Panel Decision for dispute CAC-ADREU-008795

1. Applicable provisions

This Complaint is brought under Regulation (EU) 2019/517 (“Regulation 517”) and the ADR Rules. Article 4(4) of Regulation 517 provides that a domain name may be revoked, and where necessary subsequently transferred to another party, following an appropriate ADR or judicial procedure, where that name is identical or confusingly similar to a name in respect of which a right is established by European Union or national law, and where it has been registered by its holder without rights or legitimate interest in the name; or has been registered or is being used in bad faith.

Article 11 of Regulation 517 requires that the contract concluded between the Commission and the designated Registry will include, inter alia, an ADR policy. The ADR Rules contain that policy, and the requisite elements of Article 4(4) of Regulation 517 are echoed in paragraph B11(d)(1) of the ADR Rules.

Paragraph B11(d)(1) of the ADR Rules is supplemented by paragraphs B11(e) and B11(f). Paragraph B11(e) sets out non-exhaustive examples of circumstances which, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the Respondent’s rights to or legitimate interests in the domain name. Paragraph B11(f) sets out non-exhaustive examples of circumstances which, if found by the Panel to be present, may be evidence of the registration or use of a domain name in bad faith.

Under paragraph B11(a) of the ADR Rules, the Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Procedural Rules (the definition of which includes the ADR Rules, see the definitions section contained in paragraph A1 of the ADR Rules).

The Respondent has not filed a Response to the Complaint. In such an eventuality, the effect of the provisions of Paragraph B10 of the ADR Rules is that the failure may be considered by the Panel as grounds to accept the claims of the Complainant. However, this does not mean a Complaint will automatically be upheld whenever a Respondent fails to respond; the Complainant is still required to demonstrate that the provisions of Paragraph B11(d)(1) of the ADR Rules are satisfied. Consequently, the Panel will turn to each of the three parts of paragraph B11(d)(1) of the ADR Rules in turn. The brief Complaint does not expressly address any of the three parts of paragraph B11(d)(1) of the ADR Rules. However, the Complainant is not legally represented and appears to be a small entity. The circumstances are also reasonably clear from the Complaint, despite its brevity.

2. Rights - identical or confusingly similar

Article 4(4) of Regulation 517 and paragraph B11(d)(1)(i) of the ADR Rules require that the disputed domain name be identical or confusingly similar to a name in respect of which a right is recognised or established by the national law of a Member State and/or European Union law. The Panel notes that the documents accompanying the Complaint include a summary of a trade mark application in France in the name of M. Cussonnier. This is a figurative mark containing two parts, UR and HubUR, both in stylised form with a blue lightning flash between the U and R of the UR in both parts. Although only a summary of the trade mark application has been provided, the Expert notes from a search of the Trade Marks Registry in France (INPI) that the trade mark was registered on 23rd December 2022: UR HubUR (Marques) - Data INPI

In the letter of authority addressed to the agency filing the Complaint M. Cussonnier says that he is the manager and founder of the Complainant. The Panel is prepared to accept in this uncontested case that this implies a licence from M. Cussonnier to the Complainant to use any rights M. Cussonnier has in the mark UR HubUR. The Complainant has provided very little evidence of the nature and extent of the Complainant's business (the only evidence there is of active use of the brand name HUBUR is in the capture of the website on Wayback Machine from 15th March 2025). However, the registered trade mark in France is sufficient to meet the requirements of Article 4(4) of Regulation 517 and paragraph B11(d)(1)(i) of the ADR Rules, providing the disputed domain name is confusingly similar to the trade mark, and providing the Complainant has rights in that trade mark.

M. Cussonnier's apparent (and undisputed) control of the Complainant and its sister company Wallaby Limited suggests that it is not necessary to draw too fine a distinction in this case as to precisely which entity has the relevant rights. As the previous owner of the disputed domain name, the Complainant appears to the Panel to be the correct party to bring this Complaint, in accordance with the letter of authority from M. Cussonnier. The disputed domain name is not identical to the name or mark UR HubUR, however the Panel is prepared to accept in an undisputed case that there is sufficient similarity between the disputed domain name and a substantial part of the mark for it to be confusing. The suffix of the disputed domain name “.eu” is typically not taken into account in the comparison exercise between the domain name concerned and the name in which a right is recognised or established.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the registered trademark UR HubUR in which the Complainant has rights, and that the first element set out in Article 4(4) of Regulation 517 and that set out in paragraph B11(d)(1)(i) of the ADR Rules is satisfied.

3. Respondent's Rights or Legitimate Interest

Paragraph B11 (e) of the ADR Rules lists examples of circumstances, without limitation, by which a respondent may demonstrate rights or legitimate interests in a disputed domain name, namely that:

(i) before any notice of the dispute, the respondent can show use of the domain name or a name corresponding to the domain name in connection with the offering of goods or services or has made demonstrable preparation to do so; or

(ii) the respondent can show that it has been commonly known by the domain name, even if no trade mark or service mark rights have been acquired; or

(iii) the respondent is making a legitimate and noncommercial or fair use of the domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognized or established by national law and/or Community law.

There is no information before the Panel which would suggest that the Respondent has any basis for asserting a right or legitimate interest in the disputed domain name. As outlined earlier, the disputed domain name simply redirects to a third party website which contains 'adult' material. The Respondent is not therefore using the disputed domain name or a name corresponding to it, for an offering of goods and services. There is no evidence that the Respondent is known by the disputed domain name, nor is he making a legitimate and non-commercial or fair use of the disputed domain name.

The Complainant has made out a prima facie case which shifts the burden of proof to the Respondent; see section IV, 5 of the CAC .EU Overview 2.0. As there is no response from the Respondent, he has failed to satisfy that burden. Therefore, the Panel finds that the Respondent has no rights or legitimate interest in respect of the disputed domain name.

4. Registration or use in bad faith

The issue of bad faith is expressed in Article (4)(4) of Regulation 517 and paragraph B11(d)(1)(iii) of the ADR Rules as an alternative to a lack of rights or legitimate interest which may be proved by the Complainant. Either registration in bad faith or use in bad faith may be proved by the Complainant. In this case, the Complainant has already succeeded on the lack of rights or legitimate interest, therefore it is not strictly necessary to consider this element. However, for completeness, the Panel will briefly consider the issue of bad faith.

 The Respondent registered the disputed domain name shortly after the Complainant’s registration of it had lapsed, following at least 18 months of prior use by the Complainant. The only known use of the disputed domain name since the Respondent's registration has been to redirect to a third party website containing 'adult' material. It is accordingly reasonable to conclude that the Respondent registered the disputed domain name in order to take advantage of the previous goodwill built up by the Complainant in its mark. This clearly indicates an awareness by the Respondent of the Complainant as well as an intention on the part of the Respondent to use the disputed domain name for this purpose as at the date of registration.

 Paragraph B11 (f) of the ADR Rules sets out a non-exhaustive list of circumstances that will be considered bad faith registration and use of a domain name. Paragraph B11(f) (4) provides that such evidence may be found if a disputed domain name was intentionally used to attract Internet users to a respondent’s website by creating a likelihood of confusion with a name on which a right is recognised or established, by national or Community law, as to the source, sponsorship, affiliation or endorsement of the respondent’s website or service on the website.

Use of the disputed domain name in order to redirect to a third party website is most likely intended to capture web traffic from Internet users who have been seeking information about the Complainant and who assume from the fact that the disputed domain name is confusingly similar to the Complainant's trading name, UR HUBUR, that the disputed domain name is owned and/or operated by the Complainant. The Respondent’s activities therefore fall within the scope of the circumstances set out at paragraph B11(f)(4) of the ADR Rules.

Therefore, the Panel finds that the disputed domain name was registered and used by the Respondent in bad faith.

5. Eligibility criteria

Based on the fact that the Complainant satisfies the eligibility criteria provided by Article 3(c) of Regulation 517, being an undertaking that is established in Ireland, the Panel shall order transfer of the disputed domain name to the Complainant, all in accordance with Article 4(4) of Regulation 517 and paragraph B11(b) of the ADR Rules.