefore satisfied the requirements of Paragraph B(11)(d)(1)(i) of the ADR Rules.
B. Rights or Legitimate Interests
Paragraph B(11)(e) of the ADR Rules provides that the following circumstances, without limitation, demonstrate a respondent’s rights or legitimate interests to a domain name for purposes of Paragraph B11(d)(1)(ii):
(1) prior to any notice of the dispute, the respondent has used the domain name or a name corresponding to the domain name in connection with the offering of goods or services or has made demonstrable preparation to do so;
(2) the respondent, being an undertaking, organization or natural person, has been commonly known by the domain name, even in the absence of a right recognized or established by national and/or Community law;
(3) the respondent is making a legitimate and noncommercial or fair use of the domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognized or established by national law and/or Community law.
The overall burden of proof on this element rests with the Complainant. However, it is well-established by previous “.eu” and UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions (see FNAC Darty Participations et Services and Establissements Darty et Fils v. Paul Romain, WIPO Case No. DEU2018-0003). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1 and cases cited therein).
The Panel notes the following circumstances presented in the Complaint in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (a) the Respondent is neither licensed nor authorized by the Complainant to use its mark; (b) there is no evidence that the Respondent has been commonly known by the disputed domain name; (c) the Respondent has not demonstrated use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. In particular, the use of the disputed domain name to direct the Internet users to the website featuring adult content cannot be qualified as a bona fide offering of goods or services.
Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel accepts the Complainant’s unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has satisfied the condition set out at Paragraph B(11)(d)(1)(ii) of the ADR Rules.
C. Registered or Used in Bad Faith
Firstly, the disputed domain name was registered 14 years after the Complainant registered the ED&F MAN mark. In the Panel’s opinion, the notoriety of the Complainant’s mark on the Internet together with the fact that the disputed domain name is confusingly similar with the mark indicate that the Respondent knew or should have known about the Complainant’s rights when registering the disputed domain name (See Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).
Secondly, the adult content of the website to which the disputed domain name resolves is a clear example of bad faith use of a domain name.
In addition, the Respondent failed to respond to any of the Complainant’s emails which regarded the use of the disputed domain name, which is an additional fact substantiating bad faith.
The Panel therefore finds that the Respondent has both registered and used the disputed domain name in bad faith and that the condition set out at Paragraph B(11)(d)(1)(iii) of the ADR Rules has also been satisfied.
For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name <edfman.eu> be transferred to the Complainant.
Date: September 23, 2018
1 Where there are substantive similarities between the ADR Rules and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has referred to decision under the UDRP.