Decision for dispute CAC-UDRP-107312

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant has established by evidence that it owns the following trademarks:

• the international trademark for EUIPO, registration number 1751909, filed and registered on August 17, 2023;

• the EU trademark for EUIPO, registration number 018839087, field on February 21, 2023 and registered on 27 July 2023;

• the international trademark for EUIPO EUROPEAN UNION INTELLECTUAL PROPERTY OFFICE, registration number 1753711, registered on August 17, 2023; and

• the EU trademark for EUIPO EUROPEAN UNION INTELLECTUAL PROPERTY OFFICE, registration number 018839135, field on February 21, 2023 and registered on 27 July 2023

(collectively “the EUIPO trademarks”).

The European Union Intellectual Property Office (“EUIPO” and “the Complainant”) is a recognised agency of the European Union and its sole official agency responsible for the registration and administration of various kinds of intellectual property rights, including trademarks. It is the registered owner of the aforesaid EUIPO trademarks.

The Complainant has continuously used the EUIPO trademarks since their registration to designate the goods and services it provides under the trademarks.

On 24 July 2024, the Respondent registered the domain name <euipp.com> (“the disputed domain name”) and caused it to resolve to a website. That website promotes itself as an actor for registering trademark and presenting itself as being the European IP Protection (“the EUIPP”). On screenshots provided by the Complainant one can read "rapid registration", “quick registration", "Register your trademark now".

The Respondent has, according to the Complainant, also been using the disputed domain name and its website to send out emails from “EUIPP” with the subject matter “Trademark filing request", and indicating "Yesterday, we received a request for the registration of the trademark [Trademark Name]. This request was not made by you or your company, but by a third party, as observed from the application forms. Upon verification, we noticed that the name of your company is similar, although in a different sector. However, since your company was previously registered with the business office, you have the first option to register this trademark.

The Complainant is concerned that the registration of the disputed domain name, its use in the resolving website and in the emails sent, are calculated to give the false impression that the EUIPP is an official agency for the processing of EU trademarks, to pass itself off as the Complainant and to obtain payment for the illegitimate services allegedly offered by the Respondent.

The Complainant filed a complaint on 14 February 2025 and the Complainant requested “Cancellation” of the disputed domain name.

The Complainant contends that the requirements of the Policy have been met and that the disputed domains name should be transferred to it. The Complainant makes a number of legal arguments and also supplies a set of annexes providing evidence of its activities and of the Respondent's use of the disputed domain name.

No administratively compliant Response has been filed by the Respondent.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

It ought to be indicated that the Centre sent the Complaint to the Respondent but neither the written notice of the Complaint nor the advice of delivery thereof was returned to the Center. No other address for correspondence was found on the disputed domain name.

The notice of the Commencement of the administrative proceeding was sent also by e-mail. Yet, the e-mail notices sent to postmaster@euipp.com and to invoices@euipp.com were returned back undelivered as the e-mail addresses had permanent fatal errors. The e-mail notice was also sent to mark.traded@gmail.com and to info@euipp.com, but the Center never received any proof of delivery or notification of undelivery. No further e-mail addresses could be found on the disputed site.

The Respondent never accessed the online platform.a

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

Notwithstanding the fact that no Response has been filed, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:

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

• that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

• that the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.

The Complainant, EUIPO, is the only official European Union agency in the field of intellectual property as laid down in Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trademark (the "EUTMR"). Moreover, the EUIPO is the only official EU agency responsible for the registration of various kinds of IP rights including 2.9 million EU trademarks (the "EUTM") and 1.8 million Community Designs.

As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name with the trademarks to which the Complainant holds rights. According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “this test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”.

Also, according to section 1.7 of the WIPO Overview 3.0, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.

The disputed domain name is composed of five letters E-U-I-P-P comparable to the five letters of the prior trademark and tradename E-U-I-P-O. They have in common four letters out of five and set in the same order. Furthermore, the last letter P compare to the letter O would not be sufficient to distinguish it from the prior rights both on the visual and aural approach. Should it be necessary to mention it, the letter P is just next to the letter O on the computer keyboard, classical typosquatting pattern of conduct.

Secondly, reading the first four identical letters of the domain name and the prior right, EU IP, would, without contest, lead the average consumer to identify in the acronym European Union and Intellectual Property.

Thirdly, the average consumer would be striked by the starting letters of the sign and memorise them and not the sole last letter of it. 

It is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.com”, is typically ignored when assessing whether a domain name is identical or confusingly similar to a trademark.

This Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:

• before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

• the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

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

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

From the evidences provided with by the Complainant including search engine results, it appears that the mere goal of the Respondent is an intent to mislead and divert consumers. It ought to be noted that the Respondent, as found navigation from the links on the evidence that it is also using the domain <trademarksmartprotection.com> content of which is strictly identical to that of the disputed domain name.

The Panel concludes that the Respondent has no right or legitimate interests in the disputed domain name and therefore finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

C. Registration and Use in Bad faith

For the purpose of Paragraph 4(a) (iii) of the Policy, the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of the domain name in bad faith:

• circumstances indicating that the Respondent has registered or has 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 the holders documented out-of-pocket costs directly related to the domain name; or

• the Respondent has 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 the Respondent has engaged in a pattern of such conduct; or

• the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

• by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the Respondent’s website or location.

The Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraphs 4(a)(i) and 4(a)(iv) of the Policy.

The Complainant’s trademark and tradename EUIPO is so widely well-known and has enjoyed such a long-standing reputation that it is inconceivable that a third party would register any domain name reproducing the mark without prior knowledge. This is assumption is comforted also by the copies of emails sent to trademark applicant stating:

"Yesterday, we received a request for the registration of the trademark [Trademark Name]. This request was not made by you or your company, but by a third party, as observed from the application forms. Upon verification, we noticed that the name of your company is similar, although in a different sector. However, since your company was previously registered with the business office, you have the first option to register this trademark.

The Respondent has almost identically copied the Complainant’s trademark “EUIPO” with the minor difference residing on changing the O by a P, so close on the keyboard. Therefore, this registration can only be viewed as an attempt to exploit the goodwill vested in the trademark by attracting Internet users and confusing them to the extent that they would believe that a website or e-mails connected to the disputed domain name offer the services of an entity that is affiliated to the Complainant.

The Respondent, for not responding to the complaint, has failed to demonstrate any activity in respect of the disputed domain names, and it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, by passing off, infringement of consumer protection legislation, or infringement of the Complainant’s rights under trademark law.

The Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith, and finds that the requirement of paragraph 4(a)(iii) of the Policy is satisfied.