WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AREVA v. N/A, Alex Makarov / Domain Project LLC
Case No. D2012-1057
1. The Parties
The Complainant is AREVA of Paris, France, represented by Dreyfus & associés, France.
The Respondents are N/A, Alex Makarov of Saint-Petersburg, Russian Federation (First Respondent) / Domain Project LLC of Saint-Petersburg, Russian Federation (Second Respondent).
2. The Domain Names and Registrar
The disputed domain names <arevaathletisme.com> and <athletismeareva.com> are registered with Instantnames LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2012. On May 18, 2012, the Center transmitted by email to Instantnames LLC a request for registrar verification in connection with the disputed domain names. On May 30, 2012, Instantnames LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 31, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 5, 2012.
The Center verified that the amended 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 Respondents of the Complaint, and the proceedings commenced on June 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 27, 2012. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on July 4, 2012.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on July 11, 2012. 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 active in the energy industry, in particular nuclear power and renewable energies. The Complainant has a worldwide presence, including in the Russian Federation and employs nearly 48,000 people over the world. In 2009, the Complainant’s global revenue amounted to EUR 8.5 billion.
The Complainant holds numerous trademarks across the world consisting of the word “areva”, including:
- International Trademark (n° 783282), that got registered on November 28, 2001 under classes 1, 4, 6, 7, 9, 11, 19, 35, 36, 37, 38, 39, 40, 41 and 42 of the Nice Classification.
- International Trademark (n° 839880), registered on July 16, 2004 under classes 6, 7, 9, 17, 35, 37, 38, 39, 40, 41, 42 and 45.
The IR Trademark n° 839880 is protected in the Russian Federation among others countries.
The Complainant also owns several domain name registrations, such as:
- <areva.com>, registered on February 13, 1998;
- <areva.net>, registered on September 17, 2002;
- <areva.info>, registered on October 26, 2005;
- <areva.org>, registered on November 25, 2003;
- <areva.tel>, registered on March 23, 2009;
- <areva.us>, registered on August 21, 2002.
The Complainant sponsors different sports events, in particular athletics, and has sponsored several French athletes enjoying a worldwide reputation over the years. It in particular sponsors each year the Meeting Areva, held in Paris, that belongs to the Diamond League. As part of its commitment to athletics, the Complainant also is a leading partner of the French Athletics Federation (FFA).
The Complainant in particular holds the domain name <athletenergy.com>.
On November 26, 2011, the First Respondent registered the domain names <arevaathletisme.com> and <athletismeareva.com>, which both direct users to a parking page displaying commercial links and offering these domain names for sale.
On February 2, 2012, the Complainant sent a cease and desist letter to the Second Respondent, which then appeared as the sole registrant of the domain name in the WhoIs database, requesting inter alia the cancellation of the disputed domain names and the communication of the actual registrant’s name and contact details. In spite of several reminders, the Second Respondent did not respond.
5. Parties’ Contentions
The Complainant alleges that the disputed domain names are confusingly similar to its trademarks, whose well-known character has been recognized by previous UDRP panels, since they incorporate the AREVA trademarks in their entirety. The mere addition of the descriptive term “athletisme” is insufficient to exclude such a likelihood of confusion, but rather increases such a risk by making users believe that there would exist a connection between these domain names and the Complainant, which heavily sponsors athletic events.
The Complainant further argues that the Respondents have no rights or legitimate interests in the disputed domain names. They are not affiliated with the Complainant and have never been authorized to register the disputed domain names. The Respondents are not known under the name “Areva” either. Considering the fame of the AREVA trademarks, the Complainant considers that the Respondents cannot make a bona fide offering of goods or services under the disputed domain names.
Finally, the Complainant asserts that, considering the well-known character of its trademarks, one cannot imagine that the Respondents would have been unaware of the AREVA trademarks, registered in the Russian Federation where the Complainant carries out activities, all the more so as a Russian team competes each year at the Meeting Areva in Paris. As a result, the registration would have occurred in bad faith. The disputed domain names are used to divert Internet users and direct them to a parking page providing click through revenues, thus taking undue advantage of the Complainant’s trademarks to generate profits. The well-known character of the Complainant’s trademarks would exclude per se any potential good faith use of the disputed domain names. The use of a privacy shield and the link specifying that the disputed domain names are for sale, would confirm such bad faith.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain names registered by the Respondents are identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(ii) The Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant proves to be the holder of numerous verbal trademarks throughout the world consisting of the word “Areva”, including in the Russian Federation where the Respondents are located. As already ruled by several panels (AREVA v. St. James Robyn Limoges, WIPO Case No. D2010-1017; AREVA v. N/A, WIPO Case No. D2008-0537; AREVA v. Domains by Proxy, Inc./Sheng Xian, WIPO Case No. D2011-0061), there is no doubt in the Panel’s opinion that the AREVA trademarks enjoy a wide reputation and can be considered well-known trademarks.
Panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629).
This is all the more true when the inserted trademark, a well-known mark, consists of the dominant part of the disputed domain name (see, e.g. AREVA v. St. James Robyn Limoges, WIPO Case No. D2010-1017; AREVA v. N/A, Supra; AREVA v. Domains by Proxy, Inc./Sheng Xian, WIPO Case No. D2011-0061), and that the added elements are merely descriptive.
Such happens to be the case here. The addition of a descriptive term such as “athletism” does not exclude to this Panel the likelihood of confusion (see, among others: Playboy Entreprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768; Inter-IKEA Systems B.V. v. Evezon Co. Ltd, WIPO Case No. D2000-0437; Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363). To the contrary, considering the sponsoring activities carried out by the Complainant in the field of athletism and the yearly Meeting AREVA that belongs to the Diamond League, it rather strengthens the likelihood of confusion by making Internet users mistakenly believe that the disputed domain names would belong or at least be affiliated with the Complainant.
As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.
B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondents have no rights or legitimate interests in the disputed domain names.
As the panel stated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, demonstrating that the respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task”. Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent UDRP panels developed a consensal view that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent’s burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
In the present case the Complainant is the owner of numerous AREVA trademarks. The Complainant has no apparent business or other relationships with the Respondents.
The Complainant thus has made a prima facie case showing that the Respondents have no rights or legitimate interests in the disputed domain names.
On their side, the Respondents have not answered the Complaint.
Considering the absence of a Response and the fact that the Respondents are neither commonly known by the disputed domain names, nor have made a legitimate noncommercial or fair use of the disputed domain names, the Panel finds that the Respondents have failed to demonstrate any rights or legitimate interests in the disputed domain names.
Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.
C. Registered and Used in Bad Faith
For a complaint to succeed under the Policy, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
Bad faith typically requires the respondent be aware of a complainant’s trademarks. In the present case, the Complainant is the owner of several AREVA trademarks, including in the Russian Federation where the Complainant carries out its activities and where the Respondents are located. These trademarks enjoy a worldwide reputation and amount to well-known trademarks as pointed out above.
As rightfully argued by the Complainant, considering the worldwide reputation of the AREVA trademarks, the Panel finds it hard to believe that the Respondents would have chosen and registered the disputed domain names <arevaathletisme.com> and <athletismeareva.com> in good faith, without having been aware of the AREVA trademarks. The Respondents, having neglected to participate in these proceedings, did not bring any evidence to support such a choice; such evidence does not result from the evidence either, and the Respondents have to bear the consequences of their default on that regard.
There is no doubt in the Panel’s opinion that the Respondents were very well aware of the Complainant’s trademarks, and that the disputed domain names have been registered, and are being used to attract Internet users to the Respondents’ website for commercial gain, by creating a likelihood of confusion and leading Internet users to believe that the Respondents’ websites are linked to the Complainant.
While the use of a privacy shield cannot be considered in itself as a use in bad faith, once connected with additional elements, it clearly points towards a registration and use in bad faith (Jay Leno v. St Kitts Registry, Domain Names Administration, WIPO Case No. D2009-0571). Such particularly is the case when, as in the present case, the disputed domain names are linked to parking websites generating click-through revenues, and that the concerned trademarks amount to well-known Marks. As considered by prior UDRP panels, it is indeed hard to understand how a respondent, well aware of the Complainant’s trademarks at the time of the registration, could be using such trademarks in good faith considering their notoriety L’Oréal v. Lewis Cheng, WIPO Case No. D2008-0437). The absence of any response to the cease and desist letter sent by the Complainant on February 12, 2012 and its several reminders confirm to the Panel such an inference (Fifth Third Bancorp. v. Secure Whois Information Service, WIPO Case No. D2006-0696).
Consequently, the Panel is of the opinion that the disputed domain names <arevaathletisme.com> and <athletismeareva.com> have been registered and are being used in bad faith under the paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <arevaathletisme.com> and <athletismeareva.com> be cancelled.
Dated: July 12, 2012