Euromaster Services et Management v Privacy Protected by Hostnet

WIPO Case No. DNL2024-0032

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Euromaster Services et Management v. Privacy Protected by Hostnet

Case No. DNL2024-0032

1. The Parties

The Complainant is Euromaster Services et Management, France, represented by Dreyfus & associés,

France.

The registrant of the disputed domain name is Privacy Protected by Hostnet, Netherlands (Kingdom of the),
(the “Respondent”). The effective domain name user and party in interest in these proceedings is

Bandenservice roban B.V., Dhr. Danny Rijnart, Netherlands (Kingdom of the).

2. The Domain Name and Registrar

The disputed domain name <euromaster-roosendaal.nl> is registered with SIDN through Hostnet B.V.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2024. On the disputed domain name.

On July 3, 2024, SIDN 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.

On July 8, 2024, the Registrar in its turn transmitted by email to the Center further information about the effective domain name user and party in interest in these proceedings.

The Center sent an email communication to the Complainant on July 9, 2024, providing the information disclosed by SIDN and the Registrar, and inviting the Complainant to amend the Complaint in this light.

On July 10, 2024, the Complainant requested the suspension of the administrative proceedings, and the proceedings were suspended on the same date. On July 23, 2024, the Complainant sent an email communication requesting the proceedings to be reinstituted. On July 24, 2024, the administrative proceedings were reinstituted.

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The Complainant filed an amended Complaint on July 25, 2024.

The Center verified that the Complaint as amended satisfies the formal requirements of the Dispute
Resolution Regulations for .nl Domain Names (the “Regulations”).

In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent and the effective domain name user and party in interest in these proceedings of the Complaint and the proceedings commenced on July 25, 2024. In accordance with the Regulations, article 7.1, the due date for Response was August 14, 2024. The Center received email communications from the effective domain name user and party in interest in these proceedings on July 10 and 23, 2024.

The Center appointed Rogier de Vrey as the panelist in this matter on August 20, 2024. The Panel finds that
it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of

Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.

4. Factual Background

The Complainant has put forward that it is a key player in the tire and car maintenance field and has one of the largest network of tire service and car maintenance companies in Europe. It serves private customers, truck customers, lease customers, agricultural and industrial customers, and is present in 17 European

countries, operating in over 2,339 locations and selling over 10,000,000 tires each year.

The Complainant is the owner of various trademark registrations for the EUROMASTER mark, including (i) the Benelux trademark EUROMASTER with registration number 495020, registered on November 1, 1991 (duly renewed), covering goods and services in classes 12 and 37, and (ii) Benelux trademark

EUROMASTER with registration number 798204, registered on June 7, 2006 (duly renewed) covering services in class 39, hereinafter collectively referred to as “Mark”.

The Complainant and its affiliates operate, among others, the following domain names:

- <euromaster.com> registered on March 29, 1996; and

- <euromaster.nl> registered on August 6, 1996.

The Center was informed by SIDN that the disputed domain name was registered by the Respondent on domain name has been directing to the Registrar’s default page.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain name – <euromaster-roosendaal.nl> – is identical or confusingly similar to the Complainant’s Mark – EUROMASTER – as it fully incorporates the Complainant’s well-known Mark, followed only by a hyphen and the geographical term “roosendaal” (one of the locations in the Netherlands where the Complainant is operating its business). The “.nl” county code Top-Level Domain may be disregarded when carrying out the confusing similarity test.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts that the Respondent does not have:

- any affiliation with the Complainant, nor have they been authorized by the Complainant to use and
register its Mark, or to seek registration of any domain name incorporating said Mark;

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- any bona fide use of the disputed domain name in connection with an offering of goods or services nor
any demonstrable preparations to so use the disputed domain name;

- is not commonly known by EUROMASTER; and

- is not making legitimate, noncommercial or fair use of the disputed domain name.

In addition, the Complainant asserts that the disputed domain name was registered in bad faith and by not making any (fair or legitimate noncommercial) use of the disputed domain name, it is also used in bad faith. At the time of registration of the disputed domain name, the Respondent should have been aware of and

have known of the Complainant’s Mark and the fact that registration would constitute an infringement on the
Complainant’s trademark rights. Finally, the registration of the disputed domain name prevents the

Complainant from using it.

B. Respondent

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

In its email communication of July 23, 2024, the effective domain name user and party in interest in these proceedings stated that it would be willing to accept an offer for the disputed domain name.

6. Discussion and Findings

Pursuant to article 2.1 of the Regulations the Complainant must establish on the balance of probabilities that the disputed domain name is identical or confusingly similar to the Complainant’s Mark; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name has

been registered or is being used in bad faith.

Since the Respondent has not submitted a Response, the Panel will make its decision based solely on the considers it to be without basis in law or in fact.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established the requirement of article 2.1(a) of the Regulations.

The Complainant owns the Benelux trademark for EUROMASTER and therefore enjoys protection under

Dutch (Benelux) law.

Pursuant to article 2.1(a) of the Regulations and section 1.11 of the WIPO Overview of WIPO Panel Views
on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)[1] the country code Top-Level-Domain
“.nl” may be ignored when assessing the similarity between the disputed domain name on the one hand, and
the asserted Mark on the other (see, Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No.
DNL2008-0008).

[1] In view of the fact that the Regulations are (to an extent) based on and substantially similar to the Uniform Domain Name Dispute

The Panel concludes that the disputed domain name is confusingly similar to the Complainant’s Mark, as it fully incorporates the Mark, with only the addition of a hyphen and the geographical term “roosendaal”. According to section 1.8 of the WIPO Overview 3.0, adding a hyphen and a geographical term does not prevent a finding of confusing similarity under the first element.

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B. Rights or Legitimate Interests

The Panel finds that the Complainant has established the requirement of article 2.1(b) of the Regulations.

To establish this second requirement, the Complainant must make a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Since, generally speaking, proving that a respondent lacks rights or legitimate interests in a domain name may lead to the difficult if not impossible

task of proving negative circumstances, it is sufficient for the Complainant to present prima facie evidence to
shift the burden of proof to the Respondent (see, section 2.1.1 of the WIPO Overview 3.0; and Auto 5 v. E.
Shiripour, WIPO Case No. DNL2008-0027).

The Respondent has not formally replied to the Complainant’s contentions and thus has not rebutted the Complainant’s contentions. While the communications received during the proceeding were from the effective domain name user and party in interest in these proceedings, said communication reflected said party’s control and interest in the disputed domain name, as well as the intent for commercial gain by inviting an offer for the disputed domain name.

The evidence submitted by the Complainant shows that the Respondent is not making any bona fide use of the disputed domain name in connection with an offering of goods or services nor is the Respondent making legitimate, noncommercial or fair use of the disputed domain name. Instead, the disputed domain name

leads to the Registrar’s default page. Thus, the Panel finds that the Complainant has established a prima facie case that the Respondent does not have any rights to or legitimate interests in the disputed domain name, while the Respondent has failed to come forward with any evidence to the contrary.

The Panel further notes the composition of the disputed domain name, which combines the Complainant’s trademark with a geographical term directly associated with the Complainant’s operations, carries a risk of implied affiliation with the Complainant that cannot constitute fair use under the circumstances of this

proceeding. WIPO Overview 3.0, section 2.5.1.

The Panel concludes that there is no evidence and there are no indications that the Respondent has rights to or legitimate interests in the disputed domain name.

C. Registered or Used in Bad Faith

In light of the Complainant’s contentions supported by the evidence submitted by the Complainant, the Panel finds that the Complainant has established the requirement of article 2.1(c) of the Regulations.

At the time of registration of the disputed domain name, the Complainant’s Mark was already registered and well-known. Therefore, the Respondent must have been aware of the Mark at the time of registration. The apparent lack of any good faith attempt to ascertain whether the Respondent was registering and using a

third-party trademark – such as by conducting online searches – supports a finding of bad faith.

In addition, the Panel finds that the effective domain name user’s offer on July 23, 2024, to transfer the
disputed domain name to the Complainant in exchange for a monetary payment, coupled with the lack of any
bona fide use of the disputed domain name or any explanation for the registration and use of such, suggests
that the intent behind the registration of the disputed domain name was for selling, renting, or transferring it
to the Complainant for a sum exceeding the direct costs associated with the disputed domain name (see,

Yves Saint Laurent Parfums v. Zhao Ke, WIPO Case No. DNL2022-0020).

Finally, the Panel also takes into consideration that the Respondent’s failure to respond to the Complainant’s
cease and desist letter, or to otherwise engage, further reinforces an inference of bad faith (Brunswick
Corporation and Marine Power Pty Limited v. Michael Sorkin, Mercury Outboard Marine, WIPO Case No.
D2021-1575).

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Therefore, the Panel finds that the Complainant has provided sufficient evidence of bad faith registration and bad faith use by the Respondent, as set out in article 3.2(a) of the Regulations.

7. Decision

For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the disputed domain name <euromaster-roosendaal.nl> be transferred to the Complainant.

/Rogier de Very/
Rogier de Vrey
Panelist
Date: September 3, 2024

Resolution Policy (“UDRP”), it is well established that both cases decided under the Regulations and cases decided under the UDRP –
and therefore the “WIPO Overview 3.0” – may be relevant to the determination of this proceeding (Aktiebolaget Electrolux v. Beuk
Horeca B.V., WIPO Case No. DNL2008-0050).