The Complainant is Veolia Environnement SA of Paris, France, represented by IP Twins S.A.S., France.
The Respondent is Hayden Fusco of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), self-represented. 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 25, 2017. On August 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 26, 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.
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, 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 sent email communications to the Center on September 1, 2017. The Center notified the Parties that it would proceed to Panel Appointment on September 22, 2017.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on October 6, 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
It results from the Complainant’s undisputed allegations that the Complainant is the holding company of the Veolia group which is active in three main service and utility areas, i.e. services in the sector of water, waste and energy. The Complainant is more than 160 years old, employs 163,226 employees and represents today a total of EUR 24.39 billion in revenue. Amongst others, the Complainant is also present in the United Kingdom, where the Respondent is located.
Furthermore, it results from the undisputed evidence provided by the Complainant that it is the registered owner of a number of registered trademarks, such as
(1) International Trademark registration No. 814678 for VEOLIA, designating amongst others the United Kingdom; registered on September 11, 2003 covering goods and services in classes 1, 6, 9, 11, 17, 19, 32, 35, 36, 37, 39, 40, 41 and 42; and
(2) European Union Trademark registration No. 0910325 for VEOLIA registered on March 10, 2006, covering goods and services in classes 9, 11, 16, 35, 36, 37, 38, 39, 40, 41, 42 and 44.
In addition, the Complainant owns the domain name reflecting its trademark which was registered on December 30, 2002.
According to the Registrar’s verification response, the disputed domain name was registered to the Respondent on January 28, 2017. The website to which the disputed domain name resolves contains a blog under construction with limited content.
The address used for the registration of the disputed domain name corresponds to the address of the Complainant’s United Kingdom headquarters (with a typo). However, at the time the Complaint was filed, there was no person called “Hayden Fusco” working at VEOLIA.
Prior to commencing this UDRP proceeding, on April 21, 2017, the Complainant sent cease-and-desist letter via email to the Respondent requesting amongst others immediate cancellation of the disputed domain name. The Respondent replied to this email with an offending and harassing email dated April 21, 2017 stating that he allegedly worked for Veolia and was the director of another limited company. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain name is confusingly similar to its VEOLIA marks. The generic Top-Level Domain (“gTLD”) “.com” is irrelevant in the comparison of a domain name to a trademark.
The Complainant further contends that the Respondent has no prior rights or legitimate interests in the disputed domain name. In particular, the Respondent has no affiliation to the Complainant and has not been authorized to use or register any domain names containing the Complainant’s VEOLIA trademark. Furthermore, the Respondent is not a licensee of or otherwise affiliated with the Complainant. Moreover, the Respondent is not commonly known by the disputed domain name, has not made any preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, and has not used the disputed domain name for any legitimate noncommercial or fair use purpose.
Finally, the Complainant contends that the Respondent registered and uses the disputed domain name in bad faith. In particular, it is implausible that the Respondent was unaware of the Complainant’s existence when registering the disputed domain name. A simple search via “Google” or any other search engine would have delivered results related to the Complainant’s trademark VEOLIA. B. Respondent
The Respondent did not substantially reply to the Complainant’s contentions. He rather limited himself to send several offending and threatening emails. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that the disputed domain name be transferred or cancelled:
(i) The disputed domain name is identical or confusingly similar to a trademark 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 is being used in bad faith.
The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, a complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights.
It results from the evidence provided that the Complainant is the registered owner of several trademark registrations consisting of the verbal element “veolia”, e.g., International Trademark registration No. 814678 VEOLIA (designating amongst others the United Kingdom) and European Union Trademark registration No. 0910325 VEOLIA. These marks predate the creation date of the disputed domain name, which is January 28, 2017.
Many UDRP panels have found that a domain name is confusingly similar to a complainant’s trademark where the domain name incorporates the complainant’s trademark in its entirety (e.g., Facebook, Inc. v. Mirza Azim,WIPO Case No. D2016-0950; Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320; KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1910). In the present proceedings the Complainant’s registered trademark is fully included in the disputed domain name.
Furthermore and as noted by many prior UDRP panels, the applicable gTLD suffix “.com” in the disputed domain name is normally to be disregarded under the identity/confusing similarity test.
Finally, the disputed domain name combines the Complainant’s registered trademark VEOLIA as its distinctive element with the generic term “services”, which is totally applicable as a descriptive term of the Complainant and its services/business. The addition of this descriptive term to the distinctive trademark does not serve to distinguish the disputed domain name from the trademark (see Dell Inc. v. Eric Villegas,WIPO Case No. D2016-0399).
In the light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.
According to the Complaint’s allegations, which have remained unchallenged, the Complainant has not authorized the Respondent’s use of the trademark VEOLIA through the registration of the disputed domain name comprising said mark entirely. In addition, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name pursuant to paragraph 4(c)(ii) of the Policy.
In addition, according to the Complainant’s undisputed allegations, the website to which the disputed domain name resolves offers a blog under construction with limited content that could lead Internet users to think that the disputed domain name is somehow connected to the Complainant. Taking into account that VEOLIA is certainly a worldwide well-known trademark, such use can neither be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue in the sense of paragraph 4(c)(i) and (iii) of the Policy.
It is acknowledged that once the Panel finds 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 in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence in this regard, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
It results from the Complainant’s undisputed allegations and evidence that its VEOLIA trademarks predate the registration date of the disputed domain name and have worldwide goodwill and renown, including in the United Kingdom, where the Respondent is located. Furthermore, the Respondent himself claims to work for VEOLIA (which is, however, disputed by the Complainant) and has used the Complainant’s United Kingdom headquarters’ address (with a typo) for the registration of the disputed domain name. Therefore, and in the absence of any substantial response by the Respondent, this Panel has no doubt that the Respondent – when registering the disputed domain name – knew that the disputed domain name included the Complainant’s VEOLIA trademark. Registration of this disputed domain name in the absence of rights or legitimate interests, with awareness of a reputed trademark and in combination with a term (“services”) that is descriptive of the Complainant’s business, in this case amounts to registration in bad faith (see e.g., Facebook, Inc. v. Mirza Azim, supra; KOC Holding A.S. v. VistaPrint Technologies Ltd, supra; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, supra and The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa,WIPO Case No. D2014-2100; Deutsche Lufthansa AG v. Mustermann Max, Muster AG, supra).
Finally, this Panel finds that the further circumstances surrounding the registration, i.e., the Respondent’s failure to substantially reply to the Complainant’s cease-and-desist letter, its failure to substantially respond to this Complaint, the undisputed reputation of the VEOLIA trademark, in particular also in the United Kingdom, where the Respondent is located, use of the Complainant’s United Kingdom-headquarters’ address (with a typo) for the registration of the disputed domain name, supported by the evidence provided by the Complainant, suggest that the Respondent was aware that he has no rights or legitimate interests in the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith (see Sanofi, Genzyme Corporation v. Domain Privacy,WIPO Case No. D2016-1193; Actelion Pharmaceuticals, Ltd v. Whois Agent, Whois Privacy Protection Service, Inc / Jean-Paul Clozel,WIPO Case No. D2016-0068; America Online, Inc. v. Antonio R. Diaz,WIPO Case No. D2000-1460).
In the light of the above, this Panel concludes that the Respondent knew the trademark VEOLIA when he registered the disputed domain name, and that there is no plausible legitimate use that the Respondent could make of the disputed domain name.
Consequently, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy. The Complainant is therefore deemed to also have satisfied the third element, 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.
Tobias Malte Müller
Sole Panelist
Date: October 20, 2017
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