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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
France-Manche v. Cimagotipo S.L.
Case No. D2001-0771
1. The Parties
The complainant in this administrative proceeding is France-Manche, a French Joint Stock company, based at 140-144 Boulevard Malesherbes, 75017 - Paris, France ("the Complainant").
The respondent is Cimagotipo S.L., a Spanish company based at Pallars 161, 08005 - Barcelona, Spain ("the Respondent").
2. The Domain Name and Registrar
The domain name at issue is <eurotunel.com> ("the Domain Name").
The registrar of the Domain Name is Tucows.com, Inc. ("the Registrar").
3. Procedural History
The Complainant filed a complaint ("the Complaint") with the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") electronically on June 11, 2001, and by hard copy on June 14, 2001.
On June 12, 2001, the Center transmitted to the Registrar a request for registrar verification in connection with this case.
On June 14, 2001, the Registrar responded to the Center's request and confirmed that Tucows.com is the Registrar of the Domain Name <eurotunel.com> and also confirmed that the Domain Name was registered in the name of Cimagotipo S.L. who is also listed as the administrative and billing as well as technical contact for the Domain Name. The Registrar further informed the Center that the Domain Name registration is on hold in order to ensure that no changes occur to the ownership or the Registrar for the duration of the dispute.
On June 15, 2001, the Center verified that the Complaint met the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").
The undersigned has reviewed the documentary evidence provided by the Complainant and the Center and agrees with the Center’s assessment that the Complaint complies with the formal requirements of the afore-mentioned policies.
The administrative proceeding commenced on June 15, 2001. The same day, the Complaint was notified to Respondent. The Respondent did not submit a response within 20 days as of the commencement of the administrative proceeding (Sub-section 5a of the Rules). Accordingly, the Center notified Respondent on July 5, 2001, that it was in default.
Upon receipt of the necessary Declaration of Independence and Impartiality the Center appointed the undersigned on July 27, 2001, to serve as sole Panelist in this administrative proceeding.
4. Factual Background
The Complainant France-Manche is a French joint stock company, which is a member of the Eurotunnel Group of companies to which belongs also the Channel Tunnel Group Ltd. Whereas the Complainant is the French concessionaire and the owner of numerous Eurotunnel trademarks, the UK partner is the proprietor of Eurotunnel marks registered in the United Kingdom only.
The Complainant has registered the trademark Eurotunnel as a word or device in France since December 27, 1991, for classes 1 to 42, and for several classes as an international registration since August 11, 1986 (wordmark) and April 24, 1987 (device) in numerous countries such as Spain, Germany, Austria, Benelux, Italy, Monaco, Portugal, Switzerland, Yugoslavia (see Annex C for all trademark registrations).
The Eurotunnel Group of companies also runs websites containing information relating to the Complainant's and the Eurotunnel Group's activities under the addresses <eurotunnel.com>, <eurotunnel.fr>, <eurotunnel.net>, <eurotunnel.org>, and <eurotunnel.online.com>.
The Complainant further points out that the Eurotunnel trademarks are well-known in view of the importance and magnitude of the project linking France and the British Island by a tunnel under the Channel. When the project was decided in 1986 involving the French President and the British Prime Minister, there was an enormous interest from the media. The project involved many corporate and institutional investors from major countries and came to an end with the inauguration on May 6, 1994 – an event which gathered again a world-wide interest from the press. The total cost for the construction of the Eurotunnel amounted to FRF 46.5 billion and the sales figures for the first semester 2000 amounted to FRF 2,948 million (Annexes E, F, G, and H). The Complainant further indicates that the well-known character of the Eurotunnel trademark has been acknowledged by a recent summary order of a French court (Annex I).
As indicated hereinabove, the Respondent has not submitted any response.
The panel is further unaware of any facts leading to the conclusion that Respondent has tried to transfer, or actually transferred, the Domain Name to Complainant.
5. Parties' Contentions
The Complainant alleges that the Domain Name is confusingly similar to Complainant's Eurotunnel trademark, because "eurotunel" and "eurotunnel" only differ by one letter, namely the "n", which phonetically has no influence on the pronunciation of the Respondent's Domain Name. The two denominations would be identical phonetically and conceptually.
Pursuant to Complainant, the Respondent has no rights or legitimate interest in respect of the Domain Name. It has not been licensed or otherwise authorised by the Complainant or any other member of the Eurotunnel Group to use the Eurotunnel or confusingly similar trademarks.
Pursuant to Complainant, the Domain Name <eurotunel.com> has been registered by the Respondent in bad faith, as it could not ignore the Complainant's trademark rights in view of the exceptional fame of the trademarks and tradename Eurotunnel in the whole world and, in particular, in Europe for almost 15 years.
The Complainant indicates that he was informed of the existence of the Domain Name at the end of October 1999. The registrant of the Domain Name was at that time a Spanish company called Eurotunel.e-mail Services in Barcelona. The Complainant sent various claim letters and reminders which remained unanswered (Annex J). Investigations carried out by Complainant could not trace the existence of the registrant or any company at the address indicated with the Registrar (Annex K).
In mid-November 2000, the Complainant was informed that the <eurotunel.com> Domain Name was now registered by Respondent and via the Registrar Tucows.com.
A new claim letter was sent to the Respondent on December 19, 2000, which came back with the remark "unknown". According to a trade register datasearch, the company Cimagotipo went into liquidation in June 1998 (Annex L).
A private investigator found, in March 2001, that no business could be carried out at the address indicated with the Registrar, since it corresponds to a burnt building. A last reminder sent by fax on March 29, 2001, remained unanswered (Annex M). The Complainant concludes that it appears impossible to obtain an answer and try to settle this matter directly with Respondent. The fact that the Respondent applied for the Domain Name in the name of a company which does not exist or cannot be traced and identified evidences also its bad faith.
Furthermore, the Domain Name <eurotunel.com> does not resolve to a website or other online presence, although its registration was made in 1999 and the Respondent does not carry out any activity.
In Complainant's view the situation is similar to that in Telstra Ltd. v. Nuclear Marshmallows Inc. (WIPO Case D2000-0003), where the panel considered that passive holding of a domain name satisfies the requirement of paragraph 4(a)(iii) that the domain name is being used in bad faith by Respondent.
Complainant therefore concludes that the three elements set out at paragraph 4(a) of the Policy are met and that the Domain Name should be transferred to the Complainant.
Respondent has not contested the allegations of the Complainant and is in default.
6. Discussion and Findings
To succeed in its Complaint, Complainant must show that each of the conditions of paragraph 4(a) of the Policy is satisfied, namely that (i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, (ii) Respondent has no rights or legitimate interests in the Domain Name, and (iii) the Domain Name has been registered and used in bad faith.
These three elements will be considered below.
(i) Identity or confusing similarity
The Domain Name <eurotunel.com> is confusingly similar to the trademarks registered by Complainant in various countries. Indeed, the Domain Name is a close variant or a close misspelling of the mark in question and leads to a phonetic proximity which is sufficient to admit the first criterion (see also WIPO Cases D2000-0848, D2000-0937, D2000-0273).
(ii) Rights or legitimate interests
The panel does not have any evidence that Complainant has licensed or otherwise permitted Respondent to use its trademark or to apply for the Domain Name incorporating this mark. As Respondent has not submitted a response, the panel can find no indicia that Respondent has any rights or legitimate interests in the Domain Name pursuant to Article 4(c) of the Policy. On the contrary, the fact that the Domain Name does not resolve and is not used by Respondent indicates Respondent's lack of legitimate rights or interests in the Domain Name. The panel is thus of the opinion that the Complainant has satisfied the second element of the Policy.
(iii) Bad faith
The third element Complainant has to prove to succeed in its Complaint is the registration and use of the Domain Name in bad faith.
The panel has no doubt that Eurotunnel is a well-known trademark as demonstrated by the various annexes produced by Complainant. Due to the fact that Eurotunnel is a well-known trademark and that it has been registered specifically also in Spain, where Respondent is presumably domiciled, Respondent must have been aware of Complainant's rights in the trademark when it acquired the Domain Name. The fact that another company than Respondent has originally registered the Domain Name and that Respondent acquired the Domain Name from the first registrant is not relevant, since Paragraph 4 (b) (i) of the Policy also embodies the acquisition of a domain name in bad faith.
Further elements show in the present case that the Respondent acted in bad faith: The obvious attempt to hide the domain holder's true identity by using a liquidated company and a post address which is not valid (see WIPO Cases D2000-1273 and D2000-0376), and the attempt to lead to a confusion with a well-known trademark by a misspelling Domain Name (typosquatting).
The fact that Respondent does not actively use the Domain Name to offer any products or services does not exonerate Respondent. As it has been held by many other panels the passive holding of a domain name may be sufficient to meet the use requirement of Paragraph 4(b) of the Uniform Policy (see WIPO Case D2000-0003).
Therefore, the undersigned is of the opinion that the Domain Name has been registered and used in bad faith in the sense of Article 4(a)(iii) of the Policy. For all these reasons the panel decides to transfer the disputed Domain Name to Complainant.
In the light of the foregoing, the panel concludes and decides that
1. The Domain Name of the Respondent is confusingly similar to the trademark in which Complainant has the right.
2. Respondent has no rights or legitimate interests in respect of the Domain Name.
3. The Domain Name has been registered and is being used in bad faith.
4. The Domain Name <eurotunel.com> shall be transferred to the Complainant.
Dr. Thomas Legler
Dated: August 6, 2001