The Complainant is Arkema France of Colombes, France, represented by Page White & Farrer, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
The Respondent is Peter Green of London, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Cronon AG Berlin, Niederlassung Regensburg (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2016. On June 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 30, 2016, 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 and noting that German is the language of the registration agreement. In response to the Center’s notification regarding the language of the proceeding, the Complainant requested English be the language of the proceeding. The Respondent made no submission in this regard.
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 and 4, the Center formally notified the Respondent of the Complaint in both English and German, and the proceedings commenced on July 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 26, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 27, 2016.
The Center appointed Peter Wild as the sole panelist in this matter on July 29, 2016. 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 global chemical company, with headquarters in France and main operations in paint, coating and adhesives, air conditioning and refrigeration, food and agrochemicals, and further chemical industry related products. “Arkema France” is the company name and trading name of the Complainant. The annual sales figures are significant.
The Complainant is the owner of various trademark registrations for ARKEMA including European Union Trade Mark (“EUTM”) registration No. 4181731 ARKEMA, registered on February 9, 2006.
The Complainant also owns the domain names which it uses in relation to the website “www.” and which it uses in relation to the website “www.”.
The disputed domain name was registered on April 15, 2015. The Disputed Domain Name previously resolved to a website in French displaying many of the Complainant’s products, including the trademark ARKEMA and after printing the website, the header displayed “www.” as the address for the website. The Disputed Domain Name no longer resolves to an active website.
The Complainant sent cease-and-desist letter to the Respondent dated March 1, 2016 by mail and email but never received an answer. 5. Parties’ Contentions A. Complainant
According to the Complainant, its long and extensive use of the trade name and trademark ARKEMA created a significant and substantial goodwill and reputation in ARKEMA and ARKEMA FRANCE in relation to its business activities all over the world. The Complainant furthermore claims that the Disputed Domain Name, is identical to the Complainant’s company name and trading name, “Arkema France”, and consists of the Complainant’s trademark ARKEMA combined with the name of the country where the Complainant has its headquarters, namely, France. As such it is confusingly similar to the Complainant’s company name and trademark. The Complainant states that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Finally, the Complainant alleges that it never gave consent to use or register the Disputed Domain Name and that such use and registration was in bad faith, especially as the website to which the Disputed Domain Name resolved listed many of the Complainant’s products, businesses and trademarks, including the trademark ARKEMA. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
The Panel notes that the language of the Registration Agreement of the Disputed Domain Name is German. According to paragraph 11(a) of the Rules, “the language of the administrative proceeding shall be the language of the Registration Agreement subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” The Panel notes the Complainant’s request to proceed in English, as well as the Respondent’s lack of comment in this regard. The Panel is of the view that the Respondent, having been duly notified of the Complaint in both English and German will not be unfairly prejudiced by the proceeding moving forward in English. The Panel also notes that in the absence of any response to the Complaint, the Complainant would likely incur unnecessary expense and delay were it required to submit the Complaint translated in German. For the above reasons, the Panel determines that English shall be the language of the proceeding. 6.2. Substantive Issues A. Identical or Confusingly Similar
The Complainant owns a number of trademarks for the word ARKEMA, the oldest one dating back more than 10 years. The Disputed Domain Name only differs from the Complainant’s ARKEMA trademark by the addition of the geographical term “France”. The mere addition of a descriptive term, such as a country name or abbreviation, is insufficient to distinguish the Disputed Domain Name from the Complainant’s trademark. UDRP panels considering similar cases where registrants simply added a country name to a registered trademark have found such domain names to be confusingly similar. See eBay Inc. v. Sunho Hong,WIPO Case No. D2000-1633 (); America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713 (, , , ); and Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028 (). In the present case, the geographic addition refers to the Complainant’s country of domicile, adding to the similarity.
Therefore, the Panel comes to the conclusion that the Complainant has rights in the trademark ARKEMA, that the Disputed Domain Name is confusingly similar to the Complainant’s ARKEMA trademarks and consequently, the Panel is satisfied that the first element of the Policy met. B. Rights or Legitimate Interests
The Complainant asserts that the Respondent has not been authorized to use or register a domain name with the element “Arkema”. “Arkema” is not the name of the Respondent and the Respondent has not made any use of the disputed domain name in connection with a genuine offering of goods or services. The Respondent did not claim that he is making a legitimate noncommercial or fair use of the Disputed Domain Name. And the effective use of the Disputed Domain Name for a website which simply lists in form of a very basic directory many of the Complainant’s businesses and trademarks without any further information or context does not in the circumstances of this case give rise to any rights or legitimate interests on the part of the Respondent.
In light of the presented prima facie evidence put forward by the Complainant and the absence of any response or explanation from Respondent, the Panel comes to the conclusion that the second element of the Policy is met. C. Registered and Used in Bad Faith
The Complainant has not authorized the Respondent to use its trademark, company name or trading name. The content of the website under the Disputed Domain Name showed that the Respondent was well aware of the Complainant’s trade names and trademarks, including ARKEMA. This is a sufficient indication that the registration was made in bad faith, against better knowledge that the Complainant had rights in the trademark ARKEMA.
The references to the Complainant and its products on the website “www.” imply that the website is an official website of the Complainant which it is not. This impression is reinforced by the use of “A–site global d’Arkema” (“global site of Arkema”) as a header, when the website content is printed. As there is no genuine offer of goods or services from the website, the actual use is likely to interfere with the Complainant’s business, leading to a danger of confusion among actual and potential customers of the Complainant. In addition, the poor quality of the website may have a detrimental effect to the professional image of the Complainant. The claim that it is “the global site of Arkema” significantly adds to such a danger of confusion.
Given all the above, the Panel concludes that the Disputed Domain Name was primarily registered and used for the purpose of disrupting the business of the Complainant, creating confusion in the marketplace and an unprofessional image and appearance which may wrongly be attributed to the Complainant.
For those reasons, the Panel decides that the Disputed Domain Name was registered and used in bad faith and that the third element of the Policy is met. 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.
Peter Wild
Sole Panelist
Date: August 2, 2016
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