WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Veolia Environnement v. Whois privacy services, provided by Domain Protect LLC/ “Veolia Environnement”
Case No. D2008-0478
1. The Parties
The Complainant is Veolia Environnement, Paris, of France, represented by Cabinet Gide Loyrette Nouel, France.
The Respondent is Whois privacy services, provided by Domain Protect LLC, Saint-Petersbourg, Russian Federation / “Veolia Environnement” Paris, of France.
2. The Domain Name and Registrar
The disputed domain name <veolia-industrie.com> is registered with NICREG LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2008. On March 31, 2008, the Center transmitted by email to NICREG LLC a request for registrar verification in connection with the domain name at issue. On April 2, 2008, the Registrar, NICREG LLC transmitted by email to the Center its verification response indicating that the domain name was available for registration. On April 3, 2008, the Complainant amended its complaint involving the disputed domain name registered by the Respondent. On April 4, 2008, the Center again transmitted by e-mail to NICREG LLC a request for registrar verification in connection with the domain in issue. On April 9, 2008, the Registrar, NICREG LLC transmitted by e-mail to the Center its verification response informing the Center that the Complainant, Veolia Environnement, was the domain name registrant. On April 15, 2008, the Complainant confirmed that it did not have control over the disputed domain name. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2008.
The Center appointed Adam Samuel as the sole panelist in this matter on May 19, 2008. 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 owns trademarks for the name VEOLIA, notably in France. There, it has owned mark number 03 3 217 557 since 2003 and 05 3 383 708 since 2006. The domain name in dispute was registered on May 1, 2007.
5. Parties’ Contentions
The Complainant’s contentions appear below. It does not follow that the Panel agrees with them.
The Complainant is a world leader in the provision of environmental services operating on all five continents. It holds a VEOLIA trademark which it has used since April 8, 2003 to promote its business. It has registered various “veolia-industrie” domain names, notably <veolia-industrie.us>, <veolia-industrie-it>. The word “veolia” is a highly distinctive fanciful neologism and is the main element of the domain name in dispute. Consequently, the disputed domain name is confusingly similar to the Complainant’s VEOLIA mark.
The Respondent does not own any right in any trademark, service mark or any other sign such as corporate names, trade names or shop sign corresponding to the words “veolia” or “veolia industrie”. The Complainant has not licensed or permitted in any way the Respondent’s use of the VEOLIA trademark. The Respondent has not used, is not using and has not shown any intention of using the domain name or a name corresponding to it in connection with a good faith offering of goods and services.
The domain name leads to a search website with sponsored links for other websites. Given the notoriety of the VEOLIA trademark, it seems most unlikely that this domain name was selected randomly. The Respondent probably registered the domain name knowingly in breach of the Complainant’s trademark rights.
Currently, the domain name leads to a page where it is offered for sale. This is a clear indication of the Respondent’s bad faith. The Respondent also failed to respond to the Complainant’s cease and desist e-mail dated March 7, 2008.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which it 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 owns the trademark VEOLIA. The domain name consists of that and the generic French word “industrie” connected by a hyphen along with the standard “.com” suffix.
Where a generic word has been added to a trademark name that is a made-up word to create a domain name, the resulting domain name will almost invariably be confusingly similar to the mark. The mark by virtue of its distinctiveness constitutes the main element of the domain name. That is the case here. For these reasons, the Panel concludes that domain name is confusingly similar to a trademark or service mark in which Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is apparently not called “Veolia” or anything similar and does not appear to trade under that or any related name. There is no evidence that the Complainant or any member of the Complainant’s group has authorized the Respondent to use its trademark. The Respondent has not here asserted any rights or legitimate interests in that name.
For these reasons, on the basis of the available evidence, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
VEOLIA is a made up name. It has no independent meaning or significance except in connection with the Complainant’s business. Registering a domain name containing such a distinctive name must have been done by the Respondent knowing of the Complainant’s trademark. There would appear to be no other reason to select this trademark. The Respondent has seen these allegations and not chosen to respond to them. In the circumstances, the Panel concludes that the domain name was registered in bad faith.
Currently, the website to which the domain name resolves is not in use. An annex to the Complaint shows that the website has been used to offer the domain name for sale. The website indicated that offers of less than US$ 400 would not be entertained.
The passive holding of a domain name while knowing that someone else’s trademark rights are being infringed as a result is evidence of bad faith. Here, the Respondent must have known that it was unlawfully using the Complainant’s trademark to attract users to its website. Yet, it has continued to retain the registration of the domain name.
Under paragraph 4(a)(i) of the Policy evidence of use in bad faith can be found in circumstances indicating that the Respondent registered the domain name for the purpose of selling the registration to the Complainant or one of its competitors for valuable consideration in excess of the Respondent’s out-of-pocket expenses directly related to the domain name. Consequently, the fact that the domain name was used for this purpose suggests bad faith. The minimum level of offers indicates that the Respondent wished to sell the domain name for an amount in excess of its out-of-pocket expenses.
For all these reasons, the Panel concludes that the disputed domain name was registered and is being used 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, <veolia-industrie.com> be transferred to the Complainant.
Dated: June 2, 2008