ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION VALLOUREC S.A. v. etienne colmant, and ronald bridges Case No. D2023-1352 1. The Parties Complainant is VALLOUREC S.A., France, represented by CSC Digital Brand Services Group AB, Sweden. Respondents are etienne colmant, and ronald bridges, United Kingdom. 2. The Domain Names and Registrar The disputed domain names , and are registered with One.com A/S (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 29, 2023. On March 29, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 30, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to Complainant on April 4, 2023 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 6, 2023. 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 April 18, 2023. In accordance with the Rules, paragraph 5, the due date for Response was May 8, 2023. Respondent did not submit any response. Accordingly, the Center notified the Parties of Respondent's default on May 9, 2023. The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on May 26, 2023. 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. page 2 4. Factual Background Complainant is a multinational manufacturing company founded in 1899, and is headquartered in France. It specializes in hot rolled seamless steel tubes, expandable tubular technology, automotive parts, and stainless steel, which it provides to the energy, construction, automotive, and mechanical industries. It employs 17,000 people worldwide and reports annual revenues of EUR 3.4 billion. It operates its primary business website at the domain name . Complainant is the proprietor of numerous trademark registrations, including the following: - French Trademark No. 93479212 for VALLOUREC (word mark), registered on August 4, 1993 for goods and services in classes 01, 06, 07, 08, 09, 10, 11, 12, 13, 14, 16, 19, 21, 28, 35, 36, 37, 39, 40, and 41; - United Kingdom Trade mark No. UK00918004533 for VALLOUREC (word mark), registered on September 13, 2019 for goods and services in classes 6, 9, 20, 35, 37, 38, 39, 40, and 42. The disputed domain name was registered on November 15, 2022. The disputed domain name was registered on December 1, 2022. Neither resolves to an active website. The record contains evidence that the disputed domain name was used to generate emails requesting payment from Complainant's customers. The record reflects that Complainant sent cease-and-desist letters to Respondent regarding the disputed domain name . 5. Parties' Contentions A. Complainant Complainant's contentions may be summarized as follows: 1. Request to consolidate proceedings Complainant requests consolidation of the proceedings for the following reasons: the composition of the disputed domain names is nearly identical; the disputed domain names were registered within 17 days of each other, using the same Registrar; both disputed domain names use the same name servers; both named registrants are located in London, United Kingdom and use Gmail addresses; both disputed domain names resolve to blank pages; an Internet search of the named Respondents returns no results. 2. Substantive contentions Under the first element, Complainant states that the disputed domain names reflect its VALLOUREC mark together with a hyphen followed by the descriptive terms "group", and "groupe". Through extensive and lengthy use and marketing efforts, the VALLOUREC mark has become well-known. Under the second element, Complainant states that Respondent is not sponsored by or affiliated with Complainant in any way; Complainant has not given Respondent permission to use Complainant's trademark in any manner, including in the disputed domain names. Respondent is not commonly known by the disputed domain names. The disputed domain names are not being used for websites in connection with legitimate businesses. The disputed domain name was used to generate fraudulent emails in which Respondent impersonated an employee of Complainant's receivables department to attempt to secure payments from Complainant's customers. Under the third element, Complainant states that it has used the well-known VALLOUREC mark since 1899, significantly predating the registration of the disputed domain names. By registering the disputed domain names reflecting Complainant's mark together with the terms "group", and "groupe", Respondent has created page 3 the disputed domain names that are confusingly similar to Complainant's trademark. Respondent has demonstrated a knowledge of and familiarity with Complainant's brand and business. The disputed domain name was used to perpetuate a phishing scheme. Neither disputed domain name has been used for a website. Complainant requests transfer of the disputed domain names. B. Respondent Respondent did not reply to Complainant's contentions. 6. Discussion and Findings 6.1 Preliminary Issue - Consolidation of Proceedings Pursuant to paragraph 10 of the Rules: (a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules. (b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. [.] (e) A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules. Consolidation of Multiple Respondents The principles to assess a request to consolidate multiple respondents are set forth in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, ("WIPO Overview 3.0"), section 4.11.2. Noting the circumstances of the case, the Panel considers the disputed domain names to be under common control. While the disputed domain names were registered on separate dates under different names, the Panel notes that the disputed domain names reflect similar naming patterns, consisting of Complainant's VALLOUREC mark and the terms "group", and "groupe". Both disputed domain names were registered in a short period of time by registrants located in the United Kingdom, using Gmail addresses, using the same Registrar. Neither disputed domain name has been used to resolve to a website. Respondents do not challenge Complainant's assertions nor offer any alternative explanation for these circumstances. Accordingly, the Panel accepts Complainant's request to consolidate the present proceedings pursuant to the Rules, paragraph 10(e). Respondents are hereinafter referred to as "Respondent". 6.2 Substantive Issues Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) Respondent has registered and is using the disputed domain names in bad faith. page 4 Under paragraph 15(a) of the Rules, "[a] Panel shall 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". A. Identical or Confusingly Similar Complainant has provided evidence establishing that it has trademark rights in the VALLOUREC mark through registration in the United Kingdom, France, and other jurisdictions. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview 3.0, section 1.2.1. In comparing Complainant's VALLOUREC mark with the disputed domain names, the Panel finds that the disputed domain names are confusingly similar to this mark as the mark is clearly recognizable within the disputed domain names, followed by a hyphen and the terms "group", and "groupe", respectively. It is the consensus view of UDRP panels that, where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark. Moreover, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. See WIPO Overview 3.0, sections 1.7 and 1.8. It is the well-established view of UDRP panels that a generic Top Level Domain ("gTLD") such as ".com" is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. See WIPO Overview 3.0, section 1.11.1. Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not authorized by Complainant and has no rights in the VALLOUREC mark, nor is Respondent commonly known by the disputed domain names. Pursuant to WIPO Overview 3.0, section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Respondent has not provided any rebuttal of Complainant's prima facie case and has therefore not proved rights or legitimate interests in the disputed domain name. There is no evidence that Respondent is commonly known by the disputed domain names, or that there are any circumstances or activities that would establish Respondent's rights therein. There is no evidence of legitimate noncommercial use or a bona fide offering of goods or services. The disputed domain names comprise Complainant's VALLOUREC mark plus the terms "group" or "groupe". Such composition cannot constitute fair use as it impersonates or suggests sponsorship or endorsement by the trademark owner. See WIPO Overview 3.0, section 2.5.1. The evidence in the record establishes that neither disputed domain name has been used to resolve to a website. The disputed domain name was used by Respondent to impersonate Complainant in an attempt to defraud third parties. Such use can never confer rights or legitimate interests. See WIPO Overview 3.0, section 2.13.1. Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy. page 5 C. Registered and Used in Bad Faith The Panel finds that Complainant has demonstrated Respondent's bad faith registration and use of the disputed domain names. Complainant registered rights in its VALLOUREC mark predates the registration of the disputed domain names by at least than 30 years. The disputed domain names reflect Complainant's well-established mark together with the terms "group" and its French equivalent "groupe", implying a connection to Complainant's group of companies. Moreover, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity, as in this case, can by itself create a presumption of bad faith on the part of Respondent. See WIPO Overview 3.0, section 3.1.4. The Panel finds the evidence in the record establishes that Respondent used the disputed domain name in an attempt to pass itself off as Complainant to perpetuate what appears to be a fraudulent scheme to obtain payments from Complainant's customers. The Panel finds that Respondent thereby attempted to impersonate Complainant for commercial gain, indicating bad faith in registration and use of the disputed domain name. See WIPO Overview 3.0, section 3.2.1. The disputed domain name does not resolve to an active website. The Panel finds that Respondent has, on balance, demonstrated bad faith by passive holding of this disputed domain name. Such a finding is consistent with previous UDRP decisions, such as Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. See also WIPO Overview 3.0, section 3.3. In particular, the disputed domain name reflects Complainant's registered and long-established VALLOUREC mark. Respondent failed to provide any evidence of a connection to a legitimate business related to Complainant's marks. Respondent has failed to provide any evidence of actual or contemplated good-faith use of the disputed domain name. Under the circumstances, and considering in particular the close proximity of the other disputed domain name and its use for fraudulent purposes, the Panel does not find any such use plausible. The Panel therefore finds that Complainant has established the third element under paragraph 4(a) 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 names, , and , be transferred to Complainant. /Ingrīda Kariņa-Bērziņa/ Ingrīda Kariņa-Bērziņa Sole Panelist Date: June 9, 2023
Full & Egal Universal Law Academy