WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Degremont v. George Mc Loch
Case No. D2007-1759
1. The Parties
The Complainant is Degremont, Rueil Malmaison, France, represented by Clifford Chance Europe LLP, France.
The Respondent is George Mc Loch, Orlando, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name is <ondeo-degremont.com>. It is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2007. On December 3, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On December 4, 2007, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details listed in connection with the domain name. On December 4, 2007, the Complainant filed an amendment to the Complaint. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 6, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 26, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2007.
The Center appointed Fabrizio La Spada as the sole panelist in this matter on January 4, 2008. 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 company that has been registered on the French register of companies under the name Degremont since 1956. It owns several trademarks consisting of or containing the name DEGREMONT, including (amongst others) the following:
- French trademark DEGREMONT, no. 779032, registered on January 30, 1986, in classes 1, 5, 11, 37, 40 and 42.
- Community trademark DEGREMONT + device, no. 1411198, registered on May 7, 2001, in classes 11, 36, 37, 40 and 42.
- International trademark DEGREMONT, no. 316157, registered on July 1, 1966, in classes 11, 40 and 42.
- US trademark DEGREMONT, no. 0877726, registered on September 30, 1969 in class 11.
The Complainant is also the owner of several domain names, including amongst others the names <degremont.fr>, reserved on January 17, 1996, and <degremont.com>, reserved on June 22, 1997. The Complainant was also the owner, between 2001 and 2006, of several domain names including the words “ondeo” and “degremont”, such as <ondeo-degremont.com> and <ondeodegremont.com>.
Following a series of mergers, the Complainant became part of the French Suez group. The Complainant’s mother company, Suez Environnement, or the latter’s subsidiaries, own several trademarks consisting of or containing the word Ondeo.
After the Complainant joined the Suez group, it began using and advertising services under the name ONDEO DEGREMONT.
The Respondent registered the domain name on May 14, 2006. The domain name is active and resolves to a pornographic website.
5. Parties’ Contentions
Concerning the first test under the Policy, the Complainant submits that by registering the domain name, the Respondent violated the rights of the Complainant in its DEGREMONT trademarks. The Complainant points out that the domain name wholly incorporates the Complainant’s trademarks, which are well-know throughout the world in respect of drinking water production, desalination, waste water treatment and sludge treatment. In addition, the Complainant contends that the juxtaposition of the word Ondeo next to the word Degremont in the domain name strengthens the risk of confusion, as the denomination Ondeo-Degremont was used by the Complainant as a corporate name during several years. Moreover, according to the Complainant, citing previous WIPO cases, the addition of a third-party trademark does not eliminate the visual impression that the disputed domain name is associated with the Complainant’s trademark.
Concerning the second test under the Policy, the Complainant states that the Respondent is not commonly known by the domain name, does not own any trademark containing the words Ondeo and/or Degremont, and was not authorized by the Complainant to use the latter’s trademark. In addition, the Complainant considers that by using the domain name for a pornographic website, the Respondent is not making a legitimate non-commercial or fair use of the domain name. As a consequence, according to the Complainant, the Respondent has no legitimate interest in respect of the domain name and is only attempting to attract Internet users who are looking for products or services associated with the trademark to its website.
Concerning the third test under the Policy, the Complainant submits that by using the domain name, the Respondent intentionally attempted to attract for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainant’s trademarks. In addition, the Complainant contends that given the widespread use and notoriety of the DEGREMONT trademarks, as well as the purely arbitrary and distinctive character of such marks, the Respondent could not have ignored the Complainant’s trademarks at the time he registered the domain name. Furthermore, the fact that the Respondent added the word Ondeo to the Complainant’s DEGREMONT trademark, thus recreating the previous corporate name of the Complainant, is additional evidence that he could not have ignored the existence of the Complainant’s mark. In this respect, the Complainant also points out that the Respondent registered the domain name three months after registration of the same (by the Complainant) expired on February 27, 2006. According to the Complainant, relying on previous WIPO cases, registration of a lapsed domain name to divert traffic to pornographic websites constitutes bad faith.
Based on the elements summarized above, the Complainant requests the transfer of the domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in these proceedings and obtain the transfer of the disputed domain name, the Complainant must prove that each of the three following elements is satisfied:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section A), and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name (see below, section B), and
(iii) The domain name has been registered and is being used in bad faith (see below, section C).
Paragraph 4(a) in fine of the Policy states that the burden of proof with regard to these elements lies with the Complainant.
A. Identical or Confusingly Similar
This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.
As regards the first issue, the Complainant has provided satisfactory evidence that it is the owner of several trademarks consisting of the work DEGREMONT.
Concerning the second issue, the Panel finds that the domain name is confusing similar to the Complainant’s DEGREMONT trademarks. First, the domain name wholly incorporates the Complainant’s trademark. In the Panel’s view, the addition of the word Ondeo, separated from the word Degremont by a hyphen, is not sufficient to avoid the risk of confusion. On the contrary, the Panel finds that the addition of this word, which is a third-party trademark, actually increases the risk of confusion between the domain name and the Complainant’s trademark. Indeed, this third-party trademark has been associated during several years with the Complainant itself, notably as part of the Complainant’s name and in the Complainant’s advertising campaigns.
The Panel therefore finds that the domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
It is difficult for a complainant to prove such a negative fact. Therefore, Panels have required Complainants to establish at least a prima facie case under this heading. If that is made out, the evidential onus then shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests (see, e.g. Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070).
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
In the present case, there is no evidence on record that the Respondent has used or prepared to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. On the contrary, the domain name resolves to a pornographic website where no use is made of the words “Ondeo”, “Degremont”, or “Ondeo-Degremont”.
Second, there is no evidence that the Respondent is or has been commonly known by the domain name. On the contrary, the name of the Respondent does not consist of or contain any of the words “Ondeo”, “Degremont”, Or “Ondeo-Degremont”.
Third, there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain. On the contrary, the elements on record show that the domain name is used for commercial purposes, by directing users to a website featuring pornographic material and links to other pornographic websites offering materials against payment.
Finally, there are no other elements on record, nor explanations by the Respondent (who did not file a reply in the course of these proceedings), indicating that the Respondent would have rights or legitimate interests in respect of the domain name.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the domain name was registered and is being used in bad faith by the Respondent. Paragraph 4(b) of the Policy sets out four non-exclusive circumstances which shall be evidence of the registration and use of a domain name in bad faith. Amongst these circumstances, Paragraph 4(b) of the Policy provides the following:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
In the present case, and based on the evidence on record, the Panel considers that the Respondent has registered and used the domain name to attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark.
First, the domain name is a combination of the Complainant’s trademark and a third-party trademark which was until 2006 part of the Complainant’s name and was used by the Complainant in its advertising campaigns. These two marks (ONDEO and DEGREMONT) have no descriptive character and have no meaning in French or in English. The Panel can think of no other reason for registering or using the domain name than the intent to create a likelihood of confusion with the Complainant’s mark.
Second, the Panel considers that the registration by the Respondent of a domain name consisting of non descriptive trademarks belonging to third parties, shortly after such domain name lapsed, in order to direct Internet users to pornographic websites is an indication of bad faith (see, e.g., Hines Interests Limited Partnership v. Christian Zeller/N/A, WIPO Case No. D2004-0259).
The Panel therefore finds that the Respondent has registered and used the domain name in bad faith.
In all the circumstances, the Panel concludes that the domain name should be transferred to the Complainant, without prejudice to any rights which may be asserted by the third party owner of the mark ONDEO (see NVT Birmingham, LLC d/b/a CBS 42 WIAT-TV v. ZJ, WIPO Case No. D2007-1079).
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <ondeo-degremont.com>, be transferred to the Complainant, without prejudice to any rights which may be asserted by the third party owner of the mark ONDEO.
Fabrizio La Spada
Dated: January 31, 2008