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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eurail Group GIE v. Epasses
Case No. D2003-0393
1. The Parties
The Complainant is Eurail Group GIE, of Utrecht, The Netherlands, represented by De Brauw Blackstone Westbroek N.V., of The Netherlands.
The Respondent is Epasses, of San Francisco California, United States of America.
2. The Domain Names and Registrars
The disputed domain names are <eurail.biz>, <eurailpass.biz> and <eurailpasses.biz> ("the Domain Names") registered with BB Online UK Ltd (in the case of eurail.biz) and Go Daddy Software (in the case of the other two domain names) ("the Registrars").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 23, 2003. The Center transmitted its standard request for registrar verification to the Registrars the same day. The Registrars responded the same day verifying the required matters, save that Go Daddy Software stated that it was not in receipt of the Complaint and BB Online UK Ltd did not confirm whether the registration agreement included a submission to the court jurisdiction at its principal office. The Center notified a series of deficiencies of the Complaint to the Respondent on May 28, 2003, namely that the Complaint had not been submitted in electronic format, did not identify and had not been received by the correct registrar of the second and third domain names, did not confirm that it had been sent to the Respondent, and did not contain a correct submission to jurisdiction. The Complainant submitted an amended Complaint rectifying these deficiencies by email on June 1, 2003, and hard copy received by the Center on June 6, 2003.
The Center verified on June 10, 2003, that the amended Complaint satisfied the formal requirements of the 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").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 10, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2003. The Response was filed with the Center on June 30, 2003.
The Center appointed Jonathan Turner as the sole panelist in this matter on July 9, 2003. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly served on the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant is a joint venture of 34 European railway and shipping undertakings selling tickets and passes for use on its members’ services. The Complainant trades under the name "Eurail" and uses the names "Eurailticket" and "Eurail Pass" for its point-to-tickets and passes respectively. The Complainant was formed in 2001, but is the successor to the Eurail Community, founded in 1959, which has supplied tickets and passes under these names for many years. The Complainant has registered "EURAIL" and "EURAILPASS" as trademarks in the US and other countries.
The Respondent has a website at www.eurailpasses.net offering Eurail Passes and other tickets for uses on railways in Europe. The Respondent registered the Domain Names in March 2002, but they are not currently directed to this or any other active website. The Respondent has also registered the domain name <eurail.us>.
The Complainant sent a cease and desist letter in relation to the Domain Names to the Respondent on April 11, 2003, but received no reply.
5. Parties’ Contentions
The Complainant contends that the Domain Names are identical or confusingly similar to its trade marks "EURAIL" and "EURAILPASS"; that the Respondent has no legitimate interest in respect of the Domain Names since it has not used them in connection with a bona fide offering of goods or services prior to the dispute; and that the Domain Names were registered and have been used in bad faith, since the Respondent must have been aware of the Complainant’s use of the marks, the Respondent itself has no bona fide use for them, and any use of these Domain Names by the Respondent would be misleading. The Complainant seeks transfer of the Domain Names.
The Respondent does not appear to dispute that the Domain Names are identical or confusingly similar to the Complainant’s trademarks. However, the Respondent contends that it has a legitimate interest in respect of the Domain Names in that it intends to use them in conjunction with its established website at www.eurailpasses.net to sell Eurail Passes to customers primarily in North America, and that there is no likelihood of confusion between the Complainant’s and the Respondent’s websites. The Respondent also denies that it registered or has used the Domain Names in bad faith, stating that other parties openly sell Eurail Passes through websites with similar names apparently without objection from the Complainant, and that it was not aware that the Complainant had the trademarks alleged to be infringed. The Respondent contends that the Complaint should be dismissed.
6. Discussion and Findings
In accordance with paragraph 4 of the Policy, the Complainant must prove:
A. that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
B. that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
C. that the Domain Name has been registered and is being used in bad faith.
Each of these requirements will be considered in turn.
A. Identical or Confusingly Similar to Mark in which Complainant has Rights
The Panel is satisfied that the Complainant has registered trade mark rights in the US and other countries in the names "EURAIL" and "EURAILPASS", and unregistered trade mark rights in "EURAIL PASSES" on account of the use of this name for many years to designate the passes sold by the Complainant and its predecessor. Disregarding the gTLD suffix, as is appropriate for the purpose of this comparison (see e.g. the WIPO Panel Decision in WIPO Case No. D2001-0154, <kcts.com>), the Domain Names are identical to the Complainant’s marks. In any event, the Panel has no doubt that the Domain Names are confusingly similar to the Complainant’s marks. The first requirement is satisfied.
B. No Rights or Legitimate Interests of Respondent
The Domain Names <eurailpass.biz> and <eurailpasses.biz> are effectively identical to the domain name <eurailpasses.net> which the Respondent claims to have used for a bona fide business of selling Eurail Passes. The Panel considers that they are "corresponding" names within the meaning of paragraph 4(c)(i) of the Policy.
The Response is thin on evidence supporting its claimed use of the website, at www.eurailpaases.net, particularly in relation to dates, but the Panel has concluded that there is sufficient evidence to require the Panel to determine the case on the basis that the Respondent had traded or made preparations to trade from this address before notice of the dispute. Although paragraph 4(c) of the Policy refers to the Respondent demonstrating its rights or legitimate interests, inter alia by evidence of demonstrable preparations to use a name corresponding to the domain name, it is clear from the last sentence of paragraph 4(a) of the Policy that the overall burden of proof remains on the Complainant. On the evidence before the Panel, the Complainant has not shown on the balance of probabilities that the Respondent’s claims to have developed and used its website at www.eurailpasses.net to sell Eurail Passes prior to the dispute are untrue.
It is necessary next to determine whether the use of the domain name <eurailpasses.net> has been bona fide. In accordance with paragraph 15(a) of the Policy, the Panel must consider this in the context of the rules and principles of law that it deems applicable. In this case the Respondent is in California, USA, but its website may be accessed and used from other countries. In the view of the Panel it is appropriate to take into account principles of Californian State and US Federal law which are also widely accepted in trade mark laws around the world.
The Panel considers that these principles include the proposition that persons other than the trade mark owner are entitled to use the mark for the purpose of selling products placed on the market under that mark by its owner, provided they do not mislead or cause confusion: see the discussion and cases cited in the decision of the WIPO Panel in WIPO Case No. D2000-1778 <philips-indonesia.com>.
In the present case, the Respondent appears to be using its website at www.eurailpasses.net to sell primarily Eurail Passes of the Complainant, but also to sell other railway passes without a clear indication that these are not provided by the Complainant. The Panel suspects that there is a risk of confusion. However, the Panel also bears in mind the possibility that the Respondent’s website has been operated for some time, and also the evidence that other persons are selling Eurail Passes at websites with similar names, presumably without objection by the Complainant. In all the circumstances, the Panel is not satisfied on the balance of probabilities that the Respondent’s use of this website has been illegitimate.
The Panel is reinforced in this conclusion by the consideration that the Policy was instituted to provide an expeditious and relatively inexpensive means of resolving clear cases of abuse of the Domain Name system. In the circumstances of this case, the issue of whether the Respondent’s activities have constituted trade mark infringement or unfair competition is one which would more properly be determined in court proceedings than under this administrative procedure.
The Panel therefore concludes that the Respondent has a legitimate interest in respect of the Domain Names <eurailpass.biz> and <eurailpasses.biz>. The second requirement is not satisfied in relation to these Domain Names.
The position in relation to <eurail.biz> is different. This Domain Name is effectively identical to the Complainant’s name and does not correspond to the domain name which has apparently been used by the Respondent. It reflects the corporate name of the Complainant rather than the designation of a product which the Respondent is selling. The Panel concludes on the balance of probabilities that the Respondent does not have a right or legitimate interest in respect of this Domain Name. The second requirement is satisfied in relation to this Domain Name.
C. Registered and Used in Bad Faith
The Respondent has not yet pointed any of the Domain Names in dispute to its website at www.eurailpasses.net, despite registering them over a year ago. However, the Panel considers that this inactivity is insufficient to show that the Respondent has an intention other than the obvious one of pointing them to or using them for this website.
The Panel must therefore consider whether the registration and holding of the Domain Names with the intention of directing them to or using them for this website have been in bad faith.
As discussed above, the Panel has concluded that it must determine this case on the basis that the Respondent has legitimately used the domain name <eurailpasses.net> for this website. In the view of the Panel, it must follow that the registration and holding of the virtually identical Domain Names <eurailpasses.biz> and <eurailpass.biz> were not in bad faith. The Panel concludes that the third requirement of the Policy is not satisfied in relation to these Domain Names.
It remains to consider the position in relation to <eurail.biz>. The Panel considers that the Respondent’s use of this Domain Name would represent that the Respondent is not just selling the Complainant’s passes, but is the Complainant itself. Furthermore, the Respondent’s website, in relation to which it proposes to use the Domain Name, does not contain any clear statement that it is not a website of the Complainant. Although the Respondent contends that no one would confuse its website for that of the Complainant, this contention assumes familiarity with both websites. In practice, many Internet users would come across the Respondent’s website without seeing the Complainant’s. In those circumstances, users could well assume that a website at www.eurail.biz was that of the Complainant itself.
The Panel considers that on the balance of probabilities, the Respondent registered and held the Domain Name <eurail.biz> with the intention of using it to attract internet users to its website by creating a likelihood of confusion that its website is the website of the Complainant itself. Accordingly, the Panel concludes that this Domain Name was registered and has been used in bad faith, and that the third requirement is satisfied in relation to it.
In view of its identity to the Complainant’s name, the Panel considers that the Domain Name <eurail.biz> should be transferred to the Complainant.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <eurail.biz> be transferred to the Complainant; and denies the Complaint in relation to the Domain Names <eurailpasses.biz> and <eurailpass.biz>.
Dated: July 17, 2003