WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AREVA v. Domain Management
Case No. D2011-0691
1. The Parties
The Complainant is AREVA of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Domain Management of Closter, New Jersey, United States of America .
2. The Domain Name and Registrar
The disputed domain name <usareva.com> (the Domain Name) is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2011. On April 20, 2011 the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On April 20, 2011, Tucows 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 April 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2011.
The Center appointed Jon Lang as the sole panelist in this matter on May 30, 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.
4. Factual Background
The Complainant is a world leader in the energy industry. It covers the entire nuclear cycle, from uranium mining to used fuel recycling, including reactor design and related services. AREVA is expanding its operations in renewable energies, including biomass, wind power, solar power and fuel cells.
The Complainant has a worldwide presence employing nearly 48,000 people across the globe. AREVA has manufacturing and commercial facilities in every continent. In particular, it is well-established in North America employing approximately 6,000 people in the United States (US) over 45 sites.
The Complainant and its trademark AREVA enjoy a worldwide reputation. The Complainant is the owner of numerous AREVA trademarks, in particular International Trademark Registration (for AREVA - No 783282) registered on November 28, 2001 and US Trademark (for AREVA - No 3061460) filed on December 7, 2001 and registered on February 28, 2006.
The name AREVA is also the corporate and trade name of the Complainant.
Moreover, the Complainant owns following domain names: <areva.com>, <areva.net>, <areva.info>, <areva.org> and <areva.us>.
The disputed domain name <usareva.com> was registered on October 16, 2010. It resolves to a parking page displaying commercial links. The Domain Name has also been put up for sale through the Sedo platform.
The Complainant sent a cease-and-desist letter via email and registered letter dated December 16, 2010 to the Respondent requesting a transfer of the Domain Name, that it cease the use of the Domain Name and undertake in writing not to use the mark AREVA without authorisation in the future. The Respondent answered the Complainant’s letter stating that ‘My domain is combination of two common words USA (country name) and Reva (name of electric car). I don’t see any problem or confusion….”. The Respondent also asked the Complainant, if interested in acquiring the Domain Name, for an offer.
The Complainant replied by email on January 27, 2011, stating that it was not willing to buy the Domain Name and that the Respondent should transfer it at no cost. The Respondent replied by email on January 30, 2011, stating that the Domain Name had been priced at USD 750 and that the Complainant should make an offer if it was really interested in acquiring it. As no resolution could be found the Complainant began these proceedings.
5. Parties’ Contentions
Identical or Confusingly Similar
The disputed domain name is almost identical or confusingly similar to the Complainant’s trademark AREVA. Indeed, the disputed Domain Name reproduces the Complainant’s trademark in its entirety.
The Domain Name only differs from the Complainant’s trademark by the addition of the term “us”. The inclusion of “us” in the Domain Name is not sufficient to distinguish it from the Complainant’s AREVA trademark. The letters “us” correspond to the ISO code for the United States of America and is known as a common abbreviation for that country. As such its inclusion in the Domain Name is more likely to increase the likelihood of confusion rather than prevent it given the Complainant’s presence in the US and that it has developed an active website at ”www.us.areva.com”.
The Complainant’s trademark, well-known worldwide, can easily be identified as the dominant part of the Domain Name and, as a result, members of the public would reasonably assume that it is related to the Complainant or owned by it.
Furthermore, AREVA is a distinctive term without any meaning which only increases the likelihood of confusion between the Domain Name and the Complainant’s trademark.
Rights or Legitimate Interests
The Respondent has no prior rights or legitimate interests in the Domain Name.
The registration of numerous AREVA trademarks, together with the presence of AREVA in the United States, long preceded the registration of the Domain Name.
The Respondent is not affiliated with the Complainant in any way. In particular, it has not been authorised by the Complainant to register and use the Complainant’s AREVA trademark or to seek registration of any domain name incorporating it.
The term AREVA has no special meaning in English and the Respondent is not known by the name “areva” or any similar term.
The Respondent has never claimed any prior rights or legitimate interests in the Domain Name. In his email correspondence with the Complainant, the Respondent did not take the opportunity to claim a legitimate right or interest but rather merely explained that the Domain Name is a combination of two common words, “usa”, a geographical indication, and “reva”, an electric car produced by an Indian company. However, the Respondent is not the owner of any trademark for REVA or linked to its owner, and the parking page to which the Domain Name resolves is in no way related to Reva electric cars.
The Respondent offered to sell the domain name to the Complainant for a price exceeding its out-of-pocket-cost. The Respondent’s indication that the Domain Name has been valued at USD 750 should be understood as an indication that it will not transfer it for less.
The Respondent has neither used nor made any demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods and services. In fact, it seems that the Respondent has registered the Domain Name with the sole intention of selling it to the Complainant or to the highest bidder and to earn revenues from sponsored links given that the Domain Name has been placed for sale on Sedo and directed to a parking page containing sponsored links.
Furthermore, it would appear that the Respondent (or those connected with the Respondent) has engaged in a pattern of conduct of registering domain names including third party’s trademarks including the Complainant’s trademark AREVA as reflected in previous UDRP proceedings e.g. WIPO Case No. D2010-1098, Areva v. Hussain Syed.
The Domain Name is so similar to the famous trademark AREVA that the Respondent cannot reasonably pretend that he has registered the disputed domain name for the purpose of developing a legitimate activity.
Registered and Used in Bad Faith
Registered in bad faith
The Respondent has registered the Domain Name in bad faith. Given, AREVA v. MIC / Hussain, Syed, WIPO Case No. D2010-1098 mentioned earlier, it is fair to assume that the Respondent was aware of Complainant’s trademarks or trade names at the time it registered the Domain Name. In any event, the Complainant and its AREVA trademark are well known throughout the world including in the United States and in view of the reputation of the AREVA trademark and its reproduction in its entirety in the Domain Name, it is likely that the Respondent was aware of the existence of the mark.
Also, a trademark search would have revealed the existence of the Complainant’s trademark registrations.
Moreover, a search via Google or other search engine using the keyword “areva” or “usareva” would reveal information about the Complainant.
It can be assumed that the Respondent registered the Domain Name even though he was well aware of the Complainant's well known trademarks, trade name and goodwill attached to the name AREVA.
Furthermore, the Respondent has engaged in a pattern of conduct of registering domain names including third party’s famous trademarks, which suggests opportunistic bad faith at the time he registered the Domain Name.
In the circumstances, it can be assumed that the Respondent has registered the Domain Name to capitalise on the Complainant's long history, reputation and goodwill.
Use in bad faith
The Domain Name resolves to a parking page displaying commercial links in various fields and offers the Domain Name for sale through Sedo.
The use of a famous trademark to attract Internet users to a website for commercial gains constitutes a use in bad faith. The Respondent is taking undue advantage of the Complainant’s trademark to generate profits. Internet users attempting to visit the Complainant’s website will have ended up at the web page set up by the Respondent.
The Domain Name was offered for sale to the Complainant by the Respondent at a price exceeding its out-of-pocket costs, which is indicative of bad faith.
Finally, as earlier indicated, the Respondent appears to have a history of having engaged in abusive registrations. Indeed, it was said by the panel in Compagnie Gervais Danone v. Domain Management, Syed Hussain, WIPO Case No. D2008-1239 that “The Panel notes that in a number of these cases, panels have been highly critical of Mr. Hussain’s behaviour and made adverse comments as to Mr. Hussain’s honesty. […] In short, the Respondent’s track record suggests that he has for a number of years engaged in the registration of domain names with 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.”
In all the circumstances, it can be said that the Domain Name is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions. However, in response to a cease and desist letter, it was suggested, as mentioned above, that the Domain Name was a combination of two common words, “usa”, a geographical indication, and “reva”, the name of an electric car. This was done presumably with the intention of demonstrating that there was no attempt to trade off the back of the fame of and goodwill in the name and mark, AREVA. It is difficult to discern any other more obvious argument.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is (i) identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements.
A. Identical or Confusingly Similar
The Domain Name is not identical to the Complainant’s mark so it is necessary to consider whether it is confusingly similar. Under the UDRP, this involves a comparison, on a visual or aural level, between the trademark and the domain name to determine likelihood of Internet user confusion. In order to satisfy the test, the trademark would generally need to be recognisable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent Internet user confusion and this is particularly so where the trade mark in question is not a common term or phrase but rather a made up or invented word.
The Panel is satisfied that ‘usareva’, is confusingly similar to the mark, AREVA.
Even if one were to adopt a slightly higher burden and require, as some panels have done, a risk that Internet users may actually believe that there is a real connection between the domain name and the complainant and/or its goods and services, the Complainant would succeed in showing confusing similarity. The overall impression created by the Domain Name (that AREVA could easily be seen to be the dominant element of it, regardless of other possibilities, with the addition only of a geographical indicator to a country in which the Complainant has a presence), may well give rise to the possibility that Internet users may think that the owner of the Domain Name is in fact the owner of the AREVA mark to which it is similar, or that there is some form of association between the Respondent and the Complainant.
Before leaving the topic of confusing similarity, it is worth dealing with the argument, if it can be so termed, raised by the Respondent in correspondence with the Complainant, that the Domain Name has nothing at all to do with the Complainant’s trademark, AREVA but rather an electric car known as ‘Reva’, and that the Domain Name should thus be understood to refer to the car ‘Reva’ together with the geographical indicator, United States of America. Even if this argument is taken at face value, the fact that a Domain Name could be viewed in more than one way, does not necessarily prevent a finding of confusingly similarity under the Policy and in the circumstances of this Complaint, it does not do so.
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy and thus this element of paragraph 4 of the Policy has been established.
B. Rights or Legitimate Interests
The Respondent has not filed any response in this proceeding. The argument floated by the Respondent in correspondence is not regarded as a Response for the purposes of this Complaint and in any event, does nothing to advance any case on behalf on the Respondent. No relationship or association with the ‘Reva’ car or its manufacturer has been disclosed and the Panel is entitled to infer from the present record that none exists, just as none exists with the Complainant.
By its allegations in the Complaint and supporting annexures, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with appropriate arguments or evidence demonstrating such rights or legitimate interests. A respondent can show it has rights to or legitimate interests in a domain name in various ways. For instance, it could show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers. However, given the finding of confusing similarity and the present circumstances, that the Respondent is likely to have known of the mark before registration of the Domain Name and the nature of the website to which the Domain Name resolves, it would be difficult to mount any argument based on these grounds. Indeed, the Respondent has not tried.
A respondent can also show, so as to establish rights or legitimate interests, that it was using a domain name in connection with a bona fide offering of goods or services. But associating a confusingly similar Domain Name to a parking page with links to other sites, commercial in nature and from which the Respondent is likely to derive a commercial benefit, should not be regarded as a bona fide use.
Given that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name, and that the Respondent has failed to come forward with arguments or evidence demonstrating that it does have such rights or legitimate interests and indeed none can be contemplated on the available evidence and brief analysis set out above, the Panel holds that this element too of the Policy has been met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that evidence registration and use of a domain name in bad faith. For instance, if there are circumstances indicating that a respondent has registered a domain name primarily for the purposes of disrupting the business of a competitor, that might be evidence of the registration and use of the domain name in bad faith. So too might there be such evidence where a respondent, in using the domain name, intentionally attempts 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 website or of a product or service on the website. Also, if there are circumstances indicating that a respondent has acquired a domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant for valuable consideration in excess of out-of-pocket costs directly related to the domain name, bad faith registration and use may be found. Moreover, where the Domain Name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided that there is a pattern of such conduct, bad faith may be found.
The Complainant has advanced a number of factors suggesting bad faith registration and use. Whatever the purpose of registration was, it seems clear that the Respondent knew of the mark and the Complainant’s rights in it and in these circumstances, it is difficult, if not impossible, to conceive of any legitimate explanation for the choice of Domain Name in the present case. It is therefore difficult to arrive at a conclusion other than that the Domain Name has been registered to take unfair advantage of the Complainant’s rights. Whatever other grounds a finding of bad faith registration and use may be based, and there is likely to be a few to choose from, what seems clear is that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website i.e. the parking site to which the Domain Name resolves, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such website or of goods or services available through it.
Accordingly this Panel finds, for the purposes of the Policy, that the Domain Name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <usareva.com> be transferred to the Complainant.
Dated: June 20, 2011