Europcar International SA v. New Media Research in Romania SRL
Claim Number: FA0208000123906
Complainant is Europcar International SA, Saint Quentin en Yvelines, FRANCE (“Complainant”) represented by Corinne Allard-Dornaletche. Respondent is New Media Research In Romania SRL, Bucuresti, ROMANIA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <europcar.ro>, registered with Domain Name Registration for Romania.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 28, 2002; the Forum received a hard copy of the Complaint on August 30, 2002.
On September 5, 2002, Domain Name Registration for Romania confirmed by e-mail to the Forum that the domain name <europcar.ro> is registered with Domain Name Registration for Romania and that Respondent is the current registrant of the name. Domain Name Registration for Romania has verified that Respondent is bound by the Domain Name Registration for Romania registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 11, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 1, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On October 28, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.” Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following averments:
1. Respondent’s <europcar.ro> domain name is identical to Complainant’s EUROPCAR registered mark.
2. Respondent does not have any rights or legitimate interests in the <europcar.ro> domain name.
3. Respondent registered and used the <europcar.ro> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Europcar International SA, is a major international car rental company. Complainant holds numerous trademark registrations with various international authorities protecting the EUROPCAR mark. More specifically, Complainant owns, inter alia: Argentine Reg. No. 1,529,642 registered on Jan. 3, 1994; Benelux Reg. No. 153,066 registered on May 12, 1987; United States Reg. No. 2,002,271 registered on September 4, 1996; and French Reg. No. 426,021 registered on August 26, 1976. Significantly, Complainant also holds a EUROPCAR trademark registration covering classes 12 and 39 of the Nice Classification, which indicates Complainant’s incontestable rights in the EUROPCAR mark. Complainant also holds International Trademark Reg. Nos. 547,531 registered on January 13, 1990; 426,021; and, 699,543, all of which include protection in Romania, Respondent’s place of domicile.
Additionally, Complainant promotes its EUROPCAR mark by way of its extensive domain name collection and corresponding websites, which include, without limitation: <europcar.com>, <europcar.org>, <europcar.net>, <europcar.biz>, <europcar.info>, <europcar.at>, <europcar.cc>, <europcar.hu>, <europcar.no>, <europcar.us>, <europcar.ru>, <europcar.ye> and <europcar.com.ro>, which reflects Romania’s country-code as the top-level domain.
Respondent registered the <europcar.ro> domain name on May 18, 2000. Complainant’s investigation of Respondent’s use of the subject domain name indicates that Respondent has yet to use the domain name for any purpose or in connection with any websites.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has established rights in the EUROPCAR mark through registration with numerous international trademark authorities, and subsequent continuous use of the mark in commerce.
Respondent’s <europcar.ro> domain name is identical to Complainant’s EUROPCAR mark. Respondent’s domain name incorporates Complainant’s mark in its entirety, and only deviates with the addition of the Romanian country-code of “.ro.” Because top-level domains are required of domain name registrants, their addition has been determined to be inconsequential when conducting an identical analysis under Policy ¶ 4(a)(i). The primary inquiry under a Policy ¶ 4(a)(i) analysis scrutinizes Respondent’s second-level domain, namely, “europcar,” which fails to deviate from Complainant’s mark; thus, Respondent’s domain name is identical to Complainant’s EUROPCAR mark. See World Wrestling Fed'n Entm't, Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (“The addition of the country code top level domain (ccTLD) designation <.tv> does not serve to distinguish [the disputed domain] names from Complainant’s marks since ‘.tv’ is a common Internet address identifier that is not specifically associated with Respondent”); see also Clairol Inc. v. Fux, DTV2001-0006 (WIPO May 7, 2001) (finding that the domain name <clairol.tv> is identical to Complainant’s CLAIROL marks).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Significantly, Respondent failed to submit a Response in this proceeding and, thus, failed to propose any set of circumstances that would illustrate its rights or legitimate interests in the <europcar.ro> domain name. Because Complainant’s assertions and evidence are unopposed, all reasonable inferences contained in the Complaint will be accepted as true. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).
Furthermore, the Panel may interpret Respondent’s failure to respond as indicating its lack of rights or legitimate interests in the domain name. See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interest in the domain name because Respondent never submitted a Response nor provided the Panel with evidence to suggest otherwise); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).
Uncontested evidence indicates that Respondent has been the holder of the <europcar.ro> domain name registration since May 18, 2000. Complainant’s evidence reveals that Respondent has yet to use the domain name in connection with any use or corresponding website. Merely registering a domain name does not create rights or legitimate interests for the purpose of Policy ¶ 4(a)(ii). Although Respondent is allowed a significant amount of time to pursue development of the domain name in conjunction with a website, that time must be quantifiable and limited. Respondent’s failure to respond to Complainant’s assertions, taken in conjunction with Respondent’s failure to develop the domain name for over two years, indicates that Respondent lacks rights and legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and (iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also LFP, Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (recognizing that in certain instances excusable delays will inevitably arise, but noting that those delays must be quantifiable and limited; they cannot extend indefinitely).
There is no evidence that implies a legitimate connection exists between Respondent, New Media Research, and the domain name, which reflects Complainant’s EUROPCAR mark. Complainant’s fame and the extensive international development of its EUROPCAR mark creates a presumption that Respondent is not commonly known by the identical <europcar.ro> domain name, especially since Complainant maintains a presence in Romania and holds numerous international trademarks that protect the EUROPCAR mark in the Romanian jurisdiction. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant’s Submission supports the finding that its EUROPCAR car-rental network is used all over the world and has acquired an incontestable reputation, notably in France and Romania, and Europe in general. Because Complainant’s business and trademark registrations are well known, Respondent was undoubtedly aware of Complainant’s existence. Respondent’s registration of a famous mark, despite knowledge of Complainant’s rights in the EUROPCAR mark, indicates bad faith registration under Policy ¶ 4(a)(iii). See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").
The Panel also determines that Respondent has passively held the subject domain name for over two years. The passive holding of a domain name, in which Respondent lacks rights or legitimate interests, constitutes bad faith use pursuant to Policy ¶ 4(a)(iii). Precedent has determined that a finding of bad faith is warranted where Respondent makes no use of the domain name and there are no other indications that Respondent could have registered and used the domain name for any non-infringing purpose. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also E. & J. Gallo Winery v. Oak Inv. Group, D2000-1213 (WIPO Nov. 12, 2000) (finding bad faith where (1) Respondent knew or should have known of Complainant’s famous GALLO marks and (2) Respondent made no use of the domain name <winegallo.com>); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <europcar.ro> domain name be TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: November 4, 2002
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