Complainant is Arkema France of Colombes, France, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America ("United States").
Respondents are Arkema Global, Arkema Corp of Sunnyvale, California, United States, Arkema Group of Minneapolis, United States, Arkema Cloud of Santa Barbara, California, United States (hereinafter, "Respondent"). 2. The Domain Names and Registrar
The disputed domain names , , and are registered with Melbourne IT Ltd (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 13, 2014. On November 14, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 17, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on November 21, 2014.
The Center verified that the amended 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 amended Complaint, and the proceeding commenced on December 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 23, 2014.
The Center appointed Roberto Bianchi as the sole panelist in this matter on January 5, 2015. 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
Complainant is a French company formed in 2004 with offices in 40 countries. Complainant produces and markets a wide variety of products, including chemical products, additives, industrial coatings, etc. Complainant operates 80 industrial facilities in Europe, North America and Asia, and has sales subsidiaries in every region of the world.
Complainant owns registrations for its ARKEMA trademark in many jurisdictions, including the following United States registrations:
ARKEMA, Registration No. 3,082,135, registered on April 18, 2006, filed on February 24, 2005, in international classes 1 and 17;
ARKEMA, Registration No. 3,082,057, registered on April 18, 2006, filed on December 16, 2004, in international classes 1 and 2.
The disputed domain name was registered on July 22, 2014.
The disputed domain name was registered on September 9, 2014.
The disputed domain name was registered on September 10, 2014.
The disputed domain name was registered on September 30, 2014.
According to an independent research performed by the Panel on January 19, 2015, the websites at the disputed domain names showed the following content:
"www." is a general purpose website, containing various click-through and sponsored links apparently unrelated to one another.
"www." shows the following error message: "Server not found. Firefox can't find the server at www.".
"www." shows the following text: "This site is under construction".
"www." shows the following error message: "Server not found. Firefox can't find the server at www.". 5. Parties' Contentions A. Complainant
Complainant contends that the disputed domain names are identical and/or confusingly similar to Complainant's trademarks. Not only has Complainant demonstrated extensive use of the trademark giving rise to common law rights, but it also owns trademark registrations in the United States of America, which entitles Complainant to a presumption of validity. The disputed domain names are confusingly similar to Complainant's ARKEMA trademark, as each consists of Complainant's ARKEMA trademark in its entirety and the generic terms "global", "org", "corp", and "cloud".
Complainant adds that Respondent cannot demonstrate or establish any right or legitimate interest to the disputed domain names. There exists no relationship between Complainant and Respondent that would give rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating Complainant's ARKEMA mark. The disputed domain names are not, nor could they be contended to be, a nickname of Respondent or in any other way identified with or related to a legitimate interest of Respondent. Upon information and belief, Respondent's primary use of the disputed domain names and is in connection with email addresses used to place fraudulent orders for external hard drives using the reputation and credit of Complainant, i.e., as email addresses for sending email messages purportedly on behalf of employees of Complainant, in order to confuse the vendors into delivering computer hardware to Respondent while billing Complainant. Such use demonstrates neither a bona fide offering of goods or services nor a legitimate interest. It is likely that an unsuspecting retailer would be willing to sell such equipment to Respondent based on Complainant's reputation and not realize that they were not communicating with an official representative of Complainant. Moreover, when the disputed domain names and were used in connection with active websites, the websites blatantly attempted to confuse consumers and visitors into believing that they were owned, operated, affiliated, or authorized by Complainant.
Respondent's non-use of the disputed domain names for any legitimate purpose is itself bad faith use in view of the renown of the ARKEMA trademark and absence of likely legitimate uses by an unauthorized party like Respondent. As held in Comerica Inc. v. Horoshiy, Inc., WIPO Case N0. D2004-0615, "[t]he very act of having acquired [the domain names incorporating the complainant's mark] raises the probability of Respondent using them in a manner that is contrary to Complainant's legal rights and legitimate interests. Moreover, there cannot be any legitimate use to which such disputed names can be put that would not violate Complainant's rights".
Complainant further contends that Respondent registered and used the disputed domain names in bad faith. Complainant's ARKEMA trademark is well known within the industrial specialties, high performance materials, and coating solutions industries, and enjoys widespread international recognition. That fact, combined with Respondent's deliberate effort to impersonate employees of Complainant, makes it inconceivable that Respondent was unaware of the ARKEMA trademark when it registered the disputed domain names. The mere fact that Respondent registered confusingly similar domain names without authorization is, in and of itself, evidence of its bad faith registration.
Respondent's use of the disputed domain names and and their associated email servers to impersonate Complainant is further evidence that Respondent knew of Complainant's rights in the ARKEMA trademark and suggests Respondent's opportunistic bad faith in registering the disputed domain names and .
Complainant contends further that Respondent's exploitation of Complainant's goodwill for financial gain by misrepresenting its identity to unsuspecting equipment vendors demonstrates Respondent's bad faith, pursuant to Policy 4(b)(iv).
Finally, the disputed domain names are not currently associated with active websites, which has long been recognized as bad faith in and of itself. See Telstra Communications v. Nuclear Marshmallows,WIPO Case No. D2000-0003. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Preliminary Issue: Consolidation and Identification of Respondent
In its amended Complaint, Complainant states that it submits a single complaint for the four disputed domain names, because all of their registrants appear to be related to one another. Complainant further states that the disputed domain names and were associated with virtually identical websites, each of which were designed to mimic an official website from Complainant. Complainant adds that the disputed domain names and were created within a single day of each other, while the disputed domain names and were used to perpetrate a virtually identical fraud. Complainant adds that the Whols information for each of the disputed domain names is believed to be incomplete and/or fictitious. Since evidence from the websites associated with each of the disputed domain names indicates common ownership or control of the disputed domain names, Complainant requests that all of the disputed domain names be included in a single UDRP proceeding, and explains that in its amended Complaint each of the purported registrants is collectively referred to as "Respondent".
Respondent did not reply to any of Complainant's contentions. In particular, Respondent (or any of the individual registrants for the disputed domain names) did not oppose to or in any manner reply to Complainant's request for consolidation.
The Panel is satisfied by Complainant's evidence that there are sufficient links between the contents and operation of the websites associated to the disputed domain names, such as to conclude that these websites - and thus the registrants of the four disputed domain names - appear to be linked under a common control, and/or are acting in concert to profit from the incorporation of the ARKEMA mark in the disputed domain names, with the purpose of obtaining an illegitimate benefit. Accordingly, the Panel believes that the Center was right in provisionally admitting Complainant's Complaint as a single UDRP proceeding, and decides that the present proceeding be consolidated, and that the registrants of the four disputed domain names be jointly treated as "Respondent".
The Panel observes that in any case, the Center made reasonable efforts to notify each of the registrants of the disputed domain names of the amended Complaint, and that therefore each of them had a reasonable opportunity to individually submit a response if they were independent from each other. Thus, the Panel believes that under this consolidation, the right of all parties to be treated with equality and to be given a fair opportunity to present their cases has been adequately preserved. See paragraph 10(b) of the Rules. B. Identical or Confusingly Similar
By submitting an extensive list of trademark registrations for the mark ARKEMA in numerous jurisdictions, with special reference to United States registrations 3,082,057 and 3,082,135, Complainant has proved to the satisfaction of the Panel that it owns trademark rights in the ARKEMA trademark.
The Panel notes that in each of the disputed domain names the ARKEMA mark is incorporated in its entirety, just adding the generic terms "org", "global", "corp" and "cloud", respectively, and the generic Top-Level Domain ("gTLD") ".com". It is well established that the addition of a generic term in a domain name, and of the respective gTLD, to a mark, generally is inapt to distinguish the domain name from the mark, in particular where, as in the instant case, the incorporated trademark is the dominant element. See paragraph 1.9 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") ("Is a domain name consisting of a trademark and a generic, descriptive or geographical term confusingly similar to a complainant's trademark? […] The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant or principal component of the domain name. The principal exception that some panels have found in certain cases is where a trademark (especially one of a descriptive nature) is incorporated or subsumed within other words or textual elements so that the trademark is not clearly the dominant component of the domain name.")
The Panel concludes that the disputed domain names are confusingly similar to Complainant's trademark ARKEMA. C. Rights or Legitimate Interests
The consensus view of UDRP panels is that while the overall burden of proof rests with the complainant, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests. See WIPO Overview 2.0, paragraph 2.1.
Complainant contends that Respondent cannot demonstrate or establish any such right or legitimate interest. Complainant states that there exists no relationship between Complainant and Respondent that would give rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating Complainant's ARKEMA mark. Complainant adds that the disputed domain names are not a nickname of Respondent or in any other way identified with or related to a legitimate interest of Respondent.
The Panel is satisfied that the disputed domain names and have been used in connection with email addresses used to place fraudulent orders for computer hardware using the name of Complainant, i.e., as email addresses for sending email messages purportedly on behalf of employees of Complainant, in order to confuse the vendors into delivering computer hardware to Respondent while billing Complainant. The Panel agrees with Complainant that such use demonstrates neither a bona fide offering of goods or services nor a legitimate interest. Also, by submitting printouts of the corresponding websites, Complainant has also shown that the disputed domain names and were used in connection with active websites, leading Internet users into believing that these websites were owned, operated, affiliated, or authorized by Complainant.
Based on the available record, the Panel is of the opinion that this use of the disputed domain names clearly is illegitimate and in bad faith.
Accordingly, the Panel concludes that Complainant has made out its case that Respondent lacks any rights and legitimate interests in the disputed domain names. D. Registered and Used in Bad Faith
Complainant contends that Respondent registered each of the disputed domain names for the purpose of perpetrating a fraud. Complainant adds that by using the disputed domain name and the email address "[…]@", Respondent sent emails to one of Complainant's vendors by phone and by email in which it falsely claimed to be an employee of Arkema Group in an attempt to purchase "12 HP EliteBook Folio 9470m computers" with a total value at over USD 12,750. Complainant emphatically states that it does not employ anyone by the name which Respondent used in its email nor did it authorize anyone by that name to register a domain name or solicit price quotes from any of Complainant's vendors. Complainant also explains that when it first learned of the registration of the disputed domain name , the corresponding website blatantly attempted to confuse consumers and visitors into believing that it was owned, operated, affiliated or authorized by Complainant. There were no disclaimers posted on the website. Instead, the website was presented as Complainant's official website.
After examining Complainant's evidence, the Panel agrees that the content posted on the "www." website, presenting Complainant's activities and related descriptions, is clearly directed at creating the impression to the Internet users that they are visiting the official website of Complainant, in a clear attempt of impersonation. As found by previous UDRP panels, this conduct is not a legitimate use of the domain name but rather a use in utmost bad faith. See Toray Industries, Inc. v. Whois Privacy Protection Service, Inc., ALAN ONEAL, Name Redacted, SALMAN MASUD,WIPO Case No. D2013-1787 ("Furthermore, the use of the Domain Names cannot be considered a bona fide offering of goods or services. In particular the Respondents did not demonstrate any use or demonstrable preparation to use the Domain names in connection with a bona fide offering of goods or services as the Respondents are using the Domain Names to commit fraudulent actions, in that the Respondents impersonated the Complainant or its staff in order to deceive, and extract information/monies via a scam.")
As to the disputed domain name , the corresponding website presented itself as the official website for Complainant and copied, apparently without any authorization, contents of Complainant's official website, "". The Panel is of the opinion that there being no disclaimers posted on the website, this use cannot be evidence of rights or legitimate interests in the disputed domain name but, instead, of blatant bad faith.
Complainant further contends that when it first learned of the disputed domain name , the corresponding website displayed an "under construction" message. As discussed at Section 4 above, on January 19, 2015 the Panel noted that the "www." website continued to be "under construction". In other words, there is nothing on the record showing that Respondent presently is preparing to use the corresponding disputed domain name for any legitimate purpose, given the full incorporation of Complainant's mark in the disputed domain name, and the fact that Respondent is totally unrelated to Complainant. The Panel cannot but conclude that Respondent lacks any rights or legitimate interests in this domain name. The same conclusion applies to the disputed domain names and , which by the same date delivered a "Server Not Found" error.
Complainant has also shown that by using the disputed domain name in the email address "[…]@", Respondent sent emails to one of Arkema's vendors in which it falsely claimed to be Complainant's Purchasing Director, in an attempt to purchase 10 laptop computers and 150 external hard drives. Complainant explains that when it first learned of the disputed domain name , it was only being used in connection with an "Under Construction" page. Complainant contends that Respondent used the disputed domain names and to misrepresent its identity so that it could avail itself of Complainant's reputation and credit history and so that invoices for the intended purchase would be sent to Complainant and not Respondent.
The Panel notes that the websites at the disputed domain names , and presently deliver error messages or are under construction. In other words, the disputed domain names are inactive. See Section 4 above. The Panel believes that in the circumstances of this case, this fact not only suggests a lack of rights or legitimate interests in the corresponding domain names, but also a use in bad faith under the doctrine of passive use in bad faith of the much cited Telstra Communications v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In fact, since the ARKEMA mark is fully incorporated in the disputed domain names, and given that Respondent used web content belonging to Complainant's official website, there is no imaginable use of the these domain names by Respondent other than in bad faith.
As to the present use of the disputed domain name where sponsored and click-through links are shown, the Panel believes that Respondent continues to profit from Complainant's ARKEMA mark to attract Internet users presumably looking for Complainant and its ARKEMA products to generate income via click-through links. In other words, by using this domain name in such a manner, 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 Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its web site or location. This is a circumstance of registration and use in bad faith of the disputed domain name pursuant to Policy 4(b)(iv).
Finally, given that the ARKEMA mark is well known as belonging to an international manufacturer and marketer of chemical products, and that it is registered in various jurisdictions, including the United States which predates the registration of the disputed domain names for several years, the Panel concludes that Respondent must have known and certainly targeted Complainant when it registered the disputed domain names. In the circumstances of this case, this means that the registration was in bad faith.
Thus, the Panel concludes that the disputed domain names were registered and are 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 names , , and be transferred to Complainant.
Roberto Bianchi
Sole Panelist
Date: January 19, 2015
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