WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION AREVA v. Industrial Tests, Inc. Case No. D2009-1686 1. The Parties
Complainant is AREVA of Paris, France, represented by Dreyfus & Associés, France.
Respondent is Industrial Tests, Inc. of Rocklin, United States of America, represented by Vierra Magen Marcus & DeNiro LLP, United States of America. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , , , , , (the “Domain Names”) are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2009. On December 10, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed Domain Names. On December 11, 2009, GoD, Inc. 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 Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced December 17, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response January 6, 2010. The Response was filed with the Center January 6, 2010.
The Center appointed Bernhard F. Meyer, Matthew S. Harris and Neil A. Smith as panelists in this matter on January 28, 2010. The Panel finds that it was properly constituted. Each member of the Panel submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant made two supplemental filings on January 11, 2010 and February 3, 2010, i.e. after Respondent submitted its Response. The circumstances in which a panel will admit supplemental filings are limited (see for example In DK Bellevue, Inc. d/b/a Digital Kitchen v. Sam Landers,WIPO Case No. D2003-0780). However, there is no need in this case to consider whether it is necessary to admit the supplemental filings, since a majority of the Panel has formed the view that it can and should reach a decision in favor of the Complainant on the basis of the matters raised in the Complaint alone, whilst one panelist is partially dissenting.
The decision of the majority panel is followed by the reasoning of the partially dissenting panelist. 4. Factual Background
Complainant is a French energy expert company based in Paris. It offers technological solutions for nuclear power generation, electricity transmission and power distribution. According to the Complaint, AREVA generated sales revenues of € 13,16 billion in 2008 and has a worldwide presence.
Among others, Complainant is the owner of the following trademark:
- AREVA, United States (U.S.) trademark filed under No. 3061460, on February 28, 2006 for the classes 1, 4, 6, 7, 9, 11, 19, 35, 36, 37, 38, 39, 40, 41, and 42.
Complainant is also the registrant of various domain names incorporating the mark AREVA: , , and .
Respondent is a U.S. company based in Rocklin, California. It performs electrical testing, inspection and maintenance services in industrial plants and large commercial facilities. According to the Response, Industrial Tests, Inc. is a small company, providing aftermarket service and selling replacement parts for electrical equipment and systems in the Western United States.
Respondent registered two of the disputed Domain Names, and , on July 22, 2009. A third one, , was registered on July 9, 2009. The additional 14 Domain Names that are in dispute here were registered from October to December 2009. 5. Parties' Contentions A. Complainant
Complainant objects to the use of the Domain Names at issue by Respondent on the following grounds:
The disputed Domain Names are identical or confusingly similar to the trademark in which Complainant has rights. The following Domain Names reproduce Complainant's trademark AREVA in its entirety: , , , , , , , , , , , , , and . In many UDRP decisions it was held that this is sufficient to establish that such Domain Names are identical or confusingly similar to Complainant's registered mark.
The Domain Names and contain a reproduction of AREVA trademark with the sole addition of one letter “r”. This change does not significantly affect the appearance or pronunciation of the domain names and reflect what is commonly referred to as “typosquatting”, namely intentional misspelling of a well-known trademark. Such virtual identity has been held by many UDRP decisions to constitute confusing similarity. The addition of the gTLD “.com” is not a distinguishing feature by itself and does not change the likelihood of confusion. Furthermore, it is not sufficient to join generic terms such as “service”, “services”, “relay”, “energy”, “electric”, “electrical”, “online”, “parts”, “repair”, “engineer”, “power” and “system” to distinguish the Domain Names from Complainant's trademark.
Complainant argues that Respondent has no rights or legitimate interests in respect of the disputed Domain Names. Respondent is neither affiliated with Complainant nor has it been authorized to register or use Complainant's trademark in this manner. Furthermore, Respondent does not have any prior rights or interests in the disputed Domain Names. Respondent is not known under the name AREVA and has never used the Domain Names in connection with a bona fide offering of goods and services. Several of the disputed Domain Names originally resolved to Respondent's website where Complainant's name appeared alongside with competing companies. This redirection which was later stopped created a likelihood of confusion for Internet users.
Respondent registered and used the Domain Names in bad faith. It was aware of the fact that Complainant was the holder of the trademark AREVA which is well-known throughout the world. Moreover, Respondent was aware of infringing Complainant's rights by reproducing the trademark in the Domain Names. Respondent registered the Domain Names as a part of a marketing campaign intending to attract visitors by using Complainant's name and reputation. Finally, some of the Domain Names are currently not used which constitutes a “passive holding”. Others direct to a parking page, displaying commercial links in several fields.
Complainant also claims that the Respondent has registered 2,100 domain names, “most of them including a well known mark. In support of that claim it provides WhoIs details for a large number of domain names where the Respondent is listed as the registrant. The domain names identified incorporate marks such as ABB, COMPAQ, CATERPILLAR, DEHAVILAND, EDISON, EMERSON, FUJI, GENERAL ELECTRIC, HITACHI, JOHN DEE, LEXUS, WESTINGHOUSE, IBM, PORCHE, CHEVROLET, BOEING, MERCEDES, MITSUBISHI, SABB, BENTLEY, TOSHIBA, PONTIAC, AUDI, CORVETTE, HARLEY DAVIDSON, in conjunction with such terms as “repairs”, “parts” and “services”. B. Respondent
Respondent consents to the remedy requested by the Complainant for all Domain Names which are in dispute here, except for the transfer of and . Respondent explains that it realized only after registration that ICANN policies consider multiple registrations as evidence of bad faith and it is willing to give up 15 of its disputed registrations.
As to the remaining Domain Names and , Respondent agrees that they contain the trademark AREVA and thus are identical or confusingly similar to Complainant's trademark. However, Respondent alleges that it has rights and legitimate interests in these Domain Names. Respondent points out that it carries out a legitimate business activity, providing electrical testing and field engineering services for over 30 years. It has routinely used the trademark AREVA to describe one brand of electrical products that are serviced by Respondent. The fact that the Domain Names resolved to Respondent's website did not confuse average consumers because customers of Respondent were always aware that they obtained services from Respondent.
Respondent emphasizes that it does not use the Domain Names as trademarks but simply directs traffic to its website where its genuine services are advertized. Moreover, Respondent alleges that Complainant already uses its trademark in several domain names which proves that Complainant is not deprived from reflecting the trademark in a domain name. The fact that some Domain Names resolve to a parking page rather than to Respondent's web is no evidence of bad faith. Respondent instructed that the Domain Names be directed to a parking page until the end of this dispute. Finally, Respondent mentions that it is entitled to use Complainant's trademark for aftermarket services in an accurate and descriptive way according to US Law. 6. Discussion and Findings A. Respondent's Consent to Transfer Selected Domain Names
The first question to be decided by the Panel is the appropriate course of action to be taken regarding the following Domain Names that Respondent agrees to transfer to Complainant: , , , , , , , , , , , , , , .
The panel in The Cartoon Network LP, LLLP v. Mike Morgan,WIPO Case No. D2005-1132 (“Carton Network”) found three different approaches when faced with a “unilateral consent to transfer”: some panels grant the relief on the basis of Respondent's consent alone without further review and analysis of the facts supporting the claim (see Williams Sonoma, Inc. v. EZ Port,WIPO Case No. D2000-0207; Slumberland France v. Chadia Acohuri,WIPO Case No. D2000-0195). Other panels state that the consent to transfer in essence is an admittance that the three elements of the Policy have been satisfied and they order transfer on such basis (Qosina Corporation v. Qosmedix Group,WIPO Case No. D2003-0620; Desotec N.V. v. Jacobi Carbons AB,WIPO Case No. D2000-1398). A third set of panels proceeds to analyze whether the evidence submitted satisfies the three elements of the Policy (Société Française du Radiotéléphone-SFR v. Karen,WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co.,WIPO Case No. D2003-0745).
In Cartoon Network the panel followed the first line of cases.
The full Panel concludes that this is also the correct approach in this case and holds that Respondent's consent to transfer is sufficient by itself to grant relief and that no examination into the three elements of the Policy is required. Thus, the following domain names , , , , , , , , , , , , , , are to be transferred to Complainant without further ado.
The transfer of the remaining two Domain Names and depends on whether or not the evidence submitted satisfies the three elements of the Policy.
Paragraph 4(a) of the Policy provides that Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) Respondent's Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) Respondent's Domain Names have been registered and is being used by Respondent in bad faith. B. Identical or Confusingly Similar
Respondent does not contest that the Domain Names and are identical or confusingly similar to Complainant's trademark. Both Domain Names fully incorporate AREVA. The addition of descriptive generic terms such as “service” or “services” is not sufficient to distinguish the Domain Names from Complainant's trademark which clearly represents the dominant part (both optically and phonetically) of the two Domain Names.
The majority of the Panel finds that the Domain Names and are confusingly similar to Complainant's trademark AREVA (as to the reasoning of the dissenting Panelist, see below). C. Rights or Legitimate Interests
Complainant asserts that Respondent has no right or legitimate interest in the Domain Names. According to paragraph 4(c) of the Policy, the following circumstances may demonstrate rights to or legitimate interests of a respondent in a domain name:
(i) Before any notice was given to respondent of the dispute, respondent used, or demonstrably made 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) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even though it has not acquired any trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name.
It is uncontested that Complainant neither authorized Respondent to use Complainant's trademark AREVA nor was or is Respondent an authorized agent, an authorized dealer, or other authorized handler of Complainant's products. There is obviously no affiliation or contract in effect between the parties.
Nevertheless, Respondent contends that as a provider of services in relation to AREVA products, it still has a legitimate interest in the Domain Names. It relies in this respect on two previous cases under the Policy i.e. Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (“Oki Data”), and DaimlerChrysler A.G. v. Donald Drummonds,WIPO Case No. D2001-0160 (“DaimlerChrysler”).
In Oki Data the panel held that an authorized sales or service agent of trademarked goods may use the trademark in its domain name. Respondent maintains that the same rationale applies to a provider of services for branded products in the aftermarket. Respondent also contends that its use of the AREVA mark is similar to that of the respondent in DaimlerChrysler where the panel - by majority decision - held that a shop owner selling parts and accessories exclusively for a car manufacturer's vehicles (in casu: Mercedes) was entitled to use the domain name .
The question of whether a reseller or provider of services in relation to another's trademarked goods or products can use that trademark in a domain name has been the subject of much discussion in previous cases under the policy. The issue is addressed at paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions which cites the two cases relied upon by the Respondent and a number of others. The full text of that section reads as follows: “2.3 Can a reseller have a right or a legitimate interest in the disputed domain name?
Majority view: A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant's relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark.
Relevant decisions:
Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, Denied
Experian Information Solutions, Inc. v. Credit Research, Inc.,WIPO Case No. D2002-0095 among others, Transfer
Minority view: Without the express permission of the trademark holder the right to resell the trademark holder's products does not create a right to use the trademark as the basis for a domain name.
Relevant decisions:
Motorola, Inc. v. NewGate Internet, Inc.,WIPO Case No. D2000-0079, Transfer with Dissenting Opinion
For cases dealing with a non-contractual relationship see:
DaimlerChrysler A.G. v. Donald Drummonds,WIPO Case No. D2001-0160, Denied (with dissent)
Philip Morris Incorporated v. Alex Tsypkin,WIPO Case No. D2002-0946, Transfer
Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent,WIPO Case No. D2004-0481, Denied”
The majority Panel intends to follow the majority view expressed in the Overview; namely that to provide a right or legitimate interest such use of a trademark must comply with a number of conditions first laid down in the Oki Data decision. Respondent has not done so in this case1.
First, the Respondent does not sell products or services solely related to the AREVA mark on the website to which the Domain Names resolve. Rather, as stated by Respondent in its own pleading, Respondent is offering services for products of different well-known and competing companies and trademark owners such as General Electrics, Siemens, ABB, Westinghouse, Schneider Electric, and others. In this connection, it is also important to note that Respondent has not contested Complainant's statement that Respondent registered more than 2,100 domain names, most of them incorporating a well-known trademark of companies for whose products Respondent is offering services (see Annex 31 to the Complaint). As a result, and quoting the language from Oki Data, there is a clear danger that Respondent is “using the trademark to bait Internet users and then switch them to other goods”. Such bait and switch practice is not a legitimate domain name use.
Second, as far as the majority Panel can tell Respondent's website does not accurately disclose the registrant's relationship with the trademark owner.
Third, by registering so many different forms of domains incorporating Complainant's (and others') trademarks, there is also a danger that Respondent is trying “to corner the market” at the expense of the trademark owner(s).
The majority Panel is unconvinced by Respondent's reliance on the DaimlerChrysler decision. As has already been stated, the registrant in that case was using the domain name solely in connection with dealings in genuine Mercedes parts. Further, the panel in that case recorded that there was “a clear disclaimer at Respondent's web site of any affiliation between Complainant and Respondent”. Therefore, whilst the decision in Daimler Chrysler predated that of Oki Data, the two cases are reconcilable. Also the salient facts are clearly very different from those in the present case2.
Thus, the majority Panel holds that Complainant has in the case of the two remaining Domain Names satisfied the prerequisites of paragraph 4(a) (ii) of the Policy. D. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, a domain name has been used and registered in bad faith if:
(i) circumstances indicating that respondent has registered and has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) 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 respondent has engaged in a pattern of such conduct; or
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on its website or location.
Respondent's prior knowledge of Complainant's rights in the trademark AREVA may safely be assumed and such fact is also not contested. Moreover, Respondent admits in its Response that it registered the Domain Names to attract business. Hence, Respondent intended to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's mark. The great number of Domain Names registered by Respondent which are incorporating or at least borrowing from the trademark AREVA (and others) prompts the Panel to conclude that Respondent's registrations were intended, or at least had the foreseeable effect, that Complainant (and others) were prevented from reflecting their marks in corresponding Domain Names. Respondent's pattern of initially registering three and later 14 different Domain Names incorporating or borrowing from the AREVA mark is along with all the other elements mentioned above evidence of bad faith.
The majority panel holds that pursuant to Policy paragraph 4(b)(iv), bad faith registration and bad faith use by Respondent has been proven by Complainant. 7. Decision
For the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the full Panel orders that the Domain Names, , , , , , , , , , , , , , , , be transferred to Complainant.
As to and , a majority of the Panel orders the transfer whilst one panelist is dissenting.
Bernhard F. Meyer
Presiding Panelist
Matthew S. Harris
Panelist
Neil A. Smith
Panelist (Partially Dissenting)
Dated: February 22, 2010
Full & Egal Universal Law Academy