Europcar International SA v. New Media
Research in Romania SRL
Claim Number: FA0208000123906
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@europcar.ro 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
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.
FINDINGS
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.
DISCUSSION
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.
DECISION
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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