WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

European Film Agency Directors (EFAD) v. Evie Stephens

Case No. DEU2021-0009

1. The Parties

The Complainant is European Film Agency Directors (EFAD), Belgium, represented by Marx Van Ranst Vermeersch & Partners, Belgium.

The Respondent is Evie Stephens, Netherlands.

2. The Domain Name, Registry and Registrar

The Registry of the disputed domain name <efads.eu> is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the disputed domain name is Key-Systems GmbH.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2021. On March 11, 2021, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On March 12, 2021, the Registry transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 March 18, 2021. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was April 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 19, 2021.

The Center appointed Edoardo Fano as the sole panelist in this matter on April 26, 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 ADR Rules, Paragraph B(5).

The language of the proceeding is English, being the language of the Registration Agreement, as per Paragraph A(3)(a) of the ADR Rules.

4. Factual Background

The Complainant is European Film Agency Directors (EFAD), an international non-profit association, based in Belgium, that brings together the Directors of national film and audiovisual agencies from European countries. From its creation in 2015 to end of 2019, it used the acronym “EFAD’s” and it operated on the Internet with “www.efads.eu” as its main website. From October 2019 the new acronym of the Complainant has been “EFAD” and in 2020 the renewal fee for the disputed domain name <efads.eu> was not paid on time by the Complainant.

The Complainant provided evidence in support of the above.

The disputed domain name <efads.eu> was registered by the Respondent on November 25, 2020, and when the Complaint was filed the website at the disputed domain name was a clone of the Complainant’s previous official website.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain name <efads.eu> is confusingly similar to its trade/company name EFAD.

Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register the disputed domain name or to use its trade/company name EFAD within the disputed domain name, nor is the Respondent commonly known by the disputed domain name. The Complainant asserts the Respondent is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.

The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since the Complainant’s trade/company name EFAD is distinctive and internationally known. Therefore, the Respondent targeted the Complainant’s trade/company name at the time of registration of the disputed domain name, with the purpose to intentionally attract, for commercial gain, Internet users and to create a likelihood of confusion with the Complainant’s trade/company name EFAD by pretending to be the Complainant’s official website. The Complainant finally asserts that the Respondent could possibly use email addresses linked to the disputed domain name for phishing activities.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

As stated in paragraph A(1) of the ADR Rules “[the] ADR Rules are applicable to domain name disputes where the domain name has been registered under the .eu Top Level Domain”. Article 22(2) of the Commission Regulation (EC) No 874/2004 of 28 April 2004 laying down public policy rules concerning the implementation and functions of the .eu Top Level Domain and the principles governing registration states that “[p]articipation in the ADR procedure shall be compulsory for the holder of a domain name”. In addition, section 15 of the Domain Name Registration Terms and Conditions for “.eu” domain names states that: “[t]he Registrant must participate in ADR Procedures if a third party (a ‘Complainant’), in compliance with the Dispute Resolution Rules, assents to an ADR Provider and initiates a complaint against the Registrant on the basis of speculative or abusive registration.”

In order to succeed in its Complaint, the Complainant is required under Paragraph B(11)(d)(1) of the ADR Rules to demonstrate the following:

(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 national law of a Member State and/or European Union law and; either

(ii) that the disputed domain name has been registered by the Respondent without rights or legitimate interests in the name; or

(iii) that the disputed domain name has been registered or is being used in bad faith.

(i) 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 European Union law

The Panel finds that the disputed domain name <efads.eu> is confusingly similar to the actual acronym “EFAD” of the Complainant’s association name and identical to its previous acronym “EFAD’s”.

It is well established in decisions under the ADR Rules that the ccTLD “.eu” is typically ignored when assessing the similarity between a name, in which a right is recognized or established by national law and/or European Union law, and a domain name.

The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s association name, pursuant to Paragraph B(11)(d)(1)(i) of the ADR Rules.

(ii) Rights or Legitimate Interests

The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that it has no relationship or association with the Respondent, and has not authorized the Respondent to use or register in a domain name its trade/company name in the acronym version EFAD, that the Respondent is not commonly known by the disputed domain name and is not using it in connection with the offering of goods or services, or making a legitimate noncommercial or fair use of it.

The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it.

The Panel could not find any evidence by referring to the examples listed in Paragraph B(11)(e) of the ADR Rules that

(i) prior to commencing this proceeding the Respondent has used the disputed domain name in connection with the offering of goods or services or has made demonstrable preparations to do so;
(ii) the Respondent as an undertaking, organization or natural person has been commonly known by the disputed domain name; or that
(iii) the Respondent is making a legitimate and noncommercial or fair use of the disputed 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 European Union law.

On the contrary, the use of the disputed domain name for a website that is the clone of the Complainant’s previous one is very likely to create confusion among Internet users and constitute an infringement of the Complainant’s association name.

The Panel therefore finds that Paragraph B(11)(d)(1)(ii) of the ADR Rules has been satisfied.

(iii) Registered or Used in Bad Faith

According to Article 21(1) of the Regulation and Paragraph B(11)(d)(1) of the ADR Rules (ii) lack of rights or legitimate interests and (iii) registration or use in bad faith are alternative requirements. The Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name and therefore there is no need to consider also the bad faith element.

In any case, the Panel finds that the content of the Respondent’s website at the disputed domain name, with the purpose of intentionally attempting to create a likelihood of confusion with the Complainant’s association name as to the disputed domain name’s source, sponsorship, affiliation or endorsement, is an evidence of bad faith, pursuant to Paragraph B(11)(d)(1)(iii) of the ADR Rules.

7. Decision

For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name <efads.eu> be transferred to the Complainant.¹

Edoardo Fano
Sole Panelist
Date: April 27, 2021

¹ The Complainant sought the transfer of the disputed domain name. As the Complainant is located in Belgium, a Member State of the European Union, it satisfies the general eligibility criteria for registration of the disputed domain name set out in Article 4(2)(b) of Regulation (EC) No. 733/2002 as amended by Regulation (EU) 2019/517. Therefore, the Complainant is entitled to request the transfer of the disputed domain name.