Europcar International S.A.S.U. v. Private Registration
Claim Number: FA1412001596032
Complainant: Europcar International S.A.S.U. of St QUENTIN EN YVELINES, France.
Complainant Representative:
Complainant Representative: Taylor Wessing LLP of London, United Kingdom.
Respondent: Private Registration of Sydney South, NSW, International, AU.
Respondent Representative:
REGISTRIES and REGISTRARS
Registries: XYZ.COM LLC
Registrars: Crazy Domains FZ-LLC
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Examiner in this proceeding.
Fernando Triana, Esq., as Examiner.
Complainant submitted: December 19, 2014
Commencement: December 19, 2014
Default Date: January 5, 2015
Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
As per Paragraph 9 (c) of the URS Rules, English is the language of the Determination given the absence of a Response.
Pursuant to Paragraphs 6.1 and 6.3 of the URS Procedure, the Complaint proceeded to Default since Respondent did not submit a response to the Complaint. Thus, the Examiner will review the case on the merits of the claim.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended:
1. That the registered domain name is identical or confusingly similar to a word mark;
2. that the Registrant has no legitimate right or interest to the domain name; and
3. that the domain was registered and is being used in bad faith.
1. Identical and/or Confusingly Similar
Paragraph 1.2.6.1. of the URS Procedure requires the disputed domain name to be identical or confusingly similar to a word mark:
(i) for which Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
Use of said trademark could be shown by:
(i) Demonstrating evidence of use – which can be a declaration and one specimen of current use in commerce – was submitted to, and validated by, the Trademark Clearinghouse.
(ii) Providing a sample of use submitted directly with the URS Complaint”.
a) Existence of a trademark in which the Complainant has rights and is in current use.
Complainant submitted printouts from the European Trademark and Design Network’s and the Australian Patent and Trademark Office’s websites, regarding Complainant’s rights on the trademark EUROPCAR in international class 39.
This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademark and of the exclusive right to use it in connection with the corresponding goods and services. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the trademark is inherently distinctive[1].
Thus, Complainant successfully proved its rights on the trademark EUROPCAR.
Furthermore, Complainant filed printouts of its websites www.europcar.com.au and www.europcar.fr, which the Examiner accept as valid evidence of the trademark EUROPCAR’s use.
Therefore, the Examiner concludes that Complainant has demonstrated to be the owner of a valid trademark registration which is currently in use for purposes of Paragraph 1.2.6.1. of the URS Procedure.
b) Identity or confusing similarity between the disputed domain name and the Complainant’s trademark.
The Examiner considers that the trademark EUROPCAR is completely comprised and reproduced in the disputed domain name <europcar.xyz>.
The Examiner also notes that the disputed domain name <europcar.xyz> is exclusively made up of the trademark EUROPCAR, since it does not include any other word or number. EUROPCAR is not a word in the English language (the de facto national language of Australia, where Respondent seems to be domiciled), but rather a combination of words made up by Complainant to identify the car rental services it offers around the world. These facts lead to the obvious conclusion that the disputed domain <europcar.xyz>name is identical to the trademark EUROPCAR.
Thus, by registering the disputed domain name, Respondent created a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain name.
As per this reasoning, the Examiner finds that the disputed domain name <europcar.xyz> is identical to Complainant’s trademark EUROPCAR, and thus the requirement set forth in Paragraph 1.2.6.1. of the URS Procedure is duly complied with.
Paragraph 1.2.6.3. of the URS Procedure includes a non-exclusive list of circumstances that demonstrate bad faith registration and use by Respondent, as follows:
a. Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the disputed domain name; or
b. Respondent has registered the disputed domain name in order to prevent the trademark holder or service mark from reflecting the trademark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
c. Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the disputed domain name Respondent has intentionally attempted to attract for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on that web site or location.
The Examiner concurs with Complainant’s assertions. Respondent must have known the trademark EUROPCAR at the time of the disputed domain name’s registration. Evidence of such knowledge is the disputed domain name itself: EUROPCAR, as stated above, is not a word in the English language, which is the de facto national language of Australia, where Respondent is domiciled according to the disputed domain name’s WhoIs information. Thus, in the Examiner’s view, Respondent deliberately took someone else’s trademark to register a domain name. The Examiner believes that the mere fact of knowingly using a third-party’s trademark in a domain name is registration in bad faith[2].
In Paragraph 8.3, the URS Procedure clarifies Complainant’s burden of proof regarding the second element established in its Paragraph 1.2.6 (i.e. Registrant has no legitimate right or interest to the disputed domain name).
In a URS procedure, Complainant’s burden of proof regarding Registrant’s lack of rights or legitimate interest in the disputed domain name is met when Complainant presents adequate evidence to substantiate its trademark rights in the disputed domain name, e.g. evidence of a trademark registration and evidence of the disputed domain name’s registration and use in bad faith.
Complainant has met its burden of proof in this case regarding Registrant’s lack of rights or legitimate interest in the disputed domain name. As concluded above, Complainant has successfully shown evidence to substantiate its trademark rights, i.e. printouts from the European Trademark and Design Network and the Australian Patent and Trademark Office proving that Complainant owns registrations Nos. 98743597 in France and 618167 in Australia for the trademark EUROPCAR, in international class 39. In addition, Complainant has demonstrated that the disputed domain name was registered and is being used in bad faith.
Consequently, the Examiner finds that in the present case, Respondent has no legitimate right or interest to the disputed domain name; thus the requirement set forth in Paragraph 1.2.6.2., of the URS Procedure is duly complied with.
After reviewing the Complainant’s submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name be SUSPENDED for the duration of the registration.
<europcar.xyz>.
Fernando Triana, Examiner
Dated: January 8, 2015
[1] See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO May 5, 2002).
[2] See Aktiebolaget Electrolux v. Jorgeariel Figueroa Rodríguez, WIPO Case No. D2011-1311, where the panel held: “The selection of this word is certainly not a random decision: the Panel finds that it is a consequence of Respondent’s prior knowledge of the mark. This fact, by itself, is registration in bad faith in the Panel’s opinion”.
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