WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

EUROFRED, S.A. v. Dahlair BV

Case No. DNL2019-0007

1. The Parties

Complainant is Eurofred S.A. of Barcelona, Spain, represented by Baker & McKenzie Barcelona, Spain.

Respondent is Dahlair B.V. of Oosterhout, the Netherlands, internally represented.

2. The Domain Names and Registrar

The disputed domain names <eurofredgroup.nl> and <eurofred.nl> (jointly: the “Domain Names”) are registered with SIDN through Registrar.eu.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2019. On March 6, 2019, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Names. On March 7, 2019, SIDN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied 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 Respondent of the Complaint, and the proceedings commenced on March 13, 2019. In accordance with the Regulations, article 7.1, the due date for Response was April 2, 2019. The Response was filed with the Center on March 31, 2019.

On April 4, 2019, SIDN commenced the mediation process. On May 2, 2019, SIDN confirmed to the parties that the dispute had not been solved in the mediation process.

The Center appointed Remco M.R. van Leeuwen as the panelist in this matter on May 9, 2019. 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

Complainant is an international company, active in the distribution of air-conditioning, industrial heating, commercial refrigeration, and catering equipment, as well as accompanying spare parts and services. Complainant was founded in Spain in 1966 and has a presence throughout Western Europe and in Chile and Morocco.

Complainant has produced evidence that it is the owner of trademark registrations for:

- the figurative mark EUROFRED, registered in the European Union on April 26, 2004, with number 2865194, for goods and services in classes 11, 37, and 39;

- the figurative mark EUROFRED GROUP, registered in the European Union on March 6, 2014, with number 12216362, for goods and services in classes 11, 37, and 39;

- the figurative mark EUROFRED BEING EFFICIENT, registered in the European Union on December 23, 2014, with number 13131057, for goods and services in classes 11, 37, and 39; and

- the figurative mark EUROFRED GROUP BEING EFFICIENT, registered in the European Union on December 23, 2014, with number 13131156, for goods and services in classes 11, 37, and 39;

(hereinafter jointly referred to as: the “Trademarks”).

According to Complainant, it further holds various domain names containing the above mentioned trademarks EUROFRED and EUROFREDGROUP with Top-Level Domains such as “.com”, “.es”, “.eu”, “.fr”, and “.it”.

Complainant’s main distributor in the Netherlands for EUROFRED branded products and related services is ACR Klimaat B.V. (“ACR”). Complainant has a distributor relationship with ACR since 2009. Complainant has produced evidence that the sole director and shareholder of Respondent is a former employee of ACR, who left ACR on July 31, 2008.

The Domain Names were registered on October 7, 2009.

Complainant has submitted evidence that the Domain Names redirect to the website “www.dahlair.nl”. On that website various air conditioning products and related services are offered for sale that compete with Complainant’s products and services. Respondent is the holder of the domain name <dahlair.nl> and owner of the website “www.dahlair.nl”.

5. Parties’ Contentions

A. Complainant

Complainant states that the Domain Names are identical and/or confusingly similar to the Trademarks, which are protected within the Dutch territory.

More specificly Complainant asserts that:

- the disputed domain name <eurofred.nl> is composed exclusively of the word “Eurofred”, which corresponds and is identical to Complainant’s EUROFRED trademark. Likewise, Complainant’s trademarks EUROFRED GROUP and EUROFRED GROUP BEING EFFICIENT include the word “Eurofred” as the main distinctive element; and

- the disputed domain name <eurofredgroup.nl> is composed of the words “Eurofred” and “Group”. The word “Eurofred” is incorporated in all the Trademarks as their main distinctive element, including Complainant’s trademarks EUROFRED EUROFRED GROUP.

Complainant states that the word “group” is non-distinctive and merely a descriptive term generally indicating the affiliation of a company or that a company name encompasses more than one related companies. In this case, “Eurofred Group” refers to a number of companies belonging to the same group controlled by Complainant.

With regard to the similarity assessment, Complainant first concludes that the disputed domain name <eurofred.nl> is:

(i) identical to Complainant’s EUROFRED trademark;

(ii) identical to Complainant’s EUROFRED BEING EFFICIENT trademark; and

(iii) confusingly similar to a very high degree to Complainant’s EUROFRED GROUP and EUROFRED GROUP BEING EFFICIENT trademarks, noting that the term “group” is of a generic nature, which cannot affect the determination of the degree of confusing similarity.

Secondly, Complainant concludes that the disputed domain name <eurofredgroup.nl> is:

(i) identical to Complainant’s EUROFRED GROUP trademark;

(ii) confusingly similar to a very high degree to Complainant’s EUROFRED trademark, noting that the term “group” is of a generic nature, which cannot affect the determination of the degree of confusing similarity; and

(iii) confusingly similar to a very high degree to Complainant’s EUROFRED BEING EFFICIENT and EUROFRED GROUP BEING EFFICIENT trademarks.

Complainant further states that Respondent has no rights or legitimate interests in respect of the Domain Names. In that regard Complainant submits that:

- Respondent is in no way linked or related to Complainant, not even as a distributor of its products. Furthermore, Respondent does not hold any license to the Trademarks, and it has not been in any way authorized to use any of the Trademarks; nor there has been any commercial or noncommercial agreement between Respondent and Complainant;

- Respondent is not using the Domain Names in connection with a bona fide offering of goods or services, or making a legitimate noncommercial or fair use of the Domain Names without intent for commercial gain. On the contrary, Respondent offers products that are identical to Complainant’s products and services and that are in direct competition with such products and services;

- Respondent is also not a reseller of trademarked products in order to establish a good-faith offering of goods and/or services. Even if Respondent would try to allege an intention to start reselling such products, this would be insufficient to establish a legitimate interest in the disputed domain names (Schleich GmbH v. Zint.nl, WIPO Case No. DNL2016-0061); and

- Finally, the term “Eurofred Group” identifies only companies directly owned by Complainant. No other third-party company has therefore a legitimate interest to use such term for any purposes, apart from when referring to Complainant and its affiliated companies or products sold under the Trademarks. Respondent appears to be known as “Dahlair”.

Complainant finally submits that the Domain Names were registered and are being used in bad faith. In that regard Complainant asserts that:

- The Domain Names were registered on October 7, 2009, long after the registration of Complainant’s EUROFRED trademark on April 26, 2004, and decades after the first registration of the first commercial name “Eurofred S.A.” in Spain on May16, 1981, and the registration of the trademark EUROFRED in Spain on March 5, 1986; and

- Complainant and the Trademarks have been and currently are well known internationally in the field of air-conditioning and refrigeration solutions and services and specifically in the Netherlands, where Complainant has been selling its products through distributors since 2003. Given the small size of the air-conditioning market in the Netherlands and given the fact that Respondent’s sole director and shareholder was previously ACR’s employee, Respondent was certainly aware of Complainant’s presence in the Netherlands and intendeds to take an unfair advantage of the Trademarks as well as to poach ACR’s clients by creating confusion in the market.

- According to Complainant, the best evidence of Respondent’s bad faith is the fact that it registered the Domain Names just after resigning as ACR’s employee.

- Complainant further submits that Respondent uses the Domain Names to resolve to the website “www.dahlair.nl”, where air-conditioning products are being offered for sale in direct competition with products offered and distributed by Complainant. Respondent also apparently offers related services such as installation and servicing of air-conditioning products. Respondent, therefore, knowingly intends to attract clients of its competitors by creating the appearance that it is related to or is part of Complainant’s group of companies.

B. Respondent

Respondent replied to Complainant’s contentions by briefly stating that:

- Respondent holds the Domain Names on behalf of an environmental working group that Respondent participates in;

- Respondent was not able to find any (online) proof of the fact that Complainant is expanding business to the Netherlands; nor has Respondent found any such detailed arguments in Complainant’s claims that support the claim that Eurofred S.A. is the designated owner of the Domain Names; and

- International jurisprudence states that no single European citizen or company can claim exclusive privilege to own domain names that contain the words “euro”, “eu”, or similar, solely based on presence on the European continent. The letters “fred” in this case are, according to Respondent, not proven to be a unique trademark for a specific business in the European zone. For example, “fred” in the northern part of Europe is mostly referred to as a personal name. The word “group” in this case is neither unique to the business case or proposition of Complainant, and therefore not support Complaint.

Respondent concludes that it reserves all rights to hold the Domain Names, especially since the Domain Names are registered more than nine years ago. Respondent finally submits that if Complainant seeks the Domain Name(s), Respondent would request a written proposal.

6. Discussion and Findings

Pursuant to article 2.1 of the Regulations, Complainant’s request to transfer the Domain Names must meet three cumulative conditions:

a) the Domain Names are identical or confusingly similar to a trademark or trade name protected under Dutch law in which Complainant has rights, or other name by means of article 2.1(a) under II of the Regulations; and

b) Respondent has no rights to or legitimate interests in the Domain Names; and

c) the Domain Names have been registered or are being used in bad faith.

Considering these conditions, the Panel rules as follows.

A. Identical or Confusingly Similar

Complainant has based the Complaint on the Trademarks. Complainant has submitted a copy of the registration of the Trademarks demonstrating that Complainant is the holder of the Trademarks. Following precedent under the Regulations, the Panel thus assumes the validity of the Trademarks which are protected under Dutch law. Incidentally, the Panel notes that the Benelux Trademarks Register includes more than 3,000 trademarks containing the word “euro”.The Panel notes that it is established .nl case law that the ccTLD suffix “.nl” may be disregarded in assessing confusing similarity between the relevant trademark(s) on the one hand, and the disputed domain name on the other hand (see, Caterpillar Inc. v. H. van Zuylen Materieel, WIPO Case No. DNL2011-0073; Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).

The disputed domain name <eurofred.nl> is composed exclusively of the word “Eurofred”, which is identical to the Complainant’s EUROFRED trademark. The disputed domain name <eurofredgroup.nl> incorporates this Complainant’s trademarks EUROFRED in its entirety, which is enough to establish confusing similarity. The addition of the common, descriptive, and non-distinctive term “group” is insufficient to prevent confusion (ERREA’ SPORT S.p.A. v. Media & Internet, WIPO Case No. DNL2018‑0022; Stichting VVV Groep Nederland v. SMTM, WIPO Case No. DNL2013-0058).

The fact that the EUROFRED trademark is incorporated in its entirety in the Domain Names, is sufficient to establish that the Domain Names are identical or confusingly similar to one (the trademark “EUROFRED”) or more of the Trademarks.

The Panel finds that the Domain Names are confusingly similar to the Trademarks for the purposes of the Regulations. Therefore, the first requirement of article 2.1(a) under I of the Regulations is met.

B. Rights or Legitimate Interests

It is clear on the evidence before the Panel that Respondent uses the Domain Names for the purpose of a website which offers products of other brands and related services, which the Panel considers as competing with Complainant’s.

A reseller of trademarked goods or services may in certain circumstances legitimately incorporate that trademark into a domain name for the resale of the goods or services in question (see, e.g., section 2.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). 1 However, those circumstances exclude the scenario where a domain name is inherently deceptive, or where a domain name is used to sell goods or services other than those offered by the trademark owner.

Respondent’s use of the Domain Names to offer Complainant’s competitors’ products and services cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See, also, Score Retail Nederland B.V. v. Anke Eisenhower soho, WIPO Case No. DNL2017-0034, and cases cited therein).

Consequently, the Panel concludes that Complainant has met the second requirement of article 2.1(b) of the Regulations.

C. Registered or Used in Bad Faith

The Panel considers the facts that (i) the corresponding website redirects to products and services similar to the ones related to the Trademarks; (ii) Respondent did not formally respond to the cease and desist letter sent by Complainant’s representatives; (iii) Respondent failed to submit a substantive response in reply to the Complaint; and (iv) Respondent requested an undisclosed amount of money for the transfer of the Domain Names, as also confirmed in the Response.

Numerous previous UDRP decisions have considered this behaviour proof of bad faith, e.g. Hardee’s Food Systems, Inc. v. Whois Privacy Protection Service, Inc. / ICS Inc, WIPO Case No. D2012-1696, DaimlerChrysler Corporation and DaimlerChrysler Services North America LLC v. LaPorte Holdings, WIPO Case No. D2005-0070 or Accor v. Cybernet Systech Private Limited, WIPO Case No. D2018-1561.

Moreover, the Panel takes into account the clear absence of rights or legitimate interests coupled with no credible explanation for Respondent’s choice of the Domain Names, together with the timing and circumstances of the registration of the Domain Names. In particular the Panel considers that Respondent must have had knowledge of the Trademarks and Complainant’s envisaged activities in the Netherlands, based on Respondent’s former relationship with Complainant’s principal Dutch distributor. These circumstances reinforce the Panel’s conclusion that Respondent registered the Domain Names in bad faith.

With respect to Respondent’s offer to sell the Domain Names to Complainant, the Panel notes that under the Regulations, an offer to sell a domain name for valuable consideration in excess of any out-of-pocket costs directly related to the domain name constitutes bad-faith use of the name (The Massachusetts Medical Society v. Michael Karle, WIPO Case No. D2000-0282 and World Wrestling Federation Entertainment, Inc v. Michael Bosman, WIPO Case No. D1999-0001). The Panel concludes on the basis of the undisputed contentions in the Complaint that the undisclosed consideration sought by Respondent is in excess of any out-of-pocket costs directly related to the Domain Names. Furthermore, the Panel notes that Respondent operates in the same area of business as Complainant, that Respondent was previously employed by Complainant’s distributor, and that the Domain Names are being redirected to Respondent’s competing website. Again, the Panel finds that Respondent must have had Complainant’s trademark in mind when registering the Domain Names and did so for commercial gain.

By registering and using the Domain Names, Respondent intentionally attempted to attract for commercial gain, internet users to Respondent’s website, by creating a likelihood of confusion with the Trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. This constitutes evidence of bad faith registration and use in accordance with article 3.1(d) of the Regulations.

The requirement of registration or use in bad faith of the Domain Names pursuant to article 2.1(c) of the Regulations has been met.

7. Decision

For the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain names <eurofred.nl> and <eurofredgroup.nl> be transferred to Complainant.

Remco M.R. van Leeuwen
Panelist
Date: May 29, 2019

1 In view of the fact that the Regulations are to an extent based on the Uniform Domain Name Dispute Resolution Policy (“UDRP”), it is well established that cases decided under both the Regulations and the UDRP are relevant to this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V., WIPO Case No. DNL2008-0050)