The Complainant is Arkema France of Colombes, France, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Pepi Robert of Pretoria, Gauteng, South Africa. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with NetEarth One Inc. d/b/a NetEarth (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 18, 2014. On June 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 22 and June 30, 2014, the Registrar 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 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 the Respondent of the Complaint, and the proceedings commenced on July 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 30, 2014.
The Center appointed David Stone as the sole panelist in this matter on August 6, 2014. 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 a French company that is a member of a global organization known as the "Arkema Group". Arkema makes and sells a wide variety of products including fluorochemicals, technical polymers, thiochemicals, functional additives, industrial coatings, acrylics, hydrogen peroxide, organic peroxides and molecular sieves.
The Complainant is the owner of a number of trade marks that incorporate the term ARKEMA. In particular, they have the following registered trade marks:
1. International Registration No. 847865 for ARKEMA, registered since November 30, 2004 in classes 1, 2, 3, 4, 5, 16, 17, 37, 38, 39, 40, 41, 42 and 45, designating 55 territories; and
2. International Registration No. 848870 for ARKEMA, registered since February 23, 2005 in classes 1, 16 and 17, designating 17 territories.
(together, the "Complainant's Marks").
The Complainant is also the registrant of the domain name , which incorporates the trademark ARKEMA.
The Disputed Domain Name is registered to the Respondent, an individual, Pepi Robert. The Respondent used the email address "[…]@" to send at least one e-mail to third-party vendor Black Box Network Services, misrepresenting himself as R. P. Greco, the Treasurer of Arkema, Inc., in an attempt to purchase 200 external hard drives. The website hosted at the Disputed Domain Name is a place-holder website. 5. Parties' Contentions A. Complainant
The Complainant submits that (i) the Disputed Domain Name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that the Disputed Domain Name has been registered or subsequently used in bad faith.
The Complainant submits that the use of the term "arkerma" within the Disputed Domain Name is confusingly similar to the Complainant's Marks. Further, the Complainant submits that this amounts to little more than an easily missed misspelling by one letter of the ARKEMA trade mark. In addition, the use of "groups", a generic term, enhances the likelihood that consumers will associate the Disputed Domain Name with the Complainant.
The Complainant submits that because third parties associate the name "Arkema Group" with the Complainant, they are likely to see the Disputed Domain Name and/or the email address used by the Respondent and will wrongly assume that the Disputed Domain Name and/or email address are associated with the Complainant.
The Complainant submits that there is no relationship between the Complainant and Respondent that would give rise to any license, permission, or other right by which the Respondent could own or use the Complainant's Marks. It is further submitted that the Disputed Domain Name is not, nor could it be contended to be, a nickname of the Respondent.
The Complainant submits that the Respondent's only use of the Disputed Domain Name is in connection with an email address used to attempt to place a fraudulent order for external hard drives using the reputation and credit of the Complainant. It is further submitted that an unsuspecting retailer would be willing to sell such equipment to the Respondent based on the Complainant's reputation and not realize that they were not communicating with an official representative of the Complainant.
The Complainant submits that the Respondent's non-use of the Disputed Domain Name for any legitimate commercial purpose is itself bad faith use in view of the renown of the ARKEMA trade mark as well as the absence of any likely legitimate uses by the Respondent.
The ARKEMA mark is well known within the industrial specialties, high performance materials, and coating solutions industries and receives widespread international recognition. In light of this and combined with the Respondent's deliberate effort to impersonate an employee of the Complainant, the Complainant submits that it is inconceivable that the Respondent was unaware of the ARKEMA trade mark when it registered the Disputed Domain Name.
The Complainant also submits that the Respondent's use of the Disputed Domain Name and its associated email servers to impersonate the Complainant suggests that the Respondent knew of the Complainant's rights in the ARKEMA trade mark.
The Complainant submits that the Respondent's exploitation of the Complainant's goodwill for financial gain by misrepresenting his identity to unsuspecting equipment vendors, in addition to the fact that the Disputed Domain Name is not currently associated with an active website, demonstrates bad faith. It is therefore submitted by the Complainant that the Respondent's use of the Complainant's Marks is solely for the purpose of trading on the Complainant's rights and reputation.
For the reasons outlined above, the Complainant requests that the Disputed Domain Name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant has to prove that:
(i) the Disputed Domain Name is identical or confusing similar to a name, trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and used by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant's Marks constitute trade marks in which the Complainant has rights for the purpose of the Policy. Further, the Panel finds that the principal component of the Disputed Domain Name (the term "arkerma") is confusingly similar to the Complainant's Marks.
The Complainant provided evidence that it has prior registered rights in the mark ARKEMA around the world. From the evidence supplied, the Panel finds that ARKEMA is a well-known mark, at least in relation to chemicals used in industry. Several other UDRP panels have made similar findings: see Arkema France v. Brian Van de Walt,WIPO Case No. D2014-0547; Arkema France v. Chemistry, WIPO Case No. D2013-0658.
The addition of the generic term "groups" does not serve to distinguish the Disputed Domain Name from the Complainant's trade mark and business name. The term "groups" is in fact consistent with the global scale of the companies associated with the Complainant and would give the impression of some legitimate connection or endorsement by the Complainant: see Arkema France v. Brian van de Walt, supra.
Further, the generic Top-Level Domain ("gTLD") ".org" does not distinguish the Disputed Domain Name from the Complainant's mark as this gTLD may be disregarded by panels when assessing confusing similarity. B. Rights or Legitimate Interests
The Respondent does not appear to have made any use of the Disputed Domain Name beyond registering it as it does not host an active website. The Respondent has only used the email address to attempt to make a fraudulent order for goods to take advantage of the credit and reputation of the Complainant.
The Panel therefore finds that the Respondent has no rights to or legitimate interests in the Disputed Domain Name and that the Complainant has made out its prima facie case for this contention. The Respondent did not exercise its right to respond substantively in these proceedings. Thus, the Respondent has failed to rebut the prima facie case made by the Complainant or advance any other arguments supporting rights or legitimate interests. C. Registered and Used in Bad Faith
The Panel finds that the Disputed Domain Name was registered and is being used in bad faith.
The Disputed Domain Name currently has no content. Previous UDRP panels have found that passive holding of a disputed domain name does not prevent a finding of bad faith (Cleveland Browns Football Company LLC v. Andrea Denise Dinoia,WIPO Case No. D2011-0421) and that UDRP panels should consider all the circumstances of the Respondent's behaviour in considering whether passive holding satisfies the requirements of paragraph 4(a)(iii) of the Policy.
There is no relationship between the term "arkema", the dominant element in the Complainant's Marks, and the Respondent. Registration of a domain name that is confusingly similar to a famous trade mark by an entity that has no relationship to that mark may be sufficient evidence that the domain name has been used and registered in bad faith (Costco Wholesale Membership Inc. and Costco Wholesale Corporation v. Almantas Kakereka and Hostmaster Oneandone, 1&1 Internet, Inc.,WIPO Case No. D2007-1833).
Further, the Respondent used the email address of the Disputed Domain Name to send fraudulent emails impersonating employees of the Complainant so as to place orders for goods in the name of the Complainant and take advantage of its reputation and credit.
The Panel finds that the Disputed Domain Name was registered and is being used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
David Stone
Sole Panelist
Date: August 13, 2014
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