WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Orano SA v. Name Redacted

Case No. D2019-0954

1. The Parties

The Complainant is Orano SA, France, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Name Redacted¹ , France.

2. The Domain Name and Registrar

The disputed domain name <oranocycle.net> is registered with Cronon AG Berlin, Niederlassung Regensburg (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2019. On April 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 3, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 6, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center has also indicated to the Parties that the language of the Registration Agreement was French, and invited the Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of proceeding, a Complaint translated into French, or a request for English to be the language of proceeding.

The Complainant filed a request for English to be the language of proceeding and an amended Complaint on May 13, 2019.

The Center verified that the Complaint together with 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 4, 2019. On June 3, 2019, the Center received an email from an employee of the Complainant. The Respondent did not submit any response.

The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on June 12, 2019. 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 ORANO SA, which is the new name of AREVA, a multinational nuclear fuel cycle company headquartered in France which offers nuclear fuel cycle products and services and whose roots go back to 1976.

The Complainant has 16,000 employees worldwide, operates 17 industrial sites in France and reporter a revenue of EUR 3.6 billion in 2018.

The Complainant is the owner of trademark registrations across various jurisdictions, including:

- The European Union word trademark ORANO No. 017075581 registered on December 21, 2017;
- The International word trademark ORANO No. 1399209 registered on December 4, 2017;
- The European Union figurative trademark ORANO No. 017600181 registered on April 26, 2018.

The Complainant also owns domain names, including <orano-cycle.fr>, which was registered on February 26, 2018 and <orano.group>, which was registered on December 14, 2017 and has been used continuously to promote the Complainant and their products and services.

The disputed domain name <oranocycle.net> was registered by the Respondent on January 7, 2019 and resolves to the page of a German hosting service provider indicating “This website is currently not available. Please try again later. Thank you.”

5. Parties’ Contentions

A. Complainant

In accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complainant relies are set out below.

First of all, the Complainant asserts that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, given that it predominantly consists of the Complainant’s ORANO trademark and that the addition of the term “cycle” increases this similarity, since it is closely linked and associated with the Complainant’s brand and trademark and since Orano Cycle actually is the Complainant’s main subsidiary.
Secondly, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since the Respondent is not commonly known by the disputed domain name, nor sponsored, licensed, authorized or permitted by the Complainant to register a domain name incorporating the Complainant’s trademark, and since the Respondent has failed to make use and has not demonstrated any attempt to make legitimate use of the disputed domain name.

Thirdly, the Complainant contends that the disputed domain name was registered and is being used in bad faith, since the Complainant and its ORANO trademark are known internationally and were used well before the registration of the disputed domain name.

The Complainant underlines that by registering a domain name that incorporates the Complainant’s ORANO trademark and thus creating a domain name that is confusingly similar to the Complainant’s trademark and domain names, and identical to the Complainant’s main subsidiary’s name, the Respondent has demonstrated a knowledge and familiarity with the Complainant’s brand and business.

The Complainant claims its fame and the fact the performing searches across a number of Internet search engines for “orano cycle” returns multiple links referencing the Complainant and its business.

The Complainant adds that the disputed domain name has been resolving to an inactive site and has not been used since its registration, provided that passively holding a domain name can constitute a factor in finding bad faith registration and use, and that the disputed domain name thus can only be taken as intending to cause confusion among Internet users as to the source of the disputed domain name.

Finally, the Complainant finds that it is more likely than not that the Respondent knew of and targeted the Complainant’s trademark since the Respondent used a name identical to one of the Complainant’s employee to register the disputed domain name, thus attempting to conceal his/her true identity, which is another indication of bad faith.

On the basis of the above, the Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

However, an employee of the Complainant, whose information was used to register the disputed domain name, wrote to the Center on June 3, 2019, stating that he had been hacked at the end of 2018, which had notably resulted in bank withdrawals from the German hosting service provider to whose website’s page the disputed domain name resolves. He also states that he has since filed a complaint for identity theft.

The Complainant confirmed by letter to the Center dated June 4, 2019 that he trusted in the good faith of his employee and requested that the employee’s name not be indicated in this decision in order to protect him.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

First of all, the Panel finds that the Complainant has provided evidence that it has rights on the ORANO trademark.

Then, the Panel notices that the disputed domain name <oranocycle.net> is composed of (i) the distinctive element “orano”, which is the exact reproduction of the ORANO trademark, (ii) the term “cycle”, and (iii) the generic Top-Level Domain (“gTLD”) “.net”.

As pointed out by the Complainant, the applicable gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark.

The Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the domain name. This test typically involves a side‑by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the UDRP (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”)).

Furthermore, the Panel concurs with the opinion of several prior UDRP panels which have held that the fact that a domain name wholly incorporates a complainant’s registered trademark may be sufficient to establish confusing similarity for purposes of the Policy (see, e.g., BNP Paribas v. Ronan Laster., WIPO Case No. D2017-2761; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059;

Hoffmann-La Roche Inc., Roche Products Limited v. Vladimir Ulyanov, WIPO Case No. D2011-1474; Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150).

Regarding the disputed domain name <oranocyle.net>, the Panel finds that the addition of the term “cycle” to the ORANO trademark is not sufficient to exclude confusing similarity. Moreover, the addition of this term to the ORANO trademark actually reinforces the confusion between the Complainant’s trademark and the disputed domain name, since the term “cycle” is strongly linked to the Complainant’s activity, to such an extent that one of the Complainant’s subsidiaries is called Orano Cycle.

Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain name is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.

These circumstances are:

(i) before any notice of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is 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.

According to prior UDRP panel decisions, it is sufficient that the Complainant shows prima facie that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the Respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Indeed, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out prima facie that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0).

According to the Panel, the Complainant has shown prima facie that the Respondent has not in any manner been authorized by the Complainant to use its ORANO trademark, and that the Respondent is not currently and has never been known under the name ORANO.

Moreover, the disputed domain name used to resolve to a website’s page without any content, what cannot be considered as a bona fide offering of goods or services.

For all these reasons, the Complainant has established prima facie that the Respondent lacks rights or legitimate interests in the disputed domain name, therefore the burden of production has been shifted to the Respondent. However, no response has been provided to the Complainant’s contentions relating to this point.

Therefore, the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the disputed domain name has been registered and are being used in bad faith.

Thus, paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s 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 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 the respondent’s 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 the respondent 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 online 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 the respondent’s website or location.

First of all, the Panel finds that the Complainant’s trademarks were registered before the Respondent registered the disputed domain name.

Then, according to the Panel, the Complainant has shown that the Respondent knew, or should have known, that its registration would be identical or confusingly similar to the Complainant’s trademark, given the reputation of the Complainant.

In addition, given the information provided by the Complainant’s employee regarding the identity theft of which he claims to have been a victim and the credit given to him by the Complainant in this regard, and without prejudice to the possible outcome of his criminal complaint, the Panel considers that it is indeed more likely than not that the Respondent provided false contact details to register the disputed domain name.

Furthermore, the Panel finds that the disputed domain name is not currently used since it resolves to an inactive page, but wishes to remind that such “passive holding” does not prevent a finding of bad faith, since according to prior UDRP panel decisions the panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith (See section 3.3 of the WIPO Overview 3.0 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Indeed, the Panel considers the passive holding of the disputed domain name proves that the Respondent acts in bad faith. The particular circumstances of this case which lead to this conclusion are:

- the Complainant’s trademark has a strong reputation and is well-known;

- the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name;

- the Respondent has no rights or legitimate interests in respect of the disputed domain name;

- no answer has been provided to the Complainant’s contentions;

- the Respondent seems to have used false contact details corresponding to one of the Complainant’s employees to register the disputed domain name;

- taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated use of the disputed domain name by the Respondent that would not be illegitimate, such as by being an infringement of the Complainant’s rights under trademark law.

Therefore, in view of all the circumstances of this case, the Panel finds that the disputed domain name has been registered and is being used in bad faith according to the Policy, paragraph 4(a)(iii) and 4(b).

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <oranocycle.net> be transferred to the Complainant.

Christiane Féral-Schuhl
Sole Panelist
Date: July 3, 2019

¹ The Respondent appears to have used the name and contact details of a employee of the Complainant when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See ASOS plc. v. Name Redacted, WIPO Case No. D2017-1520; Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.