ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Veolia Environnement SA v. Blue Steve Case No. D2024-2208 1. The Parties The Complainant is Veolia Environnement SA, France, represented by IP Twins, France. The Respondent is Blue Steve, Nigeria. 2. The Domain Name and Registrar The disputed domain name (the “Disputed Domain Name”) is registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2024. On June 5, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 6, 2024, 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 June 12, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 2, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 3, 2024. The Center appointed Nicholas Weston as the sole panelist in this matter on July 8, 2024. 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 The Complainant is a French company founded in 1853 that operates three main businesses in the water, waste and energy sectors with revenue exceeding EUR 45 million in 2023. The Complainant holds registrations for the trademark VEOLIA and variations of it in numerous jurisdictions, including, for example, United States registration No. 3000764, for the mark VEOLIA registered on September 27, 2005 and International Registration No. 919580 for the mark VEOLIA registered on March 10, 2006. The Complainant owns the domain name , which was registered on December 30, 2002, which resolves to its main website. The Respondent registered the Disputed Domain Name on August 11, 2023. It resolves to an inactive webpage. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Name. Notably, the Complainant cites its trademark registrations in numerous countries for the mark VEOLIA, as prima facie evidence of ownership. The Complainant submits that the mark VEOLIA is well-known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name is comprised of the VEOLIA trademark and that the addition of the word “groupe” is not sufficient to avoid the confusing similarity to its trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name arguing that “in the absence of any license or permission from Complainant to use such a widely-known trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed” and claims that none of the circumstances set out in paragraph 4(c) of the Policy apply. It also submits that no rights or legitimate interests can vest in the respondent given the name of the registrant of the Disputed Domain Name, “Blue Steve[,] is a character of a Minecraft game.” Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and the Rules having regard to the prior use and well-known nature of the Complainant’s trademark. The Complainant submits that the passive holding of the Disputed Domain Name would not prevent a finding of bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
page 3 (ii) that the 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 A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the Disputed Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country. WIPO Overview 3.0, section 1.2.1. The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark VEOLIA in numerous countries. Turning to whether the Disputed Domain Name is identical or confusingly similar to the VEOLIA trademark, the Panel observes that the Disputed Domain Name is comprised of: (a) an exact reproduction of the Complainant’s trademark VEOLIA; (b) followed by the French language word “groupe”, which means “group” in English; (c) followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that the gTLD used as part of a domain name is generally disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11. The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “veoliagroupe”. The Panel finds the entirety of the mark VEOLIA is reproduced within the Disputed Domain Name. Accordingly, the Disputed Domain Name is confusingly similar to the marks for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of the word “groupe” may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the Disputed Domain Name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence
page 4 demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the Policy or otherwise. The Panel notes the evidence that the Disputed Domain Name is inactive, which supports the Complainant’s submission that the “Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the [D]isputed [D]omain [N]ame”, particularly having regard to the other factors cited by the Complainant that contend against the Respondent having any rights or legitimate interests. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. In the present case, the Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith. On the issue of registration, taking into account the composition of the Disputed Domain Name and the well-known nature of the Complainant’s trademark, the Panel is satisfied that the Respondent knew of and targeted the Complainant’s trademark VEOLIA when it registered the Disputed Domain Name (see Veolia Environnement SA v. Whois Privacy Protection Foundation / Name Redacted, WIPO Case No. D2022-0785 (“the Complainant has established that its VEOLIA trade mark is widely used in many countries”); Veolia Environnement SA v. Kenneth Vargas, WIPO Case No. D2017-1844 (“the Complainant has established that its trademark VEOLIA is widely known”); Veolia Environnement SA v. Whoisproxy.com LTD / Lukasz Witkowski, WIPO Case No. D2016-1257 (“the VEOLIA mark, … was registered years before and is commonly known worldwide”). This Panel finds that there is no reason for the Respondent to have registered the Disputed Domain Name other than to target the reputation and goodwill of the Complainant’s well-known trademark. WIPO Overview 3.0, section 3.1.4. Further, a gap of several years between registration of a complainant’s trademark and respondent’s registration of a disputed domain name (containing the trademark) can indicate bad faith registration. In this case, the Respondent registered the Disputed Domain Name 18 years after the Complainant established registered trademark rights in the VEOLIA mark. On the issue of use, the Complainant’s evidence is that the Disputed Domain Names is inactive. Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel finds the non-use of the Disputed Domain Name does not prevent a finding of bad faith in the circumstances of this proceeding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the Complainant’s well-known VEOLIA trademark, and the composition of the Disputed Domain Name, and finds that in the circumstances of this case the passive holding of the Disputed Domain Name does not prevent a finding of bad faith under the Policy. Panels may take into account particular circumstances in assessing whether the respondent’s registration of a domain name is in bad faith include: (i) the nature of the Disputed Domain Name such as here where a widely-known mark is used, and incorporating the additional word “groupe” that does nothing to allay the
page 5 potential for confusion, (ii) the chosen top-level domain; (iii) the use of a pseudonym “Blue Steve[,] …a character of a Minecraft game”; and (vi) a clear absence of rights or legitimate interests coupled with no credible explanation for the respondent’s choice of the Disputed Domain Name, or (viii) other indicia generally suggesting that the respondent had somehow targeted the complainant. WIPO Overview 3.0, section 3.2.1. In the circumstances, the Panel finds the Respondent’s registration and use of, the Disputed Domain Name constitutes bad faith under the Policy. The Panel finds that the Complainant has established the third element 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. /Nicholas Weston/ Nicholas Weston Sole Panelist Date: July 11, 2024
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