WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Channel Tunnel Group Ltd. v John Powell

Case No. D2000-0038

1. The Parties

Complainant is The Channel Tunnel Group Ltd of UK Terminal, P O Box 2000, Folkestone, Kent CT18 8XY, United Kingdom.

Respondent is Mr. John Powell of 36 Eslington Terrace, Newcastle NE2 4RN, United Kingdom.

2. The Domain Name and Registrar

The domain name at issue is:

"euro-tunnel.com"

and the registrar is Network Solutions, Inc.

3. Procedural History

The WIPO Arbitration and Mediation Center (the Center) received the Complaint on February 3, 2000 (electronic version) and February 4, 2000 (hard copy and attachments). The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules of Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainant made the required payment to the Center.

The formal date of the commencement of this administrative proceeding is February 10, 2000.

On February 7, 2000, the Center transmitted via email to Network Solutions, Inc a request for registrar verification in connection with this case. On February 8, 2000, Network Solutions Inc transmitted via email to the Center, Network Solutions Verification Response, confirming that registrant is Powell and Gilchrist and the contact for both administrative and billing purposes is Powell and Gilchrist.

Having verified that Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on February 10, 2000 to webmaster@WEBFUSION.CO.UK, postmaster@euro-tunnel.com and eslington@euro-tunnel.com the Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the response was due by February 29, 2000. On the same day, the Center transmitted by fax and by air mail copies of the foregoing documents to:

Powell and Gilchrist
35 Eslington Terrace
Newcastle NE2 4RN
United Kingdom

The Center received from Powell his Response on February 28, 2000, (by email) and on March 2, 2000 (hard copy and attachments).

On March 2, 2000, in view of Complainants designation of a single panelist the Center invited Mr. David Perkins to serve as a Panelist and transmitted to him the Request for Declaration of Impartiality and Independence and a Statement of Acceptance.

Having received on March 7, 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 March 21, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.

On March 13, 2000, the Center received Complainants Answer to Respondents Response. Neither the Rules nor the Supplemental Rules make provision for service of an Answer by Complainant to Respondents Response. The Panel is under a duty to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case and the Panel shall determine the admissibility, relevance, materiality and weight of the evidence [para. 10 of the Rules]. The Answer has not, pending the Panels ruling, been submitted to Respondent. Panel rules that the Answer was submitted too late in the procedure to be admitted but in any event considers that it adds nothing to the Complaint. There is nothing in the Answer which in the Panels view is necessary to do justice between the parties and, therefore, the Answer is not admitted. Accordingly, in making its Decision in this case the Panel has not had regard to or referred to the proposed Answer.

4. Factual Background

4.1 The Complainant

The Complainant, The Channel Tunnel Group Ltd., is a member of the Eurotunnel Group of Companies. It is described in the Complaint as the U.K. Concessionaire of the Eurotunnel Group. The French Concessionaire is stated to be France Manche S.A.

4.2 The Complainants Trade Marks

The Complainant has provided evidence that it is the registered proprietor of the following U.K. Trade Marks and it is upon those Trade Marks that its Complaint is based.

Registration No. Mark Class Filed

Schedule to
the Complaint

1,275,792

EUROTUNNEL

6

19 August, 1986

1A

1,275,730

EUROTUNNEL

7

18 August, 1986

1B

1,275,793

EUROTUNNEL

12

19 August, 1986

1C

1,275,794

EUROTUNNEL

14

19 August, 1986

1D

1,275,795

EUROTUNNEL

16

19 August, 1986

1E

1,275,731

EUROTUNNEL

25

18 August, 1986

1F

1,337,923

EUROTUNNEL

28

9 March, 1988

1G

1,275,917

EUROTUNNEL

34

20 August, 1986

1H

1,381,856

EUROTUNNEL

35

27 April, 1989

1I

Stylised Word Mark

1,278,330

EUROTUNNEL

37

1 October, 1986

1J

1,275,435

Eurotunnel

39

1 October, 1986

1K

1,277,489

Eurotunnel

42

1 October, 1986

1L

Franche Manche S.A. is stated to be the proprietor of the EUROTUNNEL Mark registered in France; Portugal; Denmark; Greece; Ireland; Italy; Japan; Norway; and Sweden and international registrations covering DL(?); Austria; Benelux; Spain; Italy; Monaco; Portugal; Switzerland; Yugoslavia; Hong Kong; Slovenia; and Macedonia. (Complaint, para 7).

4.3 Use of the Complainants Trade Marks

It is stated that the EUROTUNNEL Trade Mark is used by the Complainant in relation to a number of goods and services including:

Transport services transporting by train cars, coaches and lorries, passengers and goods between Kent and Nord-Pas-de Calais through the Channel Tunnel. Retail services in the Eurotunnel terminal buildings at Folkestone and at Calais/Coquelles. Property development including development of a portfolio of East Kent sites some of which are available for sale, others of which are available for rent with full maintenance provision. International telecommunications services using the Channel Tunnel to provide customers with services between England and France. Operating and maintaining a grouping of web sites containing information relation to the Complainant and the Eurotunnel Group of companies and their activities addressed as www.eurotunnel.com, www.eurotunnel.co.uk, www.eurotunnel.net, www.eurotunnel.org, www.eurotunnelonline.com, www.eurotunnelet_is.fr and www.eurotunnel.fr. e-commerce relating to the business of the Complainant and the Eurotunnel Group of companies.

4.4 The Respondent has not challenged the Complainants Statements in relation to the ownership and use of the EUROTUNNEL trade mark.

5. Parties Contentions

A. Complainant

Complainant contends that Respondent has registered as a domain name a mark which is identical or confusingly similar to the trade mark and service mark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain name in issue and that Respondent has registered and is using the domain name in bad faith.

B. Respondent

Respondent contends that Complainant has failed to demonstrate the elements required by paragraphs 4a(i) and (iii) of the Policy. Respondent does not appear to specifically contest the Complaint under paragraph 4a(ii) of the Policy. However, given the nature of the Response, the Panel assumes for the purpose of its Decision that all the allegations of the Complaint are contested by the Respondent.

6. Discussion and Findings

6.1 The Policy para 4a provides that Complainant must prove each of the following:

that Respondents domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and that Respondent has no legitimate interests in respect of the domain name; and the domain name has been registered and is being used in bad faith.

Identical or Confusingly Similar

6.2 Respondents case is that

"In Euro-Tunnel.com the hyphen is separating two distinct words Euro and Tunnel which is not identical to the trademark word "Eurotunnel" which is a single word. Eurotunnel PLC does not have any Trade, Service nor word mark registered which includes a hyphen. By consciously avoiding Eurotunnel domains both the letter and spirit of the cited paragraph 2(b) were complied with."

The cited paragraph 2(b) is paragraph 2(b) of the Policy.

6.3 The Panel does not regard the use of a hyphen as constituting a material difference and finds the domain name Euro-tunnel.com in all material respects identical to Complainants registered marks. In any event, Panel also considers the domain name confusingly similar to Complainants registered marks. In this respect, note the Respondents statement that

".. if submitted to search engines whenever anyone requested a search for Eurotunnel, Euro-Tunnel.com would be prominent among the results .".

[Response page 8 para (h)]

6.4 The Panel finds Complainant succeeds in establishing the requirement of para 4a(i) of the Policy.

Rights or Legitimate Interests

6.5 Para 4c of the Policy provides that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate Respondents right of legitimate interest to the domain name for purposes of para. 4a(ii)

i. before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

ii. you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

iii. you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

6.6 Respondent plainly fails to satisfy (ii) above. Complainant has not licensed or otherwise permitted Respondent to use its trademarks or service marks or to apply for or use any domain name incorporating those marks. The circumstances of the use of the Complainants mark by the Respondent as a domain name set out in the evidence and statements contained in the Complaint and the Response are not such as to satisfy (i) or (iii) above.

6.7 Accordingly, the Panel finds that Respondent has failed to present any evidence that would tend to establish that Respondent has legitimate interests in respect of the domain name. The Complainant succeeds in establishing the requirement of para 4a(ii) of the Policy.

Bad Faith

6.8 Para 4a(iii) of the Policy requires that Respondents domain name must have been both registered and must be being used in bad faith. Both requirements must be met [see Decisions in Cases D99-0001 and D2000-0003 at paras. 7.4 to 7.6].

Registered in Bad Faith

6.9 Respondent was clearly aware of Complainants prior rights to and use of the EUROTUNNEL mark. As noted in para 6.2 (supra) Respondent deliberately hyphenated the EUROTUNNEL mark which he maintains would not infringe upon or otherwise violate the rights of Complainant or the Group of which Complainant is a part. But, in registering the Complainants trade and service mark in that form Respondent clearly recognized its potential to cause confusion with Complainants rights [see para 6.3 supra]. In this respect, see also Respondents letter to Complainant dated 16 December 1999 page 3 [Attachment 6C to the Complaint].

Respondents website states

"This "internicked" web site has no connection with Eurotunnel PLC"

Nevertheless, Respondents stated intent is to attract attention to the site for the purpose of publicizing, inter alia, proposals to create a higher profile and share price for Eurotunnel. Plainly, it is not necessary to infringe upon and violate the rights of Complainant by registering the Euro-Tunnel.com domain name in order to achieve Respondents aims and to convey his message to the Board of directors of Eurotunnel PLC and others.

6.10 Panel finds nothing in Respondents evidence indicative of registration of the domain name in good faith. Complainant, therefore, succeeds in establishing the first part of the requirements of para 4a(iii) of the Policy.

Use in Bad Faith

6.11 Para 4b 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." These circumstances are:

circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainants mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

The Policy, however, states that the above circumstances are not exhaustive of the circumstances indicating registration and use in bad faith.

6.12 As to para 4b(i), Respondent denies that the fact that Euro-Tunnel.com is registered with "4 SALE" in the contact address given in the Network Solutions Whois search [Appendix 2 to the Complaint] indicates that the domain name was registered primarily for the purpose of selling, renting or otherwise transferring the domain name to Complainant or to a competitor of Complainant. Respondent admits, however, that he is the registrant of domains which are "for sale", citing as an example Orange.com [Response page 4 para. (e)].

6.13 As to para. 4b(ii) and (iii) Panel does not consider Complainant has made out its case.

6.14 As to para. 4b(iv) the situation is not entirely clear, Respondents website

invites subscriptions to the site for 500 a year [Complaint para. 8(iii)(f) and (g) and Attachment 3 to the Complaint]. Respondents explanation is that "there is no personal gain motivation in the subscription fee". [Response page 6] Contains a number of hypertext link advertisements with the following titles:

- "Utrade Internet Auctions/GrablitHereFirst! Find it Here FIRST! CLICK HERE to go to Euro-Tunnel-The Train-Spot A Proud Member of the One and Only Network"

- "Meet your Match! CLICK HERE to go to Euro-tunnel-of-Love A Proud Member of the One & Only Associated Network"

- "Make money with your website and add content? It is easy to do let us show you. You will be very impressed [CLICK] Webmasters can make money!"

- "Search and buy books online with iBS"

- "Compare prices from 40 Internet bookstores! Powered by DealPilot.com"

- "Alternative Personals! CLICK HERE to go to Euro-Tunnel-of-Lovers a Proud Member of the Alternative Connections Network"

- "Click AlternativeConnections If you think out personals site is shocking wait til you see what we pay our associates Webmasters can make money!"

[Complaint para. 8(iii)(b) and Attachment 3 to the Complaint]

The essence of the Respondents answer again is "This site is not about making me money". [Respondents letter to Complainant of 16 December 1999 pages 2-3, Attachment 6C to the Complaint and Response pages 6-8].

6.15 The question as to whether Complainant has made out its case under this requirement is, in Panels view, finely balanced. The Panel inclines to the view that Complainant has made out its case. However, just because Respondents conduct does not fall within the "particular" circumstances set out in para. 4b of the Policy, is not conclusive that the Euro-Tunnel.com domain name in issue was registered in and is being used in bad faith. In this case Respondent knew of the Claimants trade mark before registering the domain name complained of; he has sought commercial gain from the website using that domain name; the fact that he has not apparently made any or any significant financial gain does not alter the attempt to obtain commercial gain; and he has sought to tarnish Complainants EUROTUNNEL mark. In the latter respect, note Respondents statement:

"I did not develop this site to make money from it, the development was partly "tongue in cheek" the adverts were planned as I state on 6B for "Ad" ded tackiness, spelling mistakes not corrected, deliberate typographical errors added, I wanted the website to appear less that perfect as, if people criticized the minutia they accept the main points by default." [Response page 8]

As noted [para. 6.9 supra] it is not necessary for Respondent to infringe upon and violate the rights of Complainant by registering the Euro-Tunnel.com domain name in order to achieve Respondents stated aims. All these circumstances also point in Panels view to use of the domain name in bad faith.

7. Decision

For all the foregoing reasons, the Panel decides that 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 euro-tunnel.com be transferred to Complainant.

David Perkins
Sole Panellist

Dated: March 17, 2000

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