WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Arkema France S.A. v. Erin Zhu Case No. D2010-0690 1. The Parties
The Complainant is Arkema France S.A. of Colombes, France, represented by Fross Zelnick Lehrman & Zissu, P.C. of the United States of America.
The Respondent is Erin Zhu of Menlo Park, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2010. On May 3, 2010, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On May 3, 2010, Network Solutions, LLC., transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaintsatisfied 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 the Respondent of the Complaint, and the proceedings commenced on May 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 27, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 28, 2010.
The Center appointed Cherise M. Valles as the sole panelist in this matter on June 14, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is Arkema France S.A., (hereafter “Arkema” or “Complainant”), a French company with offices in 40 countries, employing over 15,000 employees. One of Arkema's products is “Lacovyl”, a polyvinyl chloride (PVC) product with many commercial applications. The Complainant registered the LACOVYL trademark for the first time in 1989 and has also obtained registrations for the trademark in many jurisdictions around the world (see Exhibit G to the Complaint). The Complainant originally registered the disputed domain name on October 23, 2001. After a brief lapse in registration in 2001 between October 23 and December 11, the Complainant re-registered the domain name on December 12, 2001. The trademark LACOVYL is well-known throughout the industry.
The domain name is registered with Network Solutions LLC. The domain name was registered on October 23, 2001. 5. Parties' Contentions A. Complainant
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, in its Complaint filed on April 30, 2010, the Complainant asserts that:
The disputed domain name is identical or confusingly similar to a trademark or service mark, in which the Complainant has rights.
The disputed domain name is confusingly similar to the Complainant's LACOVYL trademark. It only consists of the Complainant's registered trademark plus the generic top level domain (“gTLD”) extension “.com”. The Complainant asserts that the disputed domain name is “confusingly similar” to the Complainant's trademark in the light of the fact that it incorporates its trademark in its entirety.
The Respondent lacks rights or legitimate interests in the domain name
The Complainant states that the Respondent does not have any rights or legitimate interests in the domain name. The Complainant has not obtained any information indicating that the Respondent has been using “Lacovyl” in a manner that would give it legitimate rights to the name. The Complainant has not authorised or licensed the Respondent to use the trademark LACOVYL.
The domain name was registered and is being used in bad faith.
The Complainant asserts that the disputed domain name was registered in bad faith. At the time of its registration, that is, on October 23, 2001, the Respondent undoubtedly had knowledge of the Complainant's well-known trademark. The Complainant asserts that the Respondent is a serial cybersquatter, having registered at least 11,120 domain names. The Complainant further claims that the disputed domain name is being used with the intention to attract Internet users to the other domain names owned by the Respondent's website for commercial gain, in order to drive up the value of each domain name for future sale. Bad faith may be found where the Respondent uses the legitimate trademark of the Complainant for nefarious purposes, such as to increase the page ranking in the natural search results of search engines such as G (as shown in Exhibit I to the Complaint).
The Complainant asserts that the Respondent is, therefore, using the Complainant's trademark in bad faith.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(b)(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Policy, the Rules and the Supplemental Rules provide specific remedies to trademark owners against registrants of domain names where the owner of the mark (the Complainant) establishes each of the following elements:
(a) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights;
(b) the Respondent has no rights or legitimate interests in respect of the domain name; and,
(c) the domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to respond in these proceedings and is therefore in default; the Panel shall draw such appropriate inferences therefrom. A. Identical or confusingly similar
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant's trademark.
The Complainant has submitted evidence demonstrating that it is the owner of the registered trademark LACOVYL. The Complainant has submitted evidence of its trademark registrations around the world in Exhibit G to the Complaint. The trademark LACOVYL is well known in the industry. The disputed domain name only differs from the Complainant's trademark with the addition of the generic top level domain (“gTLD”) extension. Thus, the disputed domain name incorporates the Complainant's mark in its entirety. It has been held in many prior panel decisions that when a domain name incorporates a registered mark in its entirety, it is confusingly similar to that registered trademark. See, Heidelberger Druckmaschinen AG v. Wayne Graham (Trading) Limited, WIPO Case No. D2006-1131. As stated in Foundation Le Corbusier v. Mercado M.,WIPO Case No. D2004-0723, the gTLD extension cannot be taken into consideration when judging confusing similarity to a trademark LEGO. It is well-established that the difference in the top level of a domain name such as “.com”, “.org”, or “.biz” does not affect whether the disputed domain name is identical or confusingly similar to a trademark. See, F. Hoffmann-LaRoche AG v. Digi Real Estate Foundation,WIPO Case No. D2005-1286.
In the light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant's registered mark and that paragraph 4(a)(ii) of the Policy is satisfied. B. Rights or Legitimate Interests
The burden of proof is on the Complainant to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. If a prima facie case is established, then the burden shifts to the Respondent to demonstrating that it has rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates three, non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name: “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 your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii) of the Policy:
(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 legitimate noncommercial 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.”
The Respondent did not submit a response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure.
The Panel finds that the Respondent, at the time of registration of the disputed domain name, most likely knew or should have known of the existence of the Complainant's well-known LACOVYL trademark. As the word “Lacovyl” is a fanciful name, in the Panel's view it is not credible to assume that the Respondent was not aware of the Complainant's registered trademark. See Ingersoll-Rand Co. v. Frank Gully d/b/a Advcomren, WIPO Case No. D2000-0021. The Complainant, who has registered the trademark LACOVYL, has not authorised, licensed, permitted or otherwise consented to the Respondent's use of the mark LACOVYL in the disputed domain name. In Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055, the panel stated “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or bona fide or legitimate use of the domain name could be claimed by the Respondent.”
The Respondent has not attempted to make any bona fide or legitimate non-commercial or fair use of the disputed domain name. The evidence suggests that the Respondent registered, and is using the disputed domain name, only because it is similar to the Complainant's well known mark, and for the purposes of attracting internet users to its site for fraudulent purposes. The Complainant has provided links on the disputed domain name to other websites owned by the Respondent in an attempt to drive up the page rankings for a particular domain name. Thus, the Respondent's actual use of the website is barely more than passive, such as that held to be in bad faith in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) 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;
(ii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor, or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent's web site or location or of a product or service on its website or location.
“Lacovyl” is a fanciful term, and not a generic or descriptive one. As the Panel held in Hoffmann-LaRoche Inc v. WhoisGuard, WIPO Case No. D2005-1288, “only someone with knowledge of the mark – considering the fact that it is an invented term – could have registered the disputed domain name”. The Panel finds that the Respondent in all probability had intended to use the Complainant's mark when registering the disputed domain name in order to direct traffic to a website for commercial gain. Thus, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its disputed domain name.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Cherise M. Valles
Sole Panelist
Dated: June 28, 2010
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