The Complainant is Veolia Environnement SA, France, represented by IP Twins S.A.S., United States of America (“United States”).
The Respondent is Name Redacted1 , United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2021. On February 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 12, 2021, 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 February 16, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant sent an email communication to the Center on February 16, 2021 declining to amend the complaint due to a potential identity theft situation. 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 March 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 23, 2021. The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on March 30, 2021. 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 that is the holding company for the 160-year-old Veolia Group, which specializes in the provision of water, waste, and energy services. The Complainant has its registered office in Paris, France, but a has worldwide presence. The Complainant (including the various entities of the Veolia Group) has over 178,000 employees; supplies water, waste, and energy services to over 100 million people; and, has an annual turnover of over EUR 27 billion. The Complainant is actively involved in climate change and has launched various advertising campaigns over the past few years. The Complainant holds international trademark registrations denoting various countries in Europe (including France and the United Kingdom), the United States, and Australia for marks consisting of VEOLIA for a variety of goods and services relating to the provision of water, waste, and energy. The oldest registration for the VEOLIA mark dates from September 11, 2003 (International Registration No. 814678). The Complainant evidences that it holds the following trademark registrations: Trademark Trademark Number Registration Date Classes VEOLIA International trademark number 814678 September 11, 2003 1, 6, 9, 11, 17, 19, 32, 35, 36, 37, 39, 40, 41, and 42 VEOLIA International trademark number 919580 March 10, 2006 9, 11, 16, 35, 36, 37, 38, 39, 40, 41, and 42 VEOLIA International trademark number 910325 March 10, 2006 9, 11, 16, 32, 35, 36, 37, 38, 39, 40, 41, 42, and 44 VEOLIA European Union Trade Mark number 0910325 March 10, 2006 9, 11, 16, 32, 35, 36, 37, 38, 39, 40, 41, 42, and 44 International trademark number 1234397 October 2, 2014 16, 35, 36, 37, 38, 38, 39, 40 and 42 International trademark number 1224691 July 28, 2014 16, 35, 36, 37, 38, 39, 40, and 42 International trademark number 914460 February 2, 2007 9, 16, 35, and 41 These will be collectively referred to as the “VEOLIA Mark”. The Complainant operates, among others, the following domain names reflecting its VEOLIA Mark: i. ii. The Disputed Domain Name was registered on December 14, 2020. The Disputed Domain Name does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant makes the following contentions: i. that the Disputed Domain Name is identical or confusingly similar to the Complainant’s VEOLIA Mark; ii. that the Respondent has no rights nor any 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. In support of its contentions the Complainant states: The Complainant is the owner of the VEOLIA Mark, having registered the VEOLIA Mark in various jurisdictions. The Disputed Domain Name wholly incorporates the textual components of the VEOLIA Mark adding the term “northamerica”. The Disputed Domain Name is identical to the Complainant’s Domain Name The Complainant states there are no rights or legitimate interests held by the Respondent in respect of the Disputed Domain Name. The Complainant submits it has not granted any license or authorization for the Respondent to use the VEOLIA Mark. It states the Respondent does not use the Disputed Domain Name for a bona fide purpose or legitimate noncommercial purpose, nor is the Respondent commonly known by the name “Veolia North America”. The Complainant submits that the Respondent has registered the Disputed Domain Name in bad faith because it knew or should have known of the Complainant’s VEOLIA Mark, has failed to provide actual or contemplated good-faith use, because there is concealment of the registrant identity on the WhoIs of the Disputed Domain Name. It states further that the Disputed Domain Name has been used as part of a phishing attempt impersonating an employee of the Complainant and sending emails from an address associated with the Disputed Domain Name attaching instructions to wire funds. The Complainant claims that the phishing attempt was use in bad faith. B. Respondent The Respondent did not reply to the complaint. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has provided evidence of its registrations in relation to VEOLIA Mark internationally. The Panel finds that the Complainant has clearly and sufficiently demonstrated its rights in the VEOLIA Mark with a history of registrations going back to 2003. The Panel is satisfied that the Complainant is well-known by its VEOLIA Mark for the provision of water, waste, and energy services. In comparing the VEOLIA Mark to the Disputed Domain Name, it is well established that the gTLD, in this case “.org” may be excluded from consideration as being a generic or functional component of the domain name. SeeWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11. The remaining part of the Disputed Domain Name consists solely of the VEOLIA Mark, with the addition of the term “northamerica”. As noted in WIPO Overview 3.0, section 1.8: “Where the relevant trademark is recognizable within the Disputed Domain Name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.” It is the Panel’s view that the addition of geographical term “northamerica” to the VEOLIA Mark does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant's VEOLIA Mark, which remains clearly recognizable in the Disputed Domain Name. The Panel finds that the Disputed Domain Name is therefore clearly confusingly similar to the Complainant’s VEOLIA Mark. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the Disputed Domain Name by, among other circumstances, showing any one of the following elements: (i) that before notice of the dispute, the Respondent used or made demonstrable 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; or (ii) that the Respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service rights; or (iii) that the Respondent is making 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. The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name lies with the Complainant. The Complainant has stated, and the Panel accepts, that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In this respect, the Panel also accepts that the Respondent is not commonly known by the Disputed Domain Name and has not acquired any rights (registered or otherwise) in the VEOLIA Mark or name. Further the Panel is satisfied that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name, which the Panel notes currently resolves to an inactive website and has been used in phishing emails. The Panel is also entitled to have regard to the lack of any substantive response on this point from the Respondent and the absence of any claim to rights or legitimate interests in the Disputed Domain Name. The Panel finds that the Complainant has satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name, which the Respondent has not rebutted, and accordingly finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant. C. Registered and Used in Bad Faith The Panel is satisfied that the Disputed Domain Name has been registered in bad faith for the following reasons: (i) The Panel is satisfied that the Complainant’s VEOLIA Mark is internationally well recognized, and that the Respondent ought to have been aware of the Complainant, its VEOLIA Mark, and its associated goodwill at the time of registration. A trademark or search engine search by the Respondent would have revealed the Complainant’s trademark rights in the VEOLIA Mark. (ii) The Panel finds that the Disputed Domain Name’s confusing similarity to the VEOLIA Mark and the fact that it is identical to the Complainant’s domain name The Panel is also satisfied that the Disputed Domain Name has been used in bad faith for the following reasons: (i) The Disputed Domain Name resolves to an inactive website. Previous UDRP decisions have found that passive use of a disputed domain name may not prevent a finding of bad faith. See Société pour l'Oeuvre et la Mémoire d'Antoine de Saint Exupéry D’Agay v. Perlegos Properties,WIPO Case No. D2005-1085. (ii) The Complainant has provided evidence that the Respondent used the Disputed Domain Name to send a phishing email seeking to mislead recipients as to the identity of the sender for its own commercial gain. Such conduct is deceptive, illegal, and in previous UDRP decisions has been found to be evidence of registration and use in bad faith, see The Coca-Cola Company v. Marcus Steiner,WIPO Case No. D2012-1804 and Veolia Environnement SA v. Registration Private / Melanie Villacorte,WIPO Case No. D2020-2118. (iii) The Panel accepts the Respondent’s use of the Disputed Domain Name creates a likelihood of confusion with the VEOLIA Mark and is therefore likely to mislead internet users and email recipients as to the source, sponsorship, affiliation or endorsement of the Disputed Domain Name and the emails sent from addresses containing the Disputed Domain Name, thereby taking advantage of the goodwill associated with the Complainant. (iv) The Panel is entitled to have regard to the lack of any substantive response on this point from the Respondent. Accordingly, the Panel finds that Complainant has satisfied the burden of establishing 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 Andrew Brown Q.C. 1 The Respondent appears to have used the name of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST‑12785241 Attn. Bradescourgente.net / Name Redacted,WIPO Case No. D2009-1788.
Sole Panelist
Date: April 13, 2021
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