WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Eurofins Scientific (Ireland) Limited v. WhoisGuard, Inc. / Peter Ian, Tractors Equipment I.T.E

Case No. D2020-0786

1. The Parties

The Complainant is Eurofins Scientific (Ireland) Limited, Ireland, represented by IP Twins S.A.S., France.

The Respondent is WhoisGuard, Inc., Panama / Peter Ian, Tractors Equipment I.T.E, Ireland.

2. The Domain Name and Registrar

The disputed domain name <eurofins.ltd> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2020. On April 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 12, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 14, 2020.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 7, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 13, 2020.

The Center appointed James Bridgeman as the sole panelist in this matter on May 26, 2020. The Panel finds that it was properly constituted. 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.

4. Factual Background

The Complainant is an international group of laboratories, providing testing and support services to the pharmaceutical, food, environmental, agricultural science and consumer products industries and to governments and is the owner of the EUROFINS trademark for which it has registered a large international portfolio of trademark and service mark registrations for the EUROFINS mark and other marks incorporating the word “eurofins” including in the European Union where the Respondent is situated. The Complainant’s registrations include:

- European Union Trade Mark EUROFINS (device) no. 2907848, registered on May 12, 2004, duly renewed, and designating goods and services in International classes 1, 5, 9, and 42;

- International trademark EUROFINS (device) no. 793105A, registered on October 29, 2002, duly renewed, and designating goods and services in International classes 1, 5, 9, and 42.

The disputed domain name <eurofins.ltd> was registered on February 5, 2020, and does not resolve to an active website.

There is no information available about the Respondent except for that provided in the Complaint, the Registrar’s WhoIs, and the Registrar’s response to the Center’s request for verification of the registration details of the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant claims rights in the EUROFINS trademark acquired through its ownership of the portfolio of trademark registrations described above, and its use of the mark in its provision of its analytical services through its international network of more than 800 laboratories across 47 countries where it employs more than 47,000 staff and had an annual revenue in 2019 of approximately EUR 4.5 billion.

The Complainant submits that the disputed domain name is identical to its EUROFINS service mark as it consists of the mark in its entirety, without any adjunction of letter or word.

The Complainant argues that the addition of the Top-Level Domain (“TLD”) extension “.ltd” is not significant in determining whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark, however if it were to be taken into consideration it would only reinforce the risk of confusion that may arise in the mind of Internet users of average attention because the Complainant is legally formed as a limited liability company, which designation is abbreviated as “Ltd”.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant avers that it has carried out searches and has found no evidence that the Respondent is known by the disputed domain name or has any trademark rights in <eurofins.ltd>. Additionally, the Complainant asserts that the Respondent has not been licensed or authorised by the Complainant to use its EUROFINS trademark.

There is no evidence that the Respondent has, before the original filing of the Complaint, used or made preparations to use the disputed domain name in relation to a bona fide offering of goods or services and in fact the disputed domain name is linked to email servers which, if used by the Respondent, cannot demonstrate an offering of goods or services but could, on the contrary, be used for phishing or similar fraudulent activities, namely <eurofins.ltd. 1799 IN MX 10 mx1.privateemail.com> and <eurofins.ltd. 1799 IN MX 10 mx2.privateemail.com>.

The Complainant adds that in these circumstances, the burden rests on the Respondent to establish the Respondent’s rights or legitimate interests the Respondent may have or have had in the disputed domain name.

The Complainant also alleges that the disputed domain name was registered and is being used in bad faith, arguing that the Complainant and its trademarks are so well-known, that it is inconceivable that the Respondent ignored the Complainant or its earlier rights in the mark EUROFINS.

UDRP panels have established that knowledge of the complainant’s intellectual property rights, including trademarks, at the time of registration of the disputed domain name, proves bad faith registration. Citing ALSTOM v. Domain Investments LLC, WIPO Case No. D2008-0287, and NBC Universal Inc. v. Szk.com / Michele Dinoia, WIPO Case No. D2007-0077.

The Complainant furthermore submits that it is most likely that the Respondent chose and registered the disputed domain name because of its identity with the Complainant’s EUROFINS mark in the hope and expectation that Internet users searching for the Complainant’s services and products would instead come across the Respondent’s site. Such a domain name does not provide a legitimate interest under the Policy. Citing Shaw Industries Group Inc. Columbia Insurance Company v. Administrator, Domain, WIPO Case No. D2007-0583, and Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267.

Finally the Complainant asserts that the disputed domain name is being passively held by the Respondent and argues that the apparent lack of so-called active use of the disputed domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith.

Citing the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the Complainant argues that the relevant issue is not limited to whether the Respondent is undertaking a positive action in bad faith in relation to the disputed domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. Furthermore referring to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the Complainant submits that examples of what may be found to be cumulative circumstances indicative of bad faith include that the Complainant has a well-known trademark, that no Response to the Complaint has been filed, and the Respondent’s concealment of its identity.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to establish that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has adduced clear and convincing evidence of its rights in the EUROFINS trademark acquired through its ownership of the portfolio of trademark registrations and its use of the mark in its international laboratory services described above.

The disputed domain name consists of the Complainant’s EUROFINS service mark in its entirety in combination with the TLD extension “.ltd”.

In the circumstances of this case, the TLD extension may be ignored for the purposes of comparison of the disputed domain name and the Complainant’s mark because it is recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.

This Panel finds therefore that the Complainant has succeeded in the first element of the test in paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name alleging that:

- having carried out searches, the Complainant has found no evidence that the Respondent is known by the disputed domain name or has any trademark rights any rights in <eurofins.ltd>;

- the Complainant has not licensed or authorised the Respondent to use its EUROFINS trademark;

- there is no evidence that the Respondent has used or made preparations to use the disputed domain name in relation to a bona fide offering of goods or services;

- the disputed domain name is linked to email servers which, if used by the Respondent, cannot demonstrate a bona fide offering of goods or services but could, on the contrary, be used for phishing or similar fraudulent activities, namely <eurofins.ltd. 1799 IN MX 10 mx1.privateemail.com> and <eurofins.ltd. 1799 IN MX 10 mx2.privateemail.com>.

It is well established that if the Complainant makes out a prima facie case, the burden of production shifts to the Respondent to prove its rights or legitimate interests in the disputed domain name. The Respondent has failed to file any response to the Complaint and so has not discharged the burden. In the circumstances the Panel must find that on the balance of probabilities the Respondent has no rights or legitimate interests in the disputed domain name. This Panel finds that the Complainant has therefore succeeded in the second element of the test in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant is a large international organisation with more than 800 laboratories across 47 countries, employing 47,000 staff and with annual revenues of approximately EUR 4.5 billion. The EUROFINS trademark is distinctive and so on the balance of probabilities the Complainant and its EUFOFINS mark was known to the registrant when the disputed domain name was chosen and registered. In fact, given the distinctive character of the mark and the nature of the disputed domain name, it is implausible that the disputed domain name was chosen and registered for any reason other than to create a reference to the Complainant and its reputation and goodwill in the EUROFINS mark.

Based on the record and evidence in this case, it seems that the disputed domain name is being passively held by the Respondent and in the absence of any Response or explanation from the Respondent, this Panel accepts the Complainant’s submission that such passive holding is evidence of bad faith use of the disputed domain name by the Respondent.

In reaching this conclusion this Panel has considered:

- the distinctive character of the Complainant’s service mark;

- the fact that the disputed domain name is identical to the Complainant’s service mark;

- that the word “eurofins” has no obvious meaning other than as a mark to designate the Complainant’s service;

- that the disputed domain name is not being put to any active use and that the Respondent has failed to respond to this Complaint;

As this Panel has found that the disputed domain name was registered and is being used in bad faith, the Complainant has therefore succeeded in the third element of the test in paragraph 4(a)(iii) of the Policy and is entitled to the remedy requested in the Complaint.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <eurofins.ltd> be transferred to the Complainant.

James Bridgeman SC
Sole Panelist
Date: June 9, 2020