The Complainant is Arkema France of Colombes, France, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is WhoisGuard, Inc of Panama City, Panama / Bao Tsai, of New Orleans, Louisiana, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2018. On November 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 2, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 6, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 6, 2018. Furthermore, in response to a further notification by the Center that one of the annexes of the Complaint was deficient, the Complainant filed an amendment to the Complaint on November 8, 2018.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2018.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on December 12, 2018. 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 a French company formed in 2004 who produces and commercializes a wide variety of chemical products. It claims to operate offices in 40 countries amongst others in Europe and the United States of America with over 13,800 employees.
It further results from the undisputed evidence provided by the Complainant that the Complainant is the registered owner of many trademarks consisting of the term “arkema”, covering amongst others the United States of America, where the Respondent is located, e.g., United States Reg. No. 3,082,057 registered on April 18, 2006 for goods in classes 1, 2, 17, and 42.
According to the indications provided by the Registrar in its verification response the Disputed Domain Name has been registered on September 24, 2018. It further results from the Complainant’s undisputed evidence that the address in New Orleans provided by the Respondent when registering the Disputed Domain Name and listed in the Whois records for the Disputed Domain does not exist in that city.
Finally, according to the undisputed evidence provided by the Complainant, the Disputed Domain Name currently resolves to a website provided by the registrar and displaying sponsored links amongst others to several of Complainant’s direct competitors. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the Disputed Domain Name is confusingly similar to the ARKEMA trademark and trade name in which the Complainant has rights. In fact, the Disputed Domain Name name consists of nothing more than the ARKEMA trademark with an added “s” combined with the term “inc” and the generic “.com” generic Top-Level Domain (“gTLD”) extension. According to the Complainant, “inc.” is the common abbreviation for “Incorporated” and should therefore be viewed as an abbreviation intended to indicate a type of corporate entity.
The Complainant further contends that the Respondent has no prior rights or legitimate interests in the Disputed Domain Name and that the burden to establish such rights or legitimate interests in the Disputed Domain Name lies on Respondent. In particular, the Complainant states that: (i) it has no connection or affiliation with the Respondent who has not received any license or consent, express or implied, to use Complainant’s trademark in domain names or in any other manner; (ii) Respondent’s only use of the Domain Name is in connection with a parking website which demonstrates neither a bona fide offering of goods or services nor a legitimate interest.
Finally, the Complainant contends that the Respondent registered the Disputed Domain Name in bad faith, in particular, to intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 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 the Complainant to prove each of the following three elements in order to obtain an order that the Disputed Domain Name should 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 is satisfied that the registrant of record for the Disputed Domain Name is the Respondent and 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, the Complainant must 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 various trademarks for ARKEMA. Reference is made to United States Reg. No. 3,082,057 registered on April 18, 2006 for goods in classes 1, 2, 17, and 42. This trademark registration largely predates the creation date of the Disputed Domain Name, which is September 24, 2018. The Disputed Domain Name includes this trademark in its entirety and merely adds the letter “s” and the suffix “inc” separated by a hyphen. The Panel holds that these modifications do not avoid a finding of confusing similarity between the Disputed Domain Name and the Complainant’s trademark ARKEMA, in particular regarding its wording and pronunciation. All the contrary, the Panel has no doubts that in a side-by-side comparison of the Disputed Domain Name and the relevant trademark ARKEMA, the mark is clearly recognizable within the Disputed Domain Name.
Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g., “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Elliot Elliot,WIPO Case No. D2018-0213; F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt,WIPO Case No. D2015-1305; 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; Rhino Entertainment Company v. DomainS,WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0464). This Panel shares this view and notes that the Complainant’s registered trademark ARKEMA is fully included in the Disputed Domain Name. (The “s” is not susceptible to call into question this finding, a fortiori because it is phonetically not pronounced in French, the language of the country where the Complainant is established.)
In addition, the Disputed Domain Name combines the Complainant’s registered trademark as its distinctive element with the generic term “inc”. The addition of this descriptive term to the distinctive trademark is – again – insufficient in itself and it does not serve to distinguish the Disputed Domain Name from the trademark (see for similar cases involving the addition of the term “group”: e.g., Kaufland Dienstleistung GmbH & Co. KG v. Identity Protection Shield,WIPO Case No. D2018-0902; Confédération Nationale du Crédit Mutuel v. Paul Raphael,WIPO Case No. D2017-0933).
In 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 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 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.
First, no evidence or information has been provided that could lead the Panel to conclude that the Respondent is commonly known by the Disputed Domain Name pursuant to paragraph 4(c)(ii) of the Policy. In addition, Respondent has no connection or affiliation with Complainant who has not granted the Respondent any license or consent, express or implied, to use Complainant’s trademark in domain names or in any other manner.
Second, it results from the evidence provided by the Complainant that the Disputed Domain Name is currently connected to a website displaying sponsored links amongst others for the Complainant’s competitors. 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 at issue in the sense of paragraph 4(c)(i) and (iii) of the Policy. In fact, this Panel shares the view of previous panels holding that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users (see section 2.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition “WIPO Overview 3.0”).
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 failed to come forward with any allegations or evidence in this regard, the 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.
One of those circumstances are those specified in paragraph 4(b)(iv), i.e., where the domain name is used to intentionally attempt to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
In the Panel’s view, the Respondent has intentionally registered the Disputed Domain Name, which identically contains the Complainant’s trademark ARKEMA. By the time the Disputed Domain Name was registered, it is unlikely that the Respondent did not have knowledge of the Complainant’s trademark. The Complainant also proved that the Respondent is using the Disputed Domain Name to lead to a parking page, with sponsored links – amongst others – to Complainant’s direct competitors. These facts, confirm that the Disputed Domain Name is used to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
Finally, the further circumstances surrounding the Disputed Domain Name’s registration and use confirm the findings that the Respondent has registered and is using the Disputed Domain Name in bad faith: (1) the Respondent originally used a privacy service to hide its identity; (2) the Respondent when registering the Disputed Domain Name used an address which does not exist; (3) the Respondent did not provide any formal response with conceivable explanation of its behavior so that no legitimate use of the Disputed Domain Name by the Respondent is actually conceivable for the Panel.
In the light of the above, 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. 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: December 26, 2018
Full & Egal Universal Law Academy