Complainant is Arkema France, France, represented by In Concreto, France.
Respondent is Qian Xie, Valueway Global Logistics Inc., Canada.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2021. On August 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 30, 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 Complainant on August 31, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. A third party sent an email communication to Complainant on September 1, 2021. Complainant filed an amended Complaint on September 2, 2021.
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 Respondent of the Complaint, and the proceedings commenced on September 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2021. Pursuant to paragraph 6 of the Rules, on October 13, 2021, the Center informed the Parties that it would proceed with the panel appointment process.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on October 20, 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 BackgroundComplainant is a company organized under the laws of France whose business is the development and distribution of various kinds of specific materials such as paints, adhesives, coats, glue, fiber, etc., for general industry as well as for consumer goods. Complainant was founded back in 1981 and as of 2020, it is present in more than 55 countries throughout the world, including in Canada.
Complainant has evidenced to be the registered owner of numerous trademarks relating to its company name and brand Arkema, including, but not limited, to the following, all of which clearly predate the registration of the disputed domain name:
- Word mark ARKEMA, International Registration (IR), registration number: 847865,
registration date: November 30, 2004, status: active;
- Word mark ARKEMA, European Union Intellectual Property Office (EUIPO),
registration number: 004181731, registration date: February 9, 2006, status: active; and
- Word mark ARKEMA, United States Patent and Trademark Office (USPTO),
registration number: 3082057, registration date: April 18, 2006, status: active.
Moreover, Complainant has evidenced to own various domain names relating to its ARKEMA trademark, including the domain name
Respondent, according to the disclosed WhoIs information for the disputed domain name, is a resident of Canada, who registered the disputed domain name on February 21, 2021, and offered it at some point before the filing of the Complaint on the Internet for online sale at a price of around GBP 9901 .
Complainant requests that the disputed domain name be transferred to Complainant.
5. Parties’ Contentions A. ComplainantComplainant contends to be a world leader of materials science, and that through substantial investments Complainant’s ARKEMA brand has meanwhile achieved certain reputation and fame in the chemistry sector. Lately, Complainant has communicated to centralize the control of its data notably through a cloud tool.
Complainant submits that the disputed domain name is identical or at least confusingly similar to Complainant’s ARKEMA trademark as it reproduces the latter in its entirety, with the Top-Level Domain (“TLD”) “.cloud”, which needs be disregarded when evaluating confusing similarity. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Respondent apparently did not acquire any rights in the denomination “Arkema” on its own, (2) Respondent, a priori, has not been commonly known by the disputed domain name, (3) Complainant has not authorized, licensed, or permitted Respondent to use any of its trademarks or to apply for or use any domain names incorporating them, (4) Respondent has not made serious preparations or efforts for offering goods or services under the disputed domain name, but rather offers it for sale around GBP 990. Finally, Complainant argues that Respondent has registered and is using the disputed domain name in bad faith since (1) Respondent has reserved the disputed domain name which is identical to Complainant’s ARKEMA trademark without enjoying rights in this denomination on its own, (2) Complainant’s ARKEMA trademark is not a descriptive term or commonly used expression and has meanwhile acquired a certain reputation and fame in the chemistry sector, which is why it is very unlikely that Respondent chose the disputed domain name without any knowledge of Complainant and its related ARKEMA trademark rights, but rather hoped to capitalize on the reputation of Complainant when registering the disputed domain name and offering it for sale.
B. RespondentRespondent did not file a Response. On September 1, 2021, the Center received an email communication from a third party stating that the disputed domain name was for sale and that the third party had received a “message from our client that you [Complainant] submitted the dispute”.
6. Discussion and FindingsUnder 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.
Respondent’s lack of formal response in the case at hand does not automatically result in a decision in favor of Complainant, however, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent’s failure to submit a formal Response as it considers appropriate.
A. Identical or Confusingly SimilarThe Panel concludes that the disputed domain name
The disputed domain name incorporates the ARKEMA trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions, and has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 3.0”), section 1.11), that the applicable TLD in a domain name is generally viewed as a standard registration requirement and as such is disregarded under the first element test, though the meaning of this TLD may be relevant to a panel assessment of the second or third element of the URDP. Accordingly, the existence of the TLD “.cloud” does not prevent the finding of identity arising from the exclusive incorporation of Complainant’s ARKEMA trademark in the disputed domain name.
Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).
B. Rights or Legitimate InterestsThe Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent has neither been granted a license nor has it been otherwise authorized by Complainant to use its ARKEMA trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any (trademark) rights associated with the denomination “Arkema” on its own. Moreover, Respondent obviously so far has not used the disputed domain name in connection with a bona fide offering of goods or services nor for a legitimate non-commercial or fair purpose, but rather to offer it for online sale. Finally, the disputed domain name consists entirely of the fanciful trademark ARKEMA and, as such, carries a high risk of implied affiliation that cannot constitute fair use (see WIPO Overview 3.0, section 2.5.1).
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has formally defaulted, Respondent has not met that burden.
The Panel, therefore, finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
C. Registered and Used in Bad FaithThe Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
It is undisputed between the Parties that Complainant is a leading company in the field of materials science with presences in many countries worldwide and that its ARKEMA trademark, which has been registered since many years across the world, and, therefore, also since many years before the registration of the disputed domain name, meanwhile enjoys a certain reputation and fame in the chemistry sector, including in Canada, where Respondent apparently is domiciled. Also, Complainant contends, and Respondent has not objected thereto either, that Complainant’s ARKEMA trademark is not a descriptive term or commonly used expression, plus that Complainant has lately communicated its strategy to centralize the control of its data notably through a cloud tool, which is why it is more likely than not that Respondent knew of Complainant and its ARKEMA trademark when registering the identical disputed domain name specifically in the TLD “.cloud”.
Against this background, the fact that the disputed domain name resolved to a website where it is offered for sale at a price around GBP 990, is a clear indication that Respondent registered the disputed domain name primarily for the purpose of selling it to Complainant, presumably in excess of its documented out-of-pocket costs. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraphs 4(b)(i) of the Policy. In this context, the Panel has also recognized that Respondent apparently has no rights in the denomination “Arkema” on its own and that it has refrained from coming forward with any explanation or any indication whatsoever as to why Respondent needed to rely exactly on the registration of said denomination as a domain name – which apparently is neither a descriptive term nor a commonly used expression – unless to somehow unduly profit from the reputation which Complainant’s ARKEMA trademark undisputedly enjoys.
Therefore, the Panel concludes that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).
7. DecisionFor 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
Stephanie G. Hartung
Sole Panelist
Date: November 1, 2021
1 The Panel notes, after having visited the website linked to the disputed domain name in limited exercise of its general powers under paragraphs 10 and 12 of the Rules, that the disputed domain name is currently being offered for online sale at a price around GBP 500.