ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Arkema France v. Ucb Pharma Case No. D2024-2520 1. The Parties The Complainant is Arkema France, France, represented by Cabinet Regimbeau, France. The Respondent is Ucb Pharma, Côte d’Ivoire. 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 June 20, 2024. On June 20, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 20,2024, 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 (Privacy service provided by Withheld for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 21, 2024 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 June 26, 2024. 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 the Respondent of the Complaint, and the proceedings commenced on June 27, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 17, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2024.
page 2 The Center appointed Lynda M. Braun as the sole panelist in this matter on July 26, 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. 4. Factual Background The Complainant is a French public limited company which is part of the Arkema Group of companies. The Complainant was created in October 2004 when the chemicals branch of the Arkema Group was reorganized. Since then, the Complainant has become a well-known global player in specialty chemicals. In 2023, the Arkema Group generated sales of EUR 9.5billion with a presence in 55 countries and 21,100 employees worldwide. The Complainant owns the following trademarks, among many others: ARKEMA (stylized), United States of America Trademark Registration No. 7103734, registered on July 11, 2023, in International Classes 1, 16, 17, 19, and 42; ARKEMA (stylized), International Trademark Registration No. 1665655, dated April 21, 2022, in International Classes 1, 16, 17, and 42; and ARKEMA (stylized), French trademark No. 4814690, registered on March 11, 2021, in international Classes 1, 16, 17, 19, and 42 (hereinafter collectively referred to as the “ARKEMA Mark”). The Complainant owns the domain names , which resolves to its official website at “www.arkema.com/global/en”, and , which resolves to its official French website at “www.arkema.com/france/en”. The Disputed Domain Name was registered on June 4, 2024, and resolves to a pay-per-click (“PPC”) advertising page with links to third-party sponsored websites related to various third-party goods and services. 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 contends that: - the Disputed Domain Name is confusingly similar to the Complainant’s ARKEMA Mark as it includes the ARKEMA Mark in its entirety, connected by a hyphen to the term “france”, and followed by the generic Top-Level Domain (“gTLD”) “.info”; - the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Disputed Domain Name resolves to a landing page that contains PPC third-party sponsored hyperlinks, the Complainant has not authorized the Respondent to register a domain name containing the ARKEMA Mark, the Respondent was not making a bona fide offering of goods or services or a legitimate noncommercial or fair use through the Disputed Domain Name, and the Respondent has never been commonly known by the ARKEMA Mark or any similar name; and - the Disputed Domain Name was registered and is being used in bad faith since, among other things, the Disputed Domain Name resolved to a PPC landing page where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its landing page, by creating a likelihood of confusion with the Complainant’s ARKEMA Mark as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Name. The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
page 3 B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)): (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. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires a two-fold inquiry: a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark. The Panel concludes that in the present case, the Disputed Domain Name is confusingly similar to the ARKEMA Mark. 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. It is uncontroverted that the Complainant has established rights in the ARKEMA Mark based on its years of use as well as its registered trademarks for the ARKEMA Mark in many jurisdictions worldwide. The registration of a mark satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. As stated in section 1.2.1 of the WIPO Overview 3.0, “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”. Thus, the Panel finds that the Complainant satisfied the threshold requirement of having trademark rights in the ARKEMA Mark. The Disputed Domain Name consists of the ARKEMA Mark in its entirety, followed by the term “france” connected by a hyphen, and then followed by the gTLD “.info”. Accordingly, the Disputed Domain Name is confusingly similar to the ARKEMA Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Where the trademark is recognizable in the Disputed Domain Name, the addition of a term such as “france” does not prevent a finding of confusing similarity. See 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) would not prevent a finding of confusing similarity under the first element”). Moreover, it is well established that a disputed domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a hyphen. The presence or absence of punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity. See Six Continents Hotels, Inc. v. Helen Siew, WIPO Case No. D2004-0656. Finally, the addition of a gTLD such as “.info” in a domain name is a technical requirement. Thus, it is well established that, as here, such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182, and WIPO Overview 3.0, section 1.11.1. Thus, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s ARKEMA Mark.
page 4 Based on the available record, the Panel finds that 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 a 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 that 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 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 demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the Policy or otherwise. The Complainant’s prima facie case includes the fact that the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its ARKEMA Mark, that the Complainant does not have any type of business relationship with the Respondent, that there is no evidence that the Respondent is commonly known by the Disputed Domain Name or by any similar name, and that there is no evidence that the Respondent was using or making demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. See Policy, paragraph 4(c). As to the composition of the Disputed Domain Name, the Panel considers that it carries a risk of implied affiliation with the Complainant. WIPO Overview 3.0, section 2.5.1. Further, as noted above, the Disputed Domain Name resolves to a parking page displaying PPC links to various third-party goods and services. Such conduct, where the Respondent is seeking to unfairly capitalize on the goodwill associated with the Complainant’s trademark, does not amount to use of the Disputed Domain Name in connection with a bona fide offering of goods or services. As such, the Respondent’s registration and use of the Disputed Domain Name may be deemed commercially motivated and does not amount to a legitimate noncommercial or fair use within the meaning of paragraph 4(c)(iii) of the Policy. Based on the available record, the Panel finds that 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. First, the Disputed Domain Name, which is inherently misleading, resolves to a parking page displaying PPC links to third-party goods and services and it may be inferred that the Respondent derives click-through revenue from the presence of such links on the website to which the Disputed Domain Name resolves. Panels have found that use of a disputed domain name to redirect that domain name to third-party websites for commercial gain, as here, does not constitute a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use. See F. Hoffmann-La Roche AG v. Dean Gagnon, WIPO Case No. D2007-1009 (“The use of a domain name comprising a third party’s renown trademark to redirect to a search engine consisting of third parties’ links, most probably for profit purposes, cannot be considered a use in
page 5 connection with a bona fide offering of goods and services.”). Applying the principles under paragraph 4(c) of the Policy, panels have found that the use of a domain to host a parked page comprised of PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of a complainant’s mark or otherwise mislead Internet users. See WIPO Overview 3.0, section 2.9. The Panel finds that by using the Disputed Domain Name in such a manner, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s ARKEMA Mark as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Name, in bad faith pursuant to paragraph 4(b)(iv) of the Policy. Second, the renown of the ARKEMA Mark in its industry, which was used and registered by the Complainant in advance of the Respondent’s registration of the Disputed Domain Name, renders it wholly implausible that the Respondent created the Disputed Domain Name independently. The Disputed Domain Name was registered several years after the Complainant first began using the ARKEMA Mark. Therefore, the Panel finds it likely that the Respondent had the Complainant’s ARKEMA Mark in mind when registering the Disputed Domain Name, demonstrating bad faith. Based on the use of the ARKEMA Mark in various jurisdictions worldwide, it strains credulity to believe that the Respondent had not known of the Complainant or its trademark when registering the Disputed Domain Name. In sum, UDRP panels have found that the registration of a disputed domain name that is confusingly similar to a registered trademark by an unaffiliated entity can create a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4. Based on the available record, the Panel finds that the third element of the Policy has been established. 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. /Lynda M. Braun/ Lynda M. Braun Sole Panelist Date: August 7, 2024
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