Domain name -  ICANN Uniform Domain Name Dispute Resolution Policy - Rules of Uniform Domain Name Dispute Resolution Policy - Supplemental Rules for Uniform Domain Name Dispute Resolution Policy - Procedures - Answer to Respondent's Response - U.K. Trade Marks - Hyphenated names - Identical - Confusingly similar - Legitimate interests - Bad faith registration - Bad faith use.

Complainant, registered proprietor of several Eurotunnel U.K. Trade Marks, argued that Respondent registered its domain name, Euro-tunnel.com, without any right or legitimate interest, that it was identical or confusingly similar to theirs and that its registration and use were done in bad faith. 

The Center received (by email) the Complaint and transmitted (by email) the Notification of Complaint and Commencement of the Administrative Proceeding to the Respondent.  According to procedures, Respondent sent a Response via email to the Center. However, Complainant sent an Answer to Respondent's Response.  Neither the Rules nor the Supplemental Rules made provision for service of an Answer by Complainant to Respondent's Response. 

Panel was faced with unusual circumstances and particularities throughout the case, Panel's actions towards these intricacies established that the Policy's guiding principles were not exhaustive of the circumstances indicating registration and use in bad faith.

Held, Domain Name Transferred to Complainant.

The Complainant needs to successfully prove each of the three elements of para. 4 of the ICANN Uniform Domain Name Dispute Resolution Policy.  Due to the fact that the Answer to Response was submitted too late in the procedure and because it did not add to the Complaint, the Panel concluded that nothing in the Answer was necessary to do justice between the parties and consequently, did not admit the Answer.

Respondent's argued that the hyphen in Euro-tunnel.com distinguished it to the trademark word "Eurotunnel" but the Panel did not regard the use of a hyphen as constituting a material difference and found the domain name, Euro-tunnel.com, identical and confusingly similar to Complainant's registered marks, Eurotunnel. Since the Respondent could not be commonly recognized by the domain name, he failed to establish legitimate interest in respect to the domain name. 

Respondent's stated intent as to the use of the hyphenated mark was to attract attention to its site for the purpose of publicizing proposals to create higher profile and share price for Eurotunnel.  Panel determined that it was not necessary to infringe upon and violate the rights of Complainant by registering the Euro-tunnel.com domain name in order to achieve Respondent's aims and concluded that Respondent registered the domain name in bad faith. 

Panel's view concerning the use of the domain name in bad faith was finely balanced.  However, Respondent's intent to seek commercial gains from the website using that domain name and his quest to tarnish Complainant's mark, revealed evidence indicating use of the domain name in bad faith.

Policies referred to

ICANN Uniform Domain Name Dispute Resolution Policy
Rules of Uniform Domain Name Dispute Resolution Policy
Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

Panel Decision referred to
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Perkins, Panelist: - 

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 Complainant's 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 Complainant's Answer to Respondent's Response. Neither the Rules nor the Supplemental Rules make provision for service of an Answer by Complainant to Respondent's 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 Panel's 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 Panel's 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 Complainant's 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 
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 Complainant's 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 Complainant's 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 Respondent's 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 Respondent's 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 Complainant's registered marks. In any event, Panel also considers the domain name confusingly similar to Complainant's registered marks. In this respect, note the Respondent's 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 Respondent's 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 Complainant's 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 Respondent's 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 Complainant's 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 Complainant's trade and service mark in that form Respondent clearly recognized its potential to cause confusion with Complainant's rights [see para 6.3 supra]. In this respect, see also Respondent's letter to Complainant dated 16 December 1999 page 3 [Attachment 6C to the Complaint].

Respondent's website states

"This "internicked" web site has no connection with Eurotunnel PLC"
Nevertheless, Respondent's 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 Respondent's aims and to convey his message to the Board of directors of Eurotunnel PLC and others.

6.10 Panel finds nothing in Respondent's 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:

iv. 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 

v. 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 

vi. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or 

vii. 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 complainant's 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, Respondent's website

invites subscriptions to the site for £500 a year [Complaint para. 8(iii)(f) and (g) and Attachment 3 to the Complaint]. Respondent's 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 Respondent's answer again is "This site is not about making me money". [Respondent's 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 Panel's view, finely balanced. The Panel inclines to the view that Complainant has made out its case. However, just because Respondent's 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 Claimant's 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 Complainant's EUROTUNNEL mark. In the latter respect, note Respondent's 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 Respondent's stated aims. All these circumstances also point in Panel's 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.