WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AREVA v. MIC / Hussain, Syed
Case No. D2010-1098
1. The Parties
The Complainant is AREVA of Paris, France, represented by Cabinet Dreyfus & Associés, France.
The Respondent is MIC / Hussain, Syed of Closter, New Jersey, United States of America.
2. The Domain Name and Registrar
The disputed domain name <arevasolar.com> is registered with Netfirms, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2010. On July 2, 2010, the Center transmitted by email to Netfirms, Inc. a request for registrar verification in connection with the disputed domain name. On the same day, Netfirms, Inc. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2010.
The Center appointed J. Nelson Landry as the sole panelist in this matter on August 23, 2010. 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 an energy company which offers technological solutions for reliable nuclear power generation. On November 28, 2001, it registered the trademark AREVA as an International trademark in association with goods and services in 15 different classes and it applied to register the same trademark in the United States of America on December 7, 2001, which registration was granted on February 28, 2006, in association with the same classes (herein the “Trademark”).
On February 8, 2010, the Complainant issued a press release announcing its acquisition of the United States Company Ausra which is a provider of large-scale concentrated solar power solution for electricity generation and industrial steam production. At that time Ausra, newly acquired, changed its name to AREVA SOLAR.
On February 9, 2010, the Respondent registered the domain name <arevasolar.com>. On March 17, 2010, the Complainant sent a cease and desist letter to the Privacy service used by the Respondent requesting the communication of the identity and contact details of the Respondent which identity and contacts were not disclosed nor available to a party searching the web. The privacy for the disputed domain name was disabled on March 30, 2010. Upon receiving the Respondent’s identity and coordinates from the Privacy service, on April 13, 2010, the Complainant sent by e-mail a cease and desist letter to the Respondent asking for the amicable transfer of the disputed domain name to which e-mail the Respondent answered the same day and indicated that the disputed domain name was for sale at USD 1250.00.
According to the Complaint, the disputed domain name directed Internet users toward a parking page displaying various commercial links and offering the said domain name for sale. However by June 17, 2010, Internet users were and are now directed to an inactive page. These facts are not challenged by the Respondent. The Panel, for its part, can only confirm that at the time of this decision, the disputed domain name resolves to an inactive page.
5. Parties’ Contentions
The Complainant represents to be a world energy expert in global nuclear power industry offering technological solutions for highly reliable nuclear power generation in which it further represents to rank first, having, in 2009, generated revenues in excess of EUR 8.5 billion and net income of more than EUR 550 million According to the Complainant, with its nearly 50,000 employees around the world with manufacturing and commercial facilities in every continent, it is strengthening its international presence balance between Europe, North America and Asia. It is now well established in the United States pursuant to a fast growing presence, where sales revenue of the group have tripled in three years and reached almost 2.5 billion dollars in 2008 with more than 6,000 employees active in operating 45 industrial and commercial sites located in 20 states. The Complainant further represents that Ausra, the US Company it acquired on February 8, 2010, is a leading provider of large scale concentrated solar power solutions for electricity generation and industrial steam production.
The Complainant states specifically that it is the registered owner of the Trademark AREVA which enjoys a worldwide reputation along with the ownership of many AREVA Trademarks across the world, the said Trademark being registered as an International trademark and in the United States.
The Complainant submits that the disputed domain name is identical or at least confusingly similar to the Trademark AREVA since it reproduces the Trademark in its entirety. See Socété des Participations du Commissariat à l’Énergie Atomique v. David Morton, WIPO Case No. D2007-0679 and AT&T Corporation v. William Gormally, WIPO Case No. D2005-0758. It further submits that the adjunction of the common English generic term “solar” is insufficient to give any distinctiveness to the disputed domain name; see Socété des Participations du Commissariat à l’Énergie Atomique v. David Morton, supra and Forlula One Licensing B.V. v. Holding Theunisse, WIPO Case No. D2009-0672. According to the Complainant, the use of the term “solar” increases the likelihood of confusion since Internet users are likely to wrongly believe that the disputed domain name has a link with its solar energy activities or with the products associated with its Trademark, see Westinghouse Electric Corporation v. Kathy Chang, WIPO Case No. D2009-1464, and the addition of the Top Level Domain “.com” is not to be considered when examining the identity or similarity between the Trademark and the disputed domain name nor is it relevant, see Accor v. Noldc Inc., WIPO Case No. D2005-0016; Titoni AG v. Runxin Wang, WIPO Case No. D2008-0820 and Alstom v. Itete Peru S.A., WIPO Case No. D2009-0877.
According to the Complainant, the Respondent would have raised any legitimate interest it had, if any, in his answer to the April 13, 2010 cease and desist letter but he simply offered to sell it to the Complainant for USD 1250.00. It has been held by panels in UDRP decisions that such lack of justification from the respondent allows inferring that the later has no legitimate interest or rights in the said domain name. See Countrywide Financial Corporation, Inc. and Countrywide Home Loans, Inc. v. Marc Bohleren, WIPO Case No. D2005-0248 and Pavillion Agency, Inc. v. Gereenhouse Agency Ltd., WIPO Case No. D2000-1221.
Considering that the Respondent has neither used nor made any demonstrable preparation to use the disputed domain name in connection with a bona fide offering of goods and services, the apparent intention of the Respondent was to have registered the disputed domain name with the intention to sell it to the higher biller and earn revenues from advertising, confirmed by the Respondent’s offer for sale of same for USD 1250.00.
The Complainant contends that such use in these circumstances does not represent a use in connection with a bona fide offering of goods and services. See Compagnie Gervais Danone v. Jose Gregorio Hernandez Quintero, WIPO Case No. D2009-1050; Société Nationale des Chemins de Fer Français v. ostrid company, Domains by Proxy, Inc., WIPO Case No. D2008-0627 and Educational Testing Service (ETS) v. International Names Ltd., WIPO Case No. D2007-0449. This absence of rights or legitimate interests of the Respondent in the disputed domain name is further confirmed by the pattern of conduct of the Respondent who has engaged in registering domain names including third parties trademarks in more than 30 different instances, each specifically identified by the Complainant. See LSG Lufthansa Service Holding AG v. Syed Hussain, WIPO Case No. D2009-0636. The Complainant further contends that the Respondent clearly registered the disputed domain name in bad faith upon consideration of the well-known reputation of the Trademark AREVA throughout the world including the United States and its notoriety which was held in a previous panel’s decision; see Areva v. N/A, WIPO Case No. D2008-0537. According to the Complainant, this bad faith registration is further confirmed by the fact that the disputed domain name was registered the day following the Complainant’s press release about its the acquisition of the United States Company Ausra and the change of name of the latter to AREVA SOLAR, there being no room for Respondent’s ignorance of the Trademark; see ACCOR v. Eliah Zustone, WIPO Case No. D2006-0362. In addition to these facts, the Complainant represents that the Trademark could have been easily searched and located on online databases or in a simple search via Google or other search engines; see Lancôme Parfums Beauté & Cie, l’Oréal v. 10 Selling, WIPO Case No. D2008-0226 and Alstom v. Stockmarket Domains, WIPO Case No. D2008-1542, and therefore that the Respondent most likely had knowledge of the Complainant’s Trademark rights at the time of registration and this proves bad faith registration. See NBC Universal Inc. v. Szk.com, WIPO Case No. D2007-0077 and Alstom v. Domain Investments LLC, WIPO Case No. D2008-0287.
The Complainant alleges that a registration in bad faith is further confirmed herein by the use of a privacy service by the Respondent; see Lancôme Parfums et Beauté et Compagnie, Laboratoire Garnier et Compagnie, L’Oreal SA, L’Oreal USA Creative v. Therese Kerr, WIPO Case No. D2008-1748 and Ustream RV, Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-0598; and the listing by the Complainant of 33 UDRP decisions involving the Respondent using different names such as MIC/Syed Hussain, MIC, Hussain, CPIC NET, CIPC NET and Hussain Syed.
The Complainant submits that there is support to the allegation of the Respondent using the disputed domain name in bad faith in the latter as associated the disputed domain name to a parking page displaying commercial links in various fields and offering said domain name for sale, a fact further corroborated by its specific offer to the Complainant in response to its cease and desist letter. The Complainant relies on earlier UDRP panel decisions to stipulate that the Respondent’s use of the disputed domain name to divert Internet users and directing them to a webpage providing click through revenues is evidence of Respondent’s bad faith. See Alstom v. FM Laughna, WIPO Case No. D2007-1736.
According to the Complainant, the recent inactivity of the disputed domain name has no incidence for a finding of bad faith use by the Respondent in view of the well-known worldwide reputation and goodwill, in particular in the United States, associated to the Trademark. See L’OREAL v. Lewis Cheng, WIPO Case No. D2008-0437. Finally, according to the Complainant, it has previously held that the absence of any license or permission from the Complainant to use widely known trademarks, the Respondent could not claim any actual or contemplated bona fide or legitimate use of the disputed domain name. See Alstom Bouygues v. Webmaster, WIPO Case No. D2008-0281. This is further corroborated by the offer by the Respondent to sell the said domain name for an amount greater than the registration cost. See Unilever PLC and Unilever N.V. v. Pluto Domain Services Private Limited, WIPO Case No. D2008-1789. The Complainant sees further evidence of bad faith in the presence of the generic term “solar” in the disputed domain name since said term refers to part of the Complainant’s activities and has been qualified by an earlier panel as opportunistic bad faith. See Sanofi-aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303.
The Complainant concluded its representations about use in bad faith in reiterating the long history of the Respondent having engaged in abusive registrations and been involved in at least 33 cases of cybersquatting (each case identified by the Complainant in its annex 24) and specifically refers the Panel to the comments of criticism expressed by the Panel in Compagnie Gervais Danone v. Domain Management, Syed Hussain, WIPO Case No. D2008-1239.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for the domain name to be cancelled or transferred:
(i) The domain name registered by the respondent 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 domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has commenced the use of its Trademark AREVA in association with its technological solutions for reliable nuclear power generation at least since November 2001 and within days applied for the same Trademark in the United States where it subsequently was registered. Pursuant to extensive and substantial use and promotion having regard to the revenues generated, the number of employees around the world including the 6,000 in the United States, the Trademark became well-known with substantial goodwill associated thereto, not only in Europe and Asia but also in the United States where the Respondent resides. The Complainant owns and enjoys rights and substantial goodwill in the Trademark AREVA.
The disputed domain name reproduces the Trademark in its entirety and differs only by the addition of the generic term “solar” and Top Level Domain “.com” which, as it has been held by panels in earlier UDRP decisions referred to by the Complainant in its representations, do not diminish in any way the likelihood of confusion with the Trademark AREVA or give any distinctiveness to the disputed domain name; to the contrary, the addition of the term “solar” which describes the type of energy activities and products of the Complainant associated with its Trademark in fact increases the likelihood of confusion.
The Panel finds that the Complainant has rights in the Trademark AREVA and that the disputed domain name is confusingly similar to the said Trademark.
The first criterion of the Policy has been met.
B. Rights or Legitimate Interests
The Respondent has not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name by stating that the Respondent has never been known by the name Areva or the disputed domain name, is not making any legitimate noncommercial or fair use of the disputed domain name. Furthermore, Complainant has never given a license nor in any way authorized the Respondent to make use of Complainant’s Trademark. There is no evidence that Respondent has ever engaged is any legitimate business under the Complainant’s Trademark. While there is evidence that the Respondent’s action constitutes an attempt to extort money from the Complainant, it is certainly fair to conclude that the holding of the disputed domain name further denies the Complainant access to the use of the domain name corresponding to its subsidiary corporation AREVA SOLAR.
In this Panel’s view, the absence of any justification by the Respondent in his answer to the cease and desist letter from the Complainant is most telling in this case. The registration of the disputed domain name on the day following the disclosure by the Complainant of the United States company Ausra and its change of name to AREVA SOLAR combined with the track record of the Respondent who has already registered more than 30 domain names which registrations were challenged, in itself substantiates the claim of the Complainant, a claim well supported by the earlier UDRP decisions referred to by the Complainant, that the Respondent has no rights or legitimate interests in respect of the disputed domain name and this Panel so finds.
The second criterion of the Policy has been met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(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.
It should be noted that the circumstances of bad faith are not limited to the above.
The Complainant relying on solid evidence well supported on every point by panel decisions in earlier UDRP decisions contends that, in addition to the lack of rights and legitimate interests, the disputed domain name was registered and used in bad faith.
In this Panel’s view, the notoriety and goodwill associated with the Trademark AREVA, as already held in Areva v. N/A, supra, and the chronological sequence of the acquisition by the Complainant of the United States company AUSRA and the registration of the disputed domain name on the very next day, strongly, if not irrevocably, substantiate the contention of the Complainant that the Respondent registered the disputed domain name in bad faith with full knowledge and awareness of the Complainant and its well-known Trademark.
Given the circumstances, the Panel finds that the disputed domain name was registered in bad faith by the Respondent.
This bad faith is also present in and associated with the use of the disputed domain name by the Respondent. Corroboration is also present in the circumstances of the present case in the use of privacy service by the Respondent and, perhaps most importantly, in the pattern of behavior of the Respondent. The sole communication by the Respondent and request therein to sell the disputed domain name for an amount greater than the registration cost is a further corroboration of the fact that the Respondent uses the disputed domain name in bad faith. This bad faith behavior of the Respondent fits very well with its long history of engaging in abusive registrations of at least 33 cases of cybersquatting.
This Panel has read several of the earlier UDRP decisions cited by the Complainant and in particular the criticism by the panel in Compagnie Gervais Danone, supra, wherein the same Respondent had combined two well-known trademarks, DANONE and YAKULT, trademarks of two competitors. The panel, in this case having noted the 23 cases involving the same respondent directly or through a privacy service, discovered himself another 5 instances which brought the total to 28 on September 28, 2008, at the date the decision was rendered. The said panel upon considering the track record of the Respondent, the same as in the present case, commented that it showed “a cynical disregard for the rights of others and with a view to gaining a personal financial advantage from the unauthorized exploitation of those trade mark rights. He has also shown himself in dishonest practices in order to disguise and further willing to engage”. About 2 years later there are now 33 cases listed by the Complainant which clearly show that the Respondent, although criticized for its deliberate disregard for other party’s rights, is continuing its misuse of others’ rights.
The Panel herein fully concurs with the panel in said Gervais Danone case. It is difficult upon considering the cynicism and disregard attitude of the Respondent, which according to the current record of 33 instances located, is still able to register domain names confusingly similar or identical to third party owners of trademarks in which they have invested so much effort to have no efficient additional recourses to claim compensation or recovery of costs from said cynical cybersquatters. When one considers how easily a simple verification can be made on Google or other search engines, one wonders whether the privacy services or registrars who assist such registrants are not engaging in wilful blindness and some liability.
This Panel agrees with the panel in the Gervais Danone case that the use of privacy services by registrants, as the Respondent in the present case, can be a factor pointing in the direction of bad faith registration and use. In this case, upon considering the others elements in evidence, the use of a privacy service by the Respondent further corroborates the bad faith of the Respondent.
The Panel determines and finds that the Respondent has registered and used the disputed domain name in bad faith.
The third criterion of the Policy has been met.
The Panel concludes that:
(a) the domain name <arevasolar.com> is confusingly similar to the Complainant’s Trademark;
(b) the Respondent has no rights or legitimate interests in the disputed domain name;
(c) the disputed domain name has been registered and is being used in bad faith.
Therefore, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <arevasolar.com> be transferred to the Complainant.
J. Nelson Landry
Dated: September 6, 2010