Domain name - Domain name dispute resolution policy - Legitimate interest - Bad faith registration - Bad faith use - Identical - Confusingly similar - Cybersquatting - Trademark - Word mark - Device mark - Constructive knowledge - Well known marks - Cease and desist letter - Pattern of conduct - Burden of proof - Eurocards.

Complainant was owner of marks EUROCARD, EUROCARD E, and E EUROCARD, used in connection with payment related products and services offered to European banks. The marks were registered in numerous countries, the earliest registration being in the United Kingdom in 1964. Respondent registered the domain name eurocards.com.

HELD, Name Transferred to Complainant

Complainant asserted that due to the fame and registration of the EUROCARD marks, Respondents have constructive knowledge of those marks. For the purposes of this Complaint, the Panel finds that the EUROCARD mark is exceptionally well known and that it is inconceivable that Respondents did not have actual knowledge that in registering the domain name they were infringing Complainant's marks.

In the absence of a response, there is no challenge to the facts and evidence asserted by Complainant. Nevertheless, Complainant must prove each of the requirements of paragraph 4a of the Policy.

The domain name at issue is to all intents and purposes identical with Complainant's EUROCARD mark, and is confusingly similar to Complainant's E EUROCARD and EUROCARD E marks. The mere use of the plural in the domain name is of no relevance for the purposes of paragraph 4a(i) of the Policy.

There is absolutely no evidence to suggest that Respondents' activities fall into any circumstances set out in the Policy which demonstrate their rights or legitimate interest. Further, Complainant has not licensed or otherwise permitted Respondents to use its marks or use a domain name incorporating those marks.

The domain name was registered in bad faith. The false representation and warranty made in the Registration Agreement speak for themselves. Complainant also points to its unanswered cease and desist letter of August 1999. As to pattern of conduct, there is uncontested evidence of Respondents' cybersquatter activities.

Respondents' use of the domain name through banner advertisements falls within the bad faith provision of the Policy. Even if the Panel is incorrect in the foregoing finding, the concept of bad faith use is not limited to positive action; inaction is within the concept. Further, the Panel is entitled to and does draw an inference adverse to Respondents from their failure to respond to the Complaint.

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Cases referred to

Aeroturbine.com, Case FA 002000093674 (Nat. Arb. Forum).
Europay International S.A. v. Eurocard.com, Inc., EuroCard.org, and Chad Folkening,  Case D2000-0173 (WIPO).
SGS Société Générale de Surveillance S.A. v. Inspectorate, Case D2000-0025 (WIPO)
Telstra/Nuclear Marshmallows, Case 2000-0003 (WIPO).
 

Perkins, Panelist: -
 

1. The Parties

The Complainant is Europay International S.A. of Chaussee de Tevuren 198A, B-1410 Waterloo, Belgium.

The Respondent is Domaines Ltd and Cecilia Ng, both of P O Box 243, Sharjah, United Arab Emirates. 

2. The Domain Name and Registrar

The domain name at issue is:

EUROCARDS.com

and the Registrar is Network Solutions, Inc.

3. Procedural History

The WIPO Arbitration and Mediation Center [the Center] received the Complaint on May 26, 2000 [electronic version] and on May 29, 2000 [hard copy]. The Center verified
that the Complaint satisfies 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 Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [the Supplemental Rules]. The Complainant made
the required payment to the Center.

The formal date of the commencement of this administrative proceeding is June 8, 2000.

On June 4, 2000 the Center transmitted via email to Network Solutions, Inc a request for registrar verification in connection with this case and on June 6, 2000 Network
Solutions, Inc transmitted by email to the Center Network Solutions, Inc's verification response confirming that the registrant is Domaines Ltd and the contact for both
administrative and billing purposes is Cecilia Ng.

Having verified that Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on June 8, 2000, to:

[email protected]
[email protected]; and 
[email protected]

this Notification of Complaint and Commencement of the Administrative Proceedings. The Center advised that the Response was due by June 27, 2000. On the same day
the Center transmitted by fax and by mail copies of the foregoing documents to:

Domaines Ltd / Vanilla Limited
(Att. Cecilia Ng)
P O Box 24323
Sharjah 
United Arab Emirates

and by fax to

Cecilia Ng
+1 212 253 4216

No Response was received from the Respondents or either of them by the due date of June 27, 2000. On July 3, 2000, Notice of Respondent Default was sent to the
Complainant and to the Respondents using the same contact details and methods as were used for the Notification of Complaint and Commencement of the Administrative
Proceedings. No reply by Respondents to the Notification of Respondents' Default was received.

Having received on July 11, 2000, Mr. David Perkins' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted to the parties a
Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. David Perkins was formally appointed as the Sole Panelist. The Projected
Decision Date was July 27, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the
Supplemental Rules.

Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under para. 2(a) of the Rules "to
employ reasonably available means calculated to achieve actual notice to Respondent". Therefore, the Administrative Panel shall issue its Decision based upon the
Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of any Response from the Respondents.

4. Factual Background

4.1 The Complainant 

4.1.1 The Complainant, Europay International S.A., is an international payment system company. The Complainant offers payment related products and services to
European banks. Its products include domestic and cross-border bank cards, credit cards, debit cards and Eurocheques. In 1998, the Complainant states that 200 million
cards offered through its system accounted for a 74% market share for debit cards and 60% market share for debit and credit cards (combined) in Europe.

4.1.2 The Complainant states that it provides various of its products and services under and by reference to the marks EUROCARD: E EUROCARD and EUROCARD E. At
the end of the third quarter of 1999 almost 60 million EUROCARDS were in use in Europe and there were more than 4.5 million EUROCARD acceptance points in Europe.

4.1.3 Though its longstanding strategic alliance with MasterCard International Incorporated, the Complainant is exclusively responsible for the marketing and transaction processing in Europe for the Cirrusä , MasterCard â and Maestroâ brands. The Eurocardâ / MasterCardâ product is comprised of two brands, the EUROCARD mark owned by the Complainant and the MasterCard mark owned by MasterCard International.

4.1.4 Complainant's services include credit card fraud preventive programs, electronic commerce programs and chip migration services. Complainant maintains a website
located at www.europay.com.

4.2 The Respondent

4.2.1 Domaines Ltd, is listed as the registrant of the domain name at issue and Cecilia Ng is listed as the Administrative, Technical Zone and Billing Contact for that
domain name. In the absence of a Response information as to the businesses of the Respondents can be derived only from the Complaint.

4.2.2 Complainant exhibits [Exhibits 12 - 14] Network Solutions, Inc printouts showing Cecilia Ng as the Administrative Contact using NIC handles CN948 and CN919 for
registrants Domaines Ltd: Vanilla Ltd: Domain Leasing Ltd: Domain Finance Ltd: Universal Artists Ltd: Universal Media Inc: Offshore Information Inc: World Artists Inc:
Maritime Artists Ltd: Thames International Inc and others. The Complaint asserts that Cecilia Ng is a known cybersquatter who registers domain names consisting of
trademarks owned by others and who has registered over 9,000 domain names under the above registrant names.

4.2.3 By way of example, the Complainant exhibits [Exhibit 12] NIC printouts of domain names registered by Cecilia Ng, none of which are licensed or otherwise authorised
by the owners of the trade marks / trade names.

Domain Name   Registrant   True Owner 

CNN2000.com  Vanilla Ltd   CNN 
CAPITAL-CITIES.com Maritime Artists Ltd  ABC, Inc 
PEROT2000.com  Domaine Sales Ltd  Ross Perot 
UNICEFNEWS.com  Universal Media Inc     UNICEF 
MELBOURNEPRESS.com Vanilla Ltd   Melbourne University Press 
BEIRUTDAILY.com  Vanilla Ltd   Beirut Daily 
MUNICHNEWS.com  Vanilla Ltd   Munich News 
ISRAELDAILY.com  Thames International Inc   Israel Daily 
TOWER-RECORDS.com Vanilla Ltd   Tower Records 

4.2.4 By way of further example of the Respondent's alleged cybersquatter activities, the Complainant refers to a 1998 lawsuit brought by Virgin Enterprises Inc against
Vanilla Ltd in the US District court for the Southern District of New York concerning registration by Vanilla of 23 domain names incorporating the VIRGIN trademark [Exhibit 15] and to a Decision of The National Arbitration Forum dated March 23, 2000 in which Domain Leasing Ltd was ordered to transfer the domain name in issue
[AEROTURBINE.com] to the Complainant, Aeroturbine Inc [Case FA 002000093674].

4.3 The Complainant's Trade Marks

4.3.1 The EUROCARD Mark

The Complainant has provided evidence of its ownership of the word mark EUROCARD in all or some of the following classes for the following goods and services:

9: magnetic cards and micro-circuit cards;

16: financial documents and bank documents: and

36: financial services

in Albania, Andorra, Argentina, Armenia, Austria, Azerbaijan, Belarus, Benelux, Bosnia Herzegovina, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia,
Finland, France, Georgia, Germany, Gibraltar, Greece, Guernsey, Hungary, Iceland, Ireland, Israel, Italy, Jersey, Kazakhstan, Krygyzstan, Latvia, Liechtenstein, Lithuania,
Macedonia, Malta, Moldova, Monaco, Norway, Poland, Portugal, Romania, Russian Federation, San Marino, Slovakia, Slovenia, Spain, Sweden, Switzerland, Tajikistan,
Turkey, Turkmenistan, Ukraine, United Kingdom, Uzbekistan, Vatican City and Yugoslavia.

The earliest of these registrations is 1964 in the United Kingdom. 

4.3.2 The EUROCARD E Mark

The Complainant has provided evidence of its ownership of the word and/or word and device mark EUROCARD E in Class 36 for financial services in the United States of
America, Brazil and Sweden. The US registration claims first use in commerce from February 1965.

4.3.3 The E EUROCARD Mark

The Complainant has provided evidence of its ownership of the word mark and/or word and device mark E EUROCARD in all or some of Classes 9, 16 and 36 in Bolivia,
Algeria, Argentina, Austria, Bahamas, Barbados, Benelux, Canada, Chile, Colombia, Costa Rica, Croatia, Cuba, Czech Republic, Ecuador, Egypt, Estonia, France,
Georgia, Germany, Greece, Guyana, Hungary, Iceland, India, Iran, Ireland, Italy, Jamaica, Japan, Jersey, Kuwait, Latvia, Lebanon, Libya, Liechtenstein, Macedonia, Malta, Mexico, Monaco, Morocco, New Zealand, Norway, Panama, Paraguay, Peru, Philippines, Poland, Ras Al-Khaimah, Romania, Russian Federation, San Marino, Saudi
Arabia, Singapore, Slovakia, Slovenia, South Africa, Spain, Thailand, Tunisia, Turkey, Turkish F.S. Cyprus, Ukraine, Uruguay, Venezuela, Vietnam, Yugoslavia and Zaire.

Many of the registrations date from 1973.

4.3.4 Use, promotion and status of the Complainant's EUROCARD Marks

The Complainant asserts that, by reason of its extensive use and promotion, the EUROCARD mark symbolises very significant goodwill identified with the Complainant and that the mark is one of incalculable value. The Complainant further asserts that due to the fame and registration of the EUROCARD marks the Respondents have
constructive knowledge of those marks. The Complainant refers to WIPO Case D2000-0173 in which the Panel found that the EUROCARD mark was famous at the time
when the domain names in issue in that case were registered.

For the purposes of this Complaint, the Panel finds that the EUROCARD mark is exceptionally well known and that it is inconceivable that the Respondents did not have
actual knowledge that in registering the domain name in issue they were infringing the Complainant's EUROCARD marks.

4.4 Disputed Facts

In the absence of a Response, there is no challenge to the facts and evidence asserted by the Complainant. The Panel finds that the evidence presented by the
Complainant is admissible, relevant, material and convincing.

5. Parties' Contentions

A. The Complainant

The Complainant contends that the Respondents have registered as a domain name a mark which is identical to or confusingly similar to the Complainant's EUROCARD:
EUROCARD E; and E EUROCARD marks, that the Respondents have no rights or legitimate interests in respect of that domain name and the Respondents have
registered and are using that domain name in bad faith.

B. The Respondents

No Response has been submitted. Nevertheless, the Complainant must prove each of the requirements of para. 4a of the Policy, namely: 

- that the Respondents' domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondents have no rights or legitimate interests in respect of the domain name; and

- the domain name has been registered and is being used in bad faith.

6. Discussion and Findings

6.1 Identical or Confusingly Similar

The mere use of the plural in the domain name EUROCARDS.com is of no relevance for the purposes of para. 4a(i) of the Policy. The Panel finds that the domain name in
issue is to all intents and purposes identical with the Complainant's EUROCARD mark and is confusingly similar to the Complainant's E EUROCARD and EUROCARD E
marks. The Complaint satisfies the requirements of para. 4a(i).

6.2 Rights or Legitimate Interests

6.2.1 Para. 4c of the Policy identifies circumstances which, in particular but without limitation, if found by the Panel to be provided based on its evaluation of all the
evidence presented, shall demonstrate the Respondents' rights or legitimate interest for the purposes of para. 4a(ii). There is absolutely no evidence to suggest that the
Respondents' activities fall into any of the circumstances set out in para. 4c.

6.2.2 Rather the reverse. For the reasons set out in paragraph 4.3.4 above, it is inconceivable that the Respondents did not know that the representation and warranty given to NSI at the time of registering the domain name in issue [January 1998] were false. Registration of the domain name would plainly infringe upon or otherwise violate the rights of the Complainant, Europay International S.A.

6.2.3 Further, the Complainant has not licensed or otherwise permitted the Respondents to use its EUROCARD marks or to apply for or use any domain name
incorporating those marks. The Complaint satisfies the requirements of para. 4a(ii) of the Policy.

6.3 Registered and Used in Bad Faith

6.3.1 Para. 4 of the Policy sets out circumstances which, if found by the Panel to be present, "... shall be evidence of the registration and use of a domain name in bad
faith". The Policy goes on to state that those circumstances are not exhaustive of the circumstances indicating registration and use in bad faith.

Registered in Bad Faith

6.3.2 As to registration in bad faith, the false representation and warranty made in the Registration Agreement [see, paragraph 6.2.2 above] speak for themselves. The
Complainant also points to its unanswered cease and desist letter to the Respondents dated August 9, 1999 [Exhibit 17].

6.3.3 The Complaint exhibits [Exhibit 16] the three banner advertisement appearing at the Respondents' under construction website for the domain name in issue.

6.3.4 The Complaint also cites the Panel Decision in WIPO Case D2000-0025 SGS where it was held that setting up a tombstone supposedly not related to the
Complainant is evidence of bad faith for the purposes of para. 4b(ii) of the Policy. As to the pattern of conduct required by that provision of the Policy, there is the
uncontested evidence of the Respondents' cybersquatter activities [see, paras. 4.2.2 to 4.2.4 above]. The Panel finds the Respondents conduct falls within that
contemplated by para. 4b(ii) of the Policy.

Use in Bad Faith

6.3.5 The Panel finds that the Respondents' use of the domain name in issue through the three banner advertisements [see, paragraph 6.3.3 above and Exhibit 16] is an
activity falling within para. 4b(iv) of the Policy.

6.3.6 Even if the Panel is incorrect in the foregoing finding, the concept of a domain name being used in bad faith is not limited to positive action. Inaction is within the
concept [WIPO Case 2000-0003 Telstra/Nuclear Marshmallows].

6.3.7 Further, generally with regard to the requirements of para. 4a(iii) of the Policy the Panel is entitled to and does draw an inference adverse to the Respondents from
their failure to respond to the Complaint. The Panel finds that the Complaint satisfies the requirements of para. 4a(iii) of the Policy.

7. Decision

For all the foregoing reasons the Panel decides that the Complainant has proved each of the three elements of para. 4 of the Policy. Accordingly, the Panel requires that
the registration of the domain name EUROCARDS.com be transferred to the Complainant.
  David Perkins
Sole Panelist
Dated: July 31, 2000