The Complainant is Nexans, France, represented by Cabinet Lhermet & Lefranc-Bozmarov, France.
The Respondent is Yefremov Evgen, Ukraine.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2021. On September 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 14, 2021, the Registrar transmitted by email to the Center its verification response confirming registrant and contact information for the Disputed Domain Name.
The Center sent an email communication in both Ukrainian and English regarding the language of the proceeding on September 17, 2021. On September 17, 2021, the Complainant requested to proceed in English. The Respondent filed a request that Ukrainian be the language of this proceeding on September 21, 2021.
The Center sent an email communication to the Complainant on September 30, 2021 with request to submit the translated Complaint into Ukrainian. The Complainant submitted translated Complaint on October 4, 2021.
The Center verified that the Complaint together with the translated Complaint satisfied the formal requirements of .UA Domain Name Dispute Resolution Policy (the “.UA Policy”), the Rules for .UA Domain Name Dispute Resolution Policy (the “.UA Rules”), and the WIPO Supplemental Rules for .UA Domain Name Dispute Resolution Policy (the “WIPO Supplemental Rules”).
In accordance with the .UA Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint in English and Ukrainian, and the proceedings commenced on October 12, 2021. In accordance with the .UA Rules, paragraph 5(a), the due date for Response was November 1, 2021.
On October 11, 2021, the Respondent submitted informal emails on September 21, 2021 and October 11, 2021.
On October 12, 2021, the Complainant submitted supplemental filings providing an update on the legal action before the Desniyanskyy district court of Kyiv, in relation to the Disputed Domain Name.
The Respondent did not submit any formal response. Accordingly, the Center notified the Parties with Commencement of Panel Appointment on November 10, 2021.
The Center appointed Mariya Koval as the sole panelist in this matter on November 29, 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 .UA Rules, paragraph 7.
4. Factual BackgroundThe Complainant, the French company Nexans, has existed as an independent group since the year 2000. The Complainant is one of the worldwide leader in the cable industry, offering an extensive range of cabling solutions and services along the entire value chain for four main business areas: high voltage & projects (covering offshore wind farms, subsea interconnections, land high voltage), telecom & data (including data network solutions, telecom infrastructure, subsea telecom networks), building & territories (including utilities and e-mobility), and industry & solutions (including renewables, transportation, oil and gas, automation, and others). Today the Complainant goes beyond cables to offer customers a complete range of complementary services that leverage digital technology to maximize the performance and efficiency of their clientele’s critical assets. The Complainant’s business employs 26,000 people in 34 countries and generated, in 2020, 5.7 billion EUR in sales through its worldwide commercial activities. The company is listed on Euronext Paris, compartment A.
The Complainant owns numerous NEXANS trademark registrations around the world (the “NEXANS Trademark”), including Ukraine, among which are:
- International Trademark Registration No. 748932, registered on December 8, 2000, in respect of goods in classes 6 and 9;
- International Trademark Registration No. 1448123, registered on January 15, 2018, in respect of services in classes 35, 37, 39, 40, 42.
The Complainant has a significant online presence, it operates directly or through its subsidiaries, of more than 120 domain names consisting of the NEXANS Trademark for sale and promotion of its goods and services, registered with generic Top-Level Domain (“gTLD”) or with country-code Top-Level Domains (“ccTLD”), including, but not limited to,
The Disputed Domain Name was registered on August 19, 2008. At the date of this Decision, the website under the Disputed Domain Name is inactive. However, according to the evidence presented by the Complainant (Annex 6 to the Complaint) before the filing of the Complaint the Disputed Domain Name redirected the Internet users to different third parties’ websites, namely, to websites with multi-brand resellers of various cable products (including the Complainant’s products), that are not affiliated with the Complainant.
5. Parties’ Contentions A. ComplainantThe Complainant asserts that its NEXANS Trademark, which is also the Complainant’s company name, has attained the status of well-known trademark due to its extensive use worldwide for over 20 years, being protected in more than 150 countries. Since its launch in 2000, the Complainant’s NEXANS Trademark has been extensively used worldwide, including in Ukraine, in connection with cables and related goods and services, becoming globally recognized soon and well known as one of the leaders in its sector.
The Complainant claims that the Disputed Domain Name is identical to the Complainant’s well-known NEXANS Trademark. The Disputed Domain Name contains the Complainant’s Trademark in its entirety combined with the ccTLD “.com.ua”, which undoubtedly misleads the Internet users into believing that they have reached the Complainant’s website for Ukraine, or at least, the official website of the Complainant’s affiliate or subsidiary in Ukraine. The mere presence of the ccTLD does not alter the finding of identity between the Complainant’s Trademark and the Disputed Domain Name.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name in view of the following:
- the Respondent has no rights in the Complainant’s Trademark and has not been commonly known by the name Nexans;
- the Respondent is not affiliated with the Complainant or with any of its subsidiaries in any manner, nor the Respondent is an authorized distributor or a reseller of the Complainant’s products;
- the Respondent was not granted any license to use the NEXANS Trademark nor he was otherwise authorized by the Complainant to use the NEXANS Trademark for the purposes of registering and using the Disputed Domain Name or for any other purpose;
- the Respondent has not used or made any preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services, nor he is making a legitimate noncommercial or fair use of the Disputed Domain Name. On the contrary, the Respondent used the Disputed Domain Name for successively redirecting Internet users to, and displaying framed content of, different third parties’ websites that are unrelated with the Complainant.
The Complainant further claims that the Disputed Domain Name was registered and was used in bad faith in view of the following:
- the Disputed Domain Name is identical to the Complainant’s Trademark, giving rise to a high risk of implied impersonation or affiliation with the Complainant;
- the NEXANS Trademark is well-known amongst consumers and Internet users, previous panels held the Complainant’s Trademark as well-known;
- the Complainant had been trading under the NEXANS Trademark for approximately 10 years prior to the registration of the Disputed Domain Name. The Complainant’s registered rights in NEXANS Trademark in Ukraine, significantly predate the registration date of the Disputed Domain Name by approximately 8 years;
- there can be no doubt that the Disputed Domain Name was registered with full knowledge of the Complainant’s NEXANS Trademark. This is obvious not just because of the high distinctiveness and the long-standing worldwide renown of the Trademark, but also because of the Respondent’s use of the Disputed Domain Name: two third party websites that could be accessed through the Disputed Domain Name are of resellers promoting/selling NEXANS products and/or the same types of products under competitors’ brands;
- the registration of the Disputed Domain Name contained an undisclosed registrant’s information;
- the Respondent has been taking unfair advantage of the Complainant’s Trademark and goodwill to misrepresent itself to the public as being the Complainant or at least an affiliated or endorsed company;
- the configuration of email servers under the Disputed Domain Name suggests the Respondent is engaged or has the intention to engage in a phishing scheme. The consequences of such a scheme can be detrimental not only for the Complainant whose goodwill has been taken advantage of, but also to third party staff and customers who may entrust what appears to be the Complainant with sensitive information such as credit card details.
The Respondent sent an informal email communications to the Center on September 21 and October 11, 2021, where he indicated in his first email that he considers the Disputed Domain Name is not similar to any trademark in view of he represents the interests of college under the name “Nexans” and develops its branch office in Ukraine. The Respondent also explained that the term “Nexans” is a bird, which is the symbol of the mentioned college. In the second email, the Respondent requested for an additional 4 days for filling the Response to the Complaint.
6. Discussion and FindingsParagraph 4(a) of the .UA Policy binds the Complainant to prove each of the following three elements to succeed:
(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 the disputed domain name; and
(iii) the disputed domain name has been registered or is being used in bad faith.
Taking into consideration many similarities between the .UA Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and, where appropriate, will decide consistent with the consensus views captured therein.
6.1. Preliminary Issues: Language of ProceedingsIn accordance with paragraph 11 of the .UA Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The Registrar confirmed that the language of the registration agreement for the Disputed Domain Name is Ukrainian.
The Complainant has filed the Complaint in English and, in spite of providing of the translation of the Complaint into Ukrainian, requests that English be the language of this proceeding due to the following reasons:
- English is one of the three languages of international communication, one of the most spoken languages in the world and one of the main official working languages of the Center;
- the Complainant is a French company, which work language is English. The preparation and/or translation of the Complaint in Ukrainian would unfairly burden the Complainant and delay the proceedings and the adjudication of this matter, at the Complainant’s prejudice;
- the maintenance of the Disputed Domain Name illegally incorporating the Complainant’s Trademark in its entirety, which is used in bad faith by the Respondent, incessantly jeopardizes the Complainant’s rights, disturbs the Complainant’s business and puts potential customers seeking the Complainant or its products or services at permanent risk of confusion;
- the Disputed Domain Name is a flagrant source of confusion with the Complainant’s Trademark, wrongfully suggesting affiliation with the Complainant;
- the Disputed Domain Name is in Latin characters, which is strong presumption of the Respondent’s acquaintance and understanding of Western European languages, in particular English;
- the term “Nexans”, which is the only element of the Disputed Domain Name, does not convey any meaning in the Ukrainian language;
- it would be an excessive burden to the Complainant to arrange and pay for translation of this Complaint, where the Respondent has demonstrated behavior that disrupts the Complainant’s business and has already required the Complainant to devote significant time and resources to address this instance of abuse.
The Respondent filed a request that Ukrainian be the language of this proceeding due to he does not understand the English language and that preparation and translation of the Response will unfairly burden him and will delay the proceedings.
Paragraph 10(c) of the .UA Rules sets out that the Panel shall ensure that the administrative proceeding takes place with due expedition.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
In spite of the Complainant presented the translation of the Complaint into Ukrainian, neither the Complainant, nor its representative are not obviously able to understand and to communicate in Ukrainian.
The Disputed Domain Name and ccTLD comprise Latin script. The Panel has taken into account the fact the Respondent, having such a possibility to use the Cyrillic script, chose the Latin script for the Disputed Domain. The term “Nexans” has no meaning in the Ukrainian language. Moreover, the Panel has also taken into account that according to the evidence presented by the Complainant (Annex 6 to the Complaint) the Disputed Domain Name previously redirected the Internet users to the third parties’ websites, where the various cable products (including the Complainant’s products) were offered for sale, which cannot be considered as legitimate noncommercial or fair use of the Disputed Domain Name.
Furthermore, the Respondent, having received the Center’s notification of the Complaint in English and Ukrainian, did not file any formal response either in English or in Ukrainian.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.
Having considered all circumstances of this case, the Panel concludes under paragraph 11(a) of the .UA Rules that it is fair that English shall be the language of the proceeding.
6.2. Preliminary Issues: Complainant’s supplemental filings and Effect of Court ProceedingsIn 2020, the Complainant had initiated a legal action before the Ukrainian court, dealing with the unauthorized registration of the Disputed Domain Name.
On September 1, 2021 the Complainant has withdrawn the above legal action prior to filing this UDRP Complaint. By the court ruling as of September 22, 2021, the said legal action was dismissed.
The Complainant has submitted to the Center on October 12, 2021 a copy of the Court Ruling before Desniyanskyy district court of Kyiv confirming closure of the proceedings No. 2/754/1301/21 and termination of the legal case № 753/10285/20 issued on September 23, 2021 and its English translation.
The Panel in accordance with paragraphs 10 and 12 of the Rules has accepted this Supplemental Filing.
6.3. Substantive Issues A. Identical or Confusingly SimilarIn accordance with paragraph 4(a)(i) of the .UA Policy it should be established that the Disputed Domain Name is identical or confusingly similar to a mark in which the complainant has rights.
The Complainant is the owner of the NEXANS Trademark for more than twenty years. The Complainant has provided evidence and has established its rights in the well-known NEXANS Trademark.
The Disputed Domain Name incorporates the NEXANS Trademark in its entirety, combined with the ccTLD “.com.ua”. In accordance with prior decisions under the .UA Policy, the applicable ccTLD in a domain name is viewed as a standard registration requirement and as such is generally disregarded under the first element confusing similarity test. See AB Electrolux v. Захаров Евгений,WIPO Case No. DUA2020-0006. The Panel considers it is appropriate to apply the same rules in this proceeding regarding ccTLD “.com.ua”. Therefore, the addition of the ccTLD “com.ua” to the Disputed Domain Name in this case does not prevent a finding of identity between the Complainant’s Trademark and the Disputed Domain Name.
Previous UDRP panels have recognized that incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark; see bridport & cie S.A v. Privatewhois.net, Private Whois bridportadvisory.com,WIPO Case No. D2011-2262.
Accordingly, the Panel holds that the Disputed Domain Name is identical to the Complainant’s NEXANS Trademark in which the Complainant has rights.
In view of the above, the Panel finds that the Complainant has satisfied the first element of the .UA Policy.
B. Rights or Legitimate InterestsThe Complainant has used its NEXANS Trademark and its domain name ˂nexans.com˃ since 2000, which is long before the Respondent registered the Disputed Domain Name in 2008.
The Complainant alleges that the Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the .UA Policy. The Complainant has never authorized in any way, licensed, or permitted the Respondent to use its NEXANS Trademark.
The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name in view of the Disputed Domain Name previously resolved to the third parties’ websites, where the various cable products (including the Complainant’s products) were offered for sale. Moreover, the website under the Disputed Domain Name did not disclose any information about the relationship between the Complainant and the Respondent. Therefore, the Panel cannot consider such commercial use of the Disputed Domain Name as bona fide offering goods or services, or a legitimate noncommercial or fair use, without intent for commercial gain to misleadingly divert the Complainant’s consumers.
At the date of this decision the Disputed Domain Name, in spite of its registration date was thirteen years ago, does not resolve to an active website, and is not being used in the promotion of any business or any other online service that might give rise to the Respondent being commonly known by the Disputed Domain Name.
Moreover, taking into account that the NEXANS Trademark was already highly distinctive and well-known at the date of registration of the Disputed Domain Name, the Panel also finds that the Disputed Domain Name could not legitimately be registered by anyone except the Complainant, other than for creating an impression of the association with the Complainant.
Also, taking into consideration the reputation of the Complainant’s NEXANS Trademark, it is impossible to assume that the Respondent was unaware of the Complainant’s brand and business at the time of registration of the Disputed Domain Name.
Given the nature of the Disputed Domain Name which is identical to the Complainant’s trademark it carries a high risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the .UA Policy.
C. Registered or Used in Bad FaithThe Panel comes to the conclusion that the Disputed Domain Name was registered and was used in bad faith in view of the following. The Complainant’s products under the NEXANS Trademark are well-known throughout the world. The Disputed Domain Name was registered long after the Complainant registered its NEXANS Trademark; the Disputed Domain Name incorporates the NEXANS Trademark in its entirety, therefore the Panel finds that the Respondent was well aware of the Complainant’s Trademark when he registered the Disputed Domain Name.
The Respondent obviously chose to register the Disputed Domain Name, which is identical to the Complainant’s NEXANS Trademark, with the intention to benefit from the Complainant’s reputation.
Furthermore, the Disputed Domain Name, reproducing the Complainant’s Trademark in its entirety, is evidently deceptive for consumers. The Respondent obviously chose to register the Disputed Domain Name, which is identical to the Complainant’s NEXANS Trademark, for the purpose of attracting the Internet users to its competing website by creating a likelihood of confusion with the Complainant’s Trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and of the products sold on it.
According to section 3.1.4 of the WIPO Overview 3.0 panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel considers it is obvious that the Respondent, having registered and used the Disputed Domain Name, which is identical to the Complainant’s Trademark, and also having used the Disputed Domain Name for redirecting the users to the websites contained the competing products, primarily intended to disrupt the Complainant’s business. In view of the absence of any evidence to the contrary and that the Respondents did not file any formal rebutment, the Panel concludes the Respondent registered and used the Disputed Domain Name in bad faith.
In view of the foregoing, the Panel finds that paragraph 4(a)(iii) of the .UA Policy has been satisfied by the Complainant and accordingly, the Disputed Domain Name has been registered and is being used in bad faith.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the .UA Policy and 15 of the .UA Rules, the Panel orders that the Disputed Domain Name
Mariya Koval
Sole Panelist
Date: December 13, 2021