WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Areva v. Domains by Proxy, Inc./ Sheng Xiang
Case No. D2011-0061
1. The Parties
The Complainant is Areva of Paris, France, represented by Dreyfus & Associés, France.
The Respondent is Domains by Proxy, Inc./ Sheng Xiang of Macau, SAR of the People's Republic of China.
2. The Domain Name and Registrar
The disputed domain name <areva-fondation.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2011. On January 12, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On January 13, 2011 GoDaddy.com, 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 January 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2011.
The Center appointed Francine Tan as the sole panelist in this matter on February 17, 2011. 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.
Although no formal Response was filed in accordance with the Rules, the Respondent sent an email to the Center on January 25, 2011 which read as follows:
“I’ve engaged a third part service to register the domain. All the third part platform are legal. I don’t offend any trade marks, and anyone is not entitled to take the domain name from me. For more domain register rules, simply check icann.”
On February 9, 2011 the Complainant filed “additional observations” following the Respondent’s email of January 25, 2011.
4. Factual Background
The Complainant asserts in the Complaint that it is a world leader in the energy industry, ranking first in the global nuclear power industry. The Complainant has about 48,000 employees around the world and in 2009, its revenue was estimated to be 8.5 billion Euros. The Complainant has a manufacturing presence in China as well as 11 offices. In 2009, it won two contracts valued at more than 150 million Euros to supply 19 reactor coolant pumps to a Chinese entity. The Complainant has been involved for the past 20 years in helping China develop its nuclear technology. 20 of the 24 reactors under construction in China use the Complainant’s technology.
The Complainant also conducts proactive patronage activities in the countries in which it operates. These activities are conducted by the Areva Foundation (in French, “Fondation Areva”). The Areva Foundation was created in 2007 and operates in two areas: health and knowledge sharing. Activities are conducted in Canada, China, France, Niger, South Africa and the United States of America. In China, the Areva Foundation has been supporting the Institut Pasteur in Shanghai since 2005 on the issue of climate change and its impact on viral diseases.
The Complainant operates its website at “www.areva.com” and has registered many domain names including <arevafondation.com>, <arevafondation.cn>, <areva-fondation.cn>, <arevafondation.us> and <arevafondation.eu>.
The disputed domain name was registered by the Respondent on May 26, 2010. The disputed domain name previously belonged to the Complainant. Internet users who entered the disputed domain name used to be directed to a site under construction. However, at the time of the filing of the Complaint, the website directed Internet users to several links in the Chinese language, conveying information on the Hong Kong stock market and stocks accounts where commercial links could be accessed by the Internet users. The Complainant asserts that these links are very likely to generate revenue for the Respondent.
On June 29, 2010, the Complainant sent a cease-and-desist letter to the Respondent by email and registered mail, requesting a transfer of the disputed domain name. Despite reminders sent to the Respondent, no response was received. The Complainant noted that the registered domain name holder of the disputed domain name was subsequently changed to a privacy shield service, Domains by Proxy, but the disputed domain name still directed Internet users to the same website.
5. Parties’ Contentions
1. The Complainant asserts that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which it has rights.
The Complainant has numerous trademark registrations for the trade mark AREVA in various countries around the world including International registration Nos. 783282 and 839880 covering numerous classes of goods and services, in which China is one of the designated countries. The Complainant claims that its AREVA trade mark enjoys worldwide reputation and many of its domain name registrations contain the mark AREVA and the term “foundation”/ “fondation”.
The disputed domain name reproduces the Complainant’s AREVA mark in its entirety. In many UDRP panel decisions, it has been held that the incorporation of a trade mark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark. The disputed domain name differs from the Complainant’s AREVA trade mark only by the addition of the term “fondation” and a hyphen. This addition of the French generic word, “fondation” (meaning “foundation”) is not sufficient to distinguish the disputed domain name from the Complainant’s trade mark. Furthermore, this word is descriptive of the Complainant’s activities, namely running a foundation. This therefore increases the likelihood of confusion.
2. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name:
(i) The Respondent is not affiliated to the Complainant in any way and has not been authorized by the Complainant to use and register its trade mark or to seek registration of any domain name incorporating the AREVA trade mark.
(ii) The Respondent has no prior rights or legitimate interests in the disputed domain name. The registrations of the Complainant’s trade mark AREVA preceded the registration of the disputed domain name by a number of years.
(iii) The disputed domain name is so similar or identical to the famous mark, AREVA, and to the Complainant’s domain names <arevafondation.com> and <fondationareva.com> that the Respondent cannot reasonably claim to intend to develop a legitimate activity through the disputed domain name.
(iv) The Respondent is not commonly known by the name AREVA, nor is it affiliated with the Complainant or authorized to use the AREVA trade mark.
(v) The Respondent did not demonstrate, before receiving notice of the dispute, use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
(vi) The Respondent has never replied to the Complainant’s communications and it can therefore be assumed that it has no rights or legitimate interests in the disputed domain name. The use of the proxy service also suggests that the Respondent has “something to hide”.
3. The Complainant asserts that the disputed domain name was registered and is being used in bad faith:
(i) It is not plausible that the Respondent was unaware of the Complainant when it registered the disputed domain name. The Complainant is well-known throughout the world including China, and the Areva Foundation has been operating in Shanghai since 2005. The AREVA mark has been recognized as a well-known trade mark by panels in several WIPO UDRP decisions.
(ii) The Complainant is also well-known in the United States where the privacy shield is located.
(iii) The Respondent Sheng Xiang is the owner of 1,098 other domain names and is clearly not inexperienced in holding domain names. As such, it can be expected that Sheng Xiang could have easily conducted an online search and been made aware of the existence of the Complainant and of its AREVA trade mark.
(iv) The Respondent is using the disputed domain name to attract Internet users to its own website and such action constitutes bad faith (AREVA v. Industrial Tests, Inc, WIPO Case No. D2009-1686).
(v) A previous panel has held that in the absence of a licence or permission from the trademark owner to use a widely known trade mark, no actual or contemplated bona fide or legitimate use of a domain name can reasonably be claimed by a respondent (Planete Tortue v. none Pierre Guynot, WIPO Case No. D2009-1540).
(vi) The Respondent is likely to have registered the disputed domain name to prevent the Complainant from reflecting its trade mark in the disputed domain name. This is evidence of bad faith.
(vii) Whilst the use of a privacy shield is not in itself necessarily evidence of bad faith, in combination with other factors however, it can and should, in this case, constitute evidence of bad faith. In this case, (a) the disputed domain name was previously owned by the Complainant, (b) the Complainant’s entire trade mark is reproduced in the disputed domain name, (c) the disputed domain name is used to direct Internet users to the Respondent’s own website, taking advantage of the fame and goodwill of the Complainant, and (d) the use of a privacy shield started after the Complainant tried to contact the Respondent to find an amicable settlement.
In the Complainant’s supplemental submission of February 9, 2011, the Complainant stated that it was not contesting the use of a privacy shield per se but wanted to point out that the Respondent started using the privacy shield service only after the Complainant tried to contact him. It also wanted to dispute the Respondent’s claim in the email that the disputed domain name does not “offend any trade marks”. The Complainant disagrees as the disputed domain name reproduces the trade mark AREVA in its entirety and the Respondent did not claim any right in the said trade mark. Further, in response to the Respondent’s email of January 25, 2011, the Complainant wanted to point out that the ICANN rules are clear that a trade mark owner can challenge a domain name registered by a third party where the requirements of paragraph 4(a) of the Policy are fulfilled albeit domain names can be registered on a first come first served basis. In this regard, the Respondent did not deny the confusing similarity of the disputed domain name with the trade mark AREVA and neither did the Respondent provide anything to show that it has rights and legitimate interests in the disputed domain name.
Apart from the email communication of January 25, 2011, the Respondent did not reply to the Complainant’s contentions by way of a formal Response in accordance with the Rules.
6. Discussion and Findings
With regard to the preliminary issue of whether it is appropriate for the Panel to consider the contents of the supplemental submission made by the Complainant on February 9, 2011, it is necessary to review the Rules, in particular those governing the general powers of the Panel. Strictly speaking, in the event of a default by a respondent, “in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint” (Rule 5(e)) (emphasis added).
At the same time, there seems to be a measure of discretion and latitude given to panelists to decide how to proceed in each case. Rule 10 provides that:
“(a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.
(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel.
(d) The Panel shall determine the admissibility, relevance, materiality and weight of the evidence.”
Furthermore, Rule 12 stipulates that: “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.”
The Panel has taken into consideration the above rules, in particular Rule 10(b) and (c). Whilst the Panel is of the view that the supplemental submission of February 9, 2011 does not serve to add anything fundamentally new or different to what had already been set out in the Complaint, it is prepared in this case to admit and consider the statements in coming to its decision.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights.
The Complainant has in this case shown that it has rights to the AREVA trade mark. The disputed domain name incorporates the entire mark AREVA and differs from the mark only by the additional word and hyphen, “-fondation”, and the additional gTLD “.com”. The Panel agrees with the established position on this issue, namely that “the 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” (Britannia Building Society v. Britania Fraud Prevention, WIPO Case No. D2001-0505. See also Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105.)
The Panel is of the view that the additional word “-fondation” is a descriptive element which refers to the foundation (or “fondation” in French) which is run by the Complainant. As submitted by the Complainant, many previous UDRP panels have held that the mere addition of a generic or descriptive term would not serve to distinguish or differentiate a domain name from a trade mark. In the context of the foundation activities of the Complainant, the descriptive element in the disputed domain name in fact adds to the likelihood of confusion with the Complainant’s trade mark.
The Panel therefore finds that the Complainant has shown that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests. The Respondent is not affiliated with nor authorized by the Complainant to use and register AREVA as a trade mark or to incorporate it in a domain name. Further, there is no evidence that the Respondent is commonly known by the name, Areva, or that there had been demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
The Respondent did not provide any evidence which shows it had rights or legitimate interests in the disputed domain name. In the email communication of January 25, 2011, the Respondent did nothing more than to make a mere assertion that it did not “offend any trade marks”. Having failed to demonstrate rights or legitimate interests, the Panel is left to arrive at its finding only on the basis of what has been established by the Complainant.
In this instance, taking into consideration (i) the many variations of domain name registrations incorporating the trade mark AREVA and the word “foundation”/ “fondation” that the Complainant owns, (ii) the significant number of domain names the Respondent appears to hold, and (iii) the domain name which the Respondent chose to register (i.e. a combination of the trade mark AREVA and a word which describes an activity of the Complainant), the Panel concludes that when the Respondent registered the disputed domain name, it must have known that AREVA was a trade mark of the Complainant and deliberately registered the disputed domain name precisely because it would be recognized as such.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of the domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or 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 that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) The Respondent has 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 it has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to its 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 the Respondent’s website or location or of a product or service on its website or location.
The Panel believes that the Respondent must have known of the Complainant and of its trade mark, AREVA, when it registered the disputed domain name. The evidence submitted by the Complainant does support a finding that the trade mark AREVA is well-known. It is indeed highly implausible for the Respondent to have, purely by chance, adopted the specific combination of the word AREVA with the French word, “fondation” which describes one of the Complainant’s activities. The Respondent could have explained how it derived the disputed domain name <areva-fondation.com> or how it had a legitimate interest or right in a domain name incorporating the mark AREVA, but failed to do so. The insertion of the hyphen in the disputed domain name must have been “necessitated” as the domain name <arevafondation.com> was already registered by the Complainant. As an apparent holder of hundreds of other domain names, the inference can be drawn that the Respondent is savvy in relation to the registration of domain names and that it would have come across some of the Complainant’s domain name registrations containing the words AREVA and “foundation”/ “fondation”. The registration was therefore made in bad faith.
The Complainant has asserted that the Respondent has used the disputed domain name to attract Internet users to its own website by creating confusion with the Complainant’s mark. This does appear to be the case, based on the information submitted by the Complainant.
The Panel also agrees with the Complainant’s submission that in the absence of permission from a trademark owner to use a widely-known trade mark, no actual or contemplated bona fide or legitimate use of a domain name can reasonably be claimed by a respondent.
In the premises and in view of all the surrounding circumstances of this case, the Panel finds that the Complainant has satisfied its burden of establishing registration and use of the disputed domain name in bad faith.
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 <areva-fondation.com> be transferred to the Complainant.
Dated: March 4, 2011