The Complainant is Arkema France of Colombes, France, represented by In Concreto, France.
The Respondent is Steve Co., Stave Co Ltd. of Adana, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2017. On August 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 22, 2017, 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. In response to a notification by the Center that the Complaint was administratively deficient sent to the Complainant on August 30, 2017, the Complainant filed an amended Complaint on August 31, 2017.
The Center verified that the Complaint together with 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 21, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 22, 2017.
The Center appointed Torsten Bettinger as the sole panelist in this matter on September 27, 2017. 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 headquartered in Colombes, France.
Its activities comprise the production of high-performance materials, industrial specialties and coating solutions.
The Complainant operates its worldwide business in 50 countries and has 133 production sites in Europe, North America, Asia and other world regions.
The Complainant has provided evidence that it is the registered owner of numerous trademarks relating to the designation “Arkema” including, inter alia
- international trademark N° 848.870 filed on February 25, 2005 for classes 1, 16 and 17 in Australia, Belarus, Switzerland, China, Egypt, Croatia, Islamic Republic of Iran, Japan, the Republic of Korea, Morocco, Monaco, Norway, Singapore, Russian Federation, Ukraine, Viet Nam and Turkey.
- international trademark N°1.142.251 filed on October 15, 2012 for classes 1, 17 and 42 in Australia, China, Egypt, Israel, Japan, the Republic of Korea, Monaco, Russian Federation, Singapore, Turkey, Ukraine.
- international trademark N°1.154.882 filed on February 4, 2013 for classes 1, 17 and 42 in Australia, China, Egypt, Israel, Japan, the Republic of Korea, Morocco, Monaco, New Zealand, Oman, Russian Federation, Singapore, Turkey, Ukraine.
- international trademark N°1.156.827 filed on March 1, 2013 for classes 1, 17 and 42 in Australia, China, Egypt, Israel, Japan, the Republic of Korea, Morocco, Monaco, New Zealand, Oman, Russian Federation, Singapore, Turkey, Ukraine.
The Complainant is also the owner of various domain names consisting of its trademark ARKEMA, including and .
The Respondent, a resident of Turkey, registered the disputed domain name on June 15, 2017. As of the time of the rendering of this decision, the disputed domain name has not been actively used. 5. Parties’ Contentions A. Complainant
The Complainant contends that its ARKEMA mark is widely known and has grown in one of the leading trademarks in France in the field of chemistry.
The Complainant submits that the disputed domain name is identical to the Complainant’s ARKEMA trademark as it incorporates the mark in its entirety.
With regard to the Respondent having no rights or legitimate interests in the disputed domain name, the Complainant asserts that it has never licensed nor otherwise permitted the Respondent to use the ARKEMA mark or use a domain name that incorporates or is similar to its ARKEMA trademark and that the Respondent is not offering any goods or services under the disputed domain name.
Finally, with regard to the disputed domain name having been registered and being used in bad faith, the Complainant argues that (1) Complainant’s long standing use and reputation of the trademark ARKEMA and the fact that the term has no descriptive meaning indicates that the Respondent was aware of the Complainant’s rights at the time of registration of the disputed domain name; (2) that bad faith should be presumed due to the Respondent’s pattern of registering domain names which incorporate famous brands, such as , , and and that (3) because of the strong public awareness of the company Arkema France any active use of the disputed domain name would inevitably result in a likelihood of confusion with the Complainant’s ARKEMA trademark as to the source, sponsorship, affiliation or endorsement of the website available under the disputed domain name. B. Respondent
As noted above, the Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
The Respondent’s default in the case at hand does not automatically result in a decision in favor of the Complainant, however, paragraph 5(f) of the Rules provides that if the Respondent does not submit a response, in the absence of exceptional circumstances, the Panel may decide the dispute solely based upon the Complaint.
Further, the Panel may draw such inferences as are appropriate from the Respondent’s failure to submit a Response. A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name is identical to the ARKEMA trademark, in which the Complainant has rights.
It is well established that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors usually considered in trademark infringement cases. (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110; Dixons Group Plc v. Abu Abdullaah,WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar,WIPO Case No. D2003-0327; BWT Brands, Inc and British American Tobacco (Brands), Inc. v. NABR,WIPO Case No. D2001-1480; see also the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 1.7.).
In this case, the disputed domain name incorporates the Complainant’s trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish identity or at least confusing similarity to a registered trademark. Moreover, it has been long established under the UDRP case law that the specific generic Top-Level Domain (“gTLD”) designation such as “.com”, “.net” “.org” is typically not to be taken into account when assessing the issue of identity and confusing similarity, except in certain cases where the applicable gTLD suffix may itself form part of the relevant trademark (see WIPO Overview 3.0, section 1.11).
Therefore, the Complainant has established the first element under the Policy set forth by paragraph 4(a)(i). B. Rights or Legitimate Interests
A Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] are making a 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 Complainant has asserted that it never licensed or permitted the Respondent to use its ARKEMA trademark, that the Respondent has no trademark rights that correspond to the disputed domain name and that the Respondent has not been commonly known by that name nor has the Respondent made any attempt to establish an Internet presence using the disputed domain name. These assertions are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
Given that the Respondent has failed to come forward with any evidence to refute the Complainant’s prima facie showing that the Respondent lacks rights or legitimate interests, the Panel concludes that the Complainant has satisfied the second element of the Policy set forth by paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or
(ii) The Respondent has registered the disputed 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; or
(iii) The Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed 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 website or location or of a product or service on the Respondent’s website or location.
Although the circumstances listed in paragraph 4(b) are all phrased in terms of affirmative actions by the Respondent, it is by now well accepted that the passive holding of a website, in certain circumstances, can constitute bad faith use under the Policy. See, e.g., Teachers Insurance and Annuity Association of America v. Wreaks Communications Group,WIPO Case No. D2006-0483; Telstra Corporation Limited. v. Nuclear Marshmallows,WIPO Case No. D2000-0003; WIPO Overview 3.0, section 3.3.
While panels will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include:
(i) the degree of distinctiveness or reputation of the complainant’s mark,
(ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use,
(iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and
(iv) the implausibility of any good faith use to which the domain name may be put. (See Telstra Corporation Limited v. Nuclear Marshmallows, supra; see also WIPO Overview 3.0, section 3.3.)
The circumstances of the present case are sufficiently similar to those present in Telstra to establish bad faith passive holding of the disputed domain name.
The Complainant’s highly distinctive trademark ARKEMA is long established and widely known, also in the Respondent’s location. The trademark ARKEMA is distinctive and has no generic or descriptive meaning. This and the Respondent’s pattern of registering domain names which incorporate other famous brands make it inconceivable that that the Respondent coincidentally selected the disputed domain name without any knowledge of the Complainant and its trademarks ARKEMA.
Given that the Complainant’s ARKEMA mark is solely connected with the Complainant and does not have any generic or descriptive meaning, the disputed domain name is also not susceptible to be use in a good faith generic or descriptive sense.
One difference between this case and the Telstra decision is that, unlike as in Telstra, in this case, the Respondent has supplied registration information, which does not prima facie appear to be false. However, the Telstra holding does not turn on the use of false contact information; rather, the central holding of that case is that passive holding of a well-known mark can itself suffice to establish bad faith registration and use. See,e.g., Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, supra (“The provision of false contact information or operation under a false identity is not a prerequisite for a finding of bad faith registration and use based on respondent inaction”).
Having found that the Respondent’s registration and passive holding of the domain name constitutes bad faith registration and use, the Complainant has satisfied its burden on paragraph 4(a)(iii) of the Policy. 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.
Torsten Bettinger
Sole Panelist
Date: October 11, 2017
Full & Egal Universal Law Academy