'europcar.pro' transfer stalls

In Europcar International SASU v Faure (Case D2009-0031, February 17 2009), a World Intellectual Property Organization (WIPO) panel has ordered that the domain name 'europcar.pro' be cancelled.
Europcar International SASU is part of the Europcar group, a car rental company that is well known in Europe. Europcar owns a number of trademark registrations for the term 'Europcar', including:
  • the Community trademark EUROPCAR; and
  • the international trademark EUROPCARS covering, among other countries, Switzerland.
Europcar had operated in Switzerland since 1973 and was present in over 50 locations in that country as of the date of the dispute. Europcar operates its business from a number of websites, but its primary corporate website is connected with the domain name 'europcar.com'.
The '.pro' generic top-level domain (gTLD) is aimed at professionals such as lawyers, doctors and accountants. Registrants under '.pro' must be licensed professionals, in accordance with Paragraph 2 of the RegistryPro Registration Agreement. In 2008 RegistryPro Ltd, the registry responsible for the '.pro' gTLD, opened up the '.pro' gTLD to professionals and professional entities holding credentials from a certifying governmental authority anywhere in the world (for further details please see "‘.pro’ TLD opens up to professionals worldwide"). From July 21 2008, interested parties could pre-register second-level '.pro' domain names.
On July 25 2008 Nicolas Faure (a resident of Lausanne, Switzerland) reserved the domain name 'europcar.pro'. Upon discovering this, Europcar sent a cease and desist letter to Faure demanding that he stop using the EUROPCAR mark and cancel the domain name reservation. Faure did not respond to the letter and, when the '.pro' gTLD was relaunched on September 8 2008, registered the domain name. The domain name resolved to a parking page generated by the registrar, on which one could read "The website you have requested doesn't exist" and "The domain name associated with this website is currently being 'parked' by its current owner".
Considering that the registration and the parking of the domain name was illegitimate, Europcar filed a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) in an attempt to recuperate the domain name. To succeed under the UDRP, a complainant must prove all three of the requirements set out in Paragraph 4(a) - namely, that:
  • the domain name registered by the respondent was identical or confusingly similar to a trademark or service mark in which the complainant had rights;
  • the respondent had no rights or legitimate interests in the domain name; and
  • the domain name had been registered and was being used in bad faith.
With regard to the first element, Europcar relied on its trademark EUROPCAR. Faure failed to submit a response in the UDRP proceedings, so the only information on the record was the complaint. The panel was satisfied that Europcar was the owner of a large number of trademark registrations for the term 'Europcar'.
In respect of the second element, Europcar stated that Faure had never used the domain name in connection with a good-faith offering of goods or services. Europcar also argued that in view of its rights, "it would be impossible for [Faure] to acquire any rights or legitimate interest in the domain name in question". Europcar furthermore contended that there was no evidence that any of the other examples of rights or legitimate interests set out in Paragraph 4(c) of the UDRP was present.
The panel noted that it could be deduced from Europcar's cease and desist letter that Europcar had never authorized Faure to use its marks. The panel concluded that the only reasonable inference that could be drawn was that Faure had sought to register, and retained, the domain name with a view to taking unfair advantage of the reputation of the EUROPCAR mark. This was sufficient for the panel to conclude that Faure lacked rights or legitimate interests in the domain name.
In support of the third element, Europcar asserted that in light of the reputation of its brand in Switzerland, it was inconceivable that Faure was unaware of Europcar when he registered the domain name. Europcar also claimed that although there was passive holding of the domain name only, both registration and use in bad faith were present since the facts of this case were, in essence, the same as those in Telstra Corporation Limited v Nuclear Marshmallows.
In Telstra, it was decided that:
  • the lack of active use of a domain name did not prevent a finding of bad faith; and
  • a panel must examine all the circumstances of a case to determine whether a respondent was acting in bad faith.
The panel found that in spite of the absence of any clarifications from Faure as to why he registered the domain name, the only credible explanation could be that he had tried to take unfair advantage of the reputation of the EUROPCAR mark. It did not matter exactly how such unfair advantage would materialize for the purposes of the proceedings. Although the panel expressed reservations about the far-reaching nature of any assertion that a domain name cannot be conceivably used without infringement, it concurred with Europcar that this was a case where the Telstra criteria applied and that it was difficult to conceive any use of the domain name by Faure that would not involve bad faith.
The panel also noted that the case concerned a '.pro' domain name and that it was unlikely that the domain name at issue would be chosen by an individual purporting to offer professional services similar to those offered by Europcar. Nevertheless, Faure had, in all likelihood, made certain representations as to his 'professional' status when he registered the domain name, in line with the requirements for registration of '.pro' domain names. The panel considered that any misrepresentation made to the registry at the time of registration would be another factor suggesting bad faith. However, as Europcar had advanced no arguments in relation to this issue, the panel did not consider it further.
Europcar requested that the panel order the transfer of the domain name or, "if the panel considers that it is unable to make such a decision, that the domain name be cancelled". The panel pointed out that registrants of '.pro' domain names must certify that they offer professional services and hold credentials from a certifying governmental authority. However, Europcar had not provided such certification or any other argument or evidence. Therefore, the panel found it inappropriate to transfer the domain name in this case and ordered that it be cancelled.  
It is easy to see why the panel carefully considered the remedy requested in this case. The cancellation of a domain name implies its deletion from the domain name system by the registrar. Once a domain name has been deleted, it will become available for registration again, which entails the risk of a respondent or any other party registering the domain name anew. If that happens, a complainant would have to initiate another UDRP proceeding to contest such registration, thus incurring significant unnecessary costs. However, in this case the risk of re-registration would appear to be lower given the eligibility requirements.
David Taylor, Lovells LLP, Paris

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