WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arkema France v. Chemistry
Case No. D2013-0658
1. The Parties
Complainant is Arkema France of Colombes, France, represented by Fross Zelnick Lehrman & Zissu, P.C., United States of America.
Respondent is Chemistry of Johannesburg, South Africa.
2. The Domain Name and Registrar
The disputed domain name <arkemagroupinc.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2013. On April 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 11, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact.
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 Respondent of the Complaint, and the proceedings commenced on April 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 8, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 10, 2013.
The Center appointed Mary Padbury as the sole panelist in this matter on May 24, 2013. 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.
The due date for decision was extended to July 14, 2013.
4. Factual Background
Complainant is a French company formed in 2004 which has offices in 40 countries, employing over 13,800 employees. Complainant has 80 industrial facilities in Europe, North America and Asia and has sales subsidiaries in every region of the world. Complainant is organised into three business segments: High Performance Materials, Industrial Specialties and Coating Solutions. Complainant makes and sells a wide variety of products including fluorochemicals, technical polymers, thiochemicals, functional additives, industrial coatings, acrylics, hydrogen peroxide, organise peroxides and molecular sieves.
In connection with its businesses, Complainant has obtained registrations for its ARKEMA trademark in United States Registration Nos. 3,082,135 and 3,082,057 from April 18, 2006. Complainant also has registrations in Canada, Mexico, Argentina, Brazil, Colombia, Venezuela, France, India, Republic of Korea, New Zealand, Norway and Sweden and some Community Trademark registrations with the earliest dating from 2004. Complainant has registered <arkema.com> as a domain name.
The disputed domain name was registered on February 4, 2013.
5. Parties’ Contentions
Complainant’s basis for its Complaint is its use, registration and ownership of the ARKEMA trademark, as well as numerous domain names incorporating the ARKEMA trademark.
Complainant contends that, through its significant expenditures of time, money and effort, Complainant has developed substantial goodwill in the ARKEMA trademark and its ARKEMA trademark has become famous and well-known throughout the industry.
Complainant contends that the disputed domain name is confusingly similar to the trademark in which Complainant has rights and that the generic Top Level Domain (gTLD) “.com” cannot be taken into consideration in judging confusing similarity and that the incorporation of its trademark in its entirety is sufficient. Complainant also asserts that Respondent’s registration of the disputed domain name attempts to take advantage of the fact that Complainant uses the term “Arkema Group” to refer to the collection of companies that make up the organization around the world. Moreover, Complainant contends that the use of “inc”, a common abbreviation for “Incorporated”, is intended to further mislead Internet users to believe that the disputed domain name is associated with Complainant.
Complainant contends that Respondent registered the disputed domain name to perpetrate a fraud in that someone falsely claiming to be Mr. Roche, Complainant’s Chief Executive Officer, used the email address “[ ]@arkemagroupinc.com” in an attempt, on multiple occasions, to place large orders for computers, hard drives and ink cartridges in orders totaling USD 140,000 using bank account information and credit references from Arkema Inc. and its facility in King of Prussia, Pennsylvania. Though Mr. Roche is actually the name of Complainant’s Chief Executive Officer, the real Mr. Roche has no knowledge of Respondent’s activities and did not send the emails attached to the Complaint.
Complainant contends that the website associated with <arkemagroupinc.com> is merely a place-holder website and that the disputed domain name was only registered by Respondent for use as an email server to send fraudulent emails such as the one from “[ ]@arkemagroupinc.com” referred to above.
Complainant sent a cease and desist letter to the registrant of the disputed domain name on March 5, 2013 to which there was no response.
Given that Complainant’s adoption and extensive use of the ARKEMA trademark predates Respondent’s registration of the disputed domain name, Complainant contends that the burden is on Respondent to establish its rights or legitimate interests in the disputed domain name and that Respondent cannot demonstrate or establish any such right or legitimate interest. Complainant contends that Respondent has no connection or affiliation with Complainant and has not received any license or consent, express or implied, to use Complainant’s trademark in domain names or in any other manner.
Complainant contends that Respondent’s only use of the disputed domain name is in connection with an email server used to place fraudulent orders for computer parts and printer supplies using the credit history and references of Complainant, as described above, in order to confuse various vendors so that they would sell supplies worth almost USD 140,000 to Respondent but bill Complainant. Complainant contends that such use demonstrates neither a bona fide offering of goods or services nor a legitimate interest.
Complainant asserts it is likely that an unsuspecting retailer would be willing to sell such equipment to Respondent based on Complainant’s credit information and not realize that they were not communicating with an official representative of Complainant.
Moreover, Complainant contends that Respondent’s non-use of the disputed domain name for any legitimate commercial purpose, is itself bad faith use in view of the renown of the ARKEMA mark and absence of likely legitimate uses by an unauthorized party like Respondent.
Complainant contends that the ARKEMA marks are well known within the industrial specialties, high performance materials, and coating solutions industries and enjoy widespread international recognition. Complainant further contends that, that fact, combined with Respondent’s deliberate effort to impersonate an employee of Complainant, make it inconceivable that Respondent was unaware of the ARKEMA mark when it registered the disputed domain name. Complainant states that the mere fact that Respondent registered the confusingly similar disputed domain name without authorization is, in and of itself, evidence of its bad faith registration.
Based on the foregoing, Complainant contends that it has established that (i) the disputed domain name is identical and/or confusingly similar to Complainant’s well-known ARKEMA marks; (ii) Respondent has no right or legitimate interest in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The panel must decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, Rules and Supplemental Rules. Complainant has the onus of proving three elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <arkemagroupinc.com> is confusingly similar to the registered trademark ARKEMA owned by Complainant. Complainant’s trademark has been adopted in its entirety and the additions of the gTLD “.com”, the description “group” and the common abbreviation “inc” do not change this conclusion.
B. Rights or Legitimate Interests
The Panel must decide whether Respondent has any rights or legitimate interests to the disputed domain name. In doing so, regard may be had to the circumstances which might demonstrate as follows:
(i) before any notice to Respondent of the dispute, Respondent’s 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; or
(ii) Respondent as an individual, business or other organisation, has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel accepts the contention of Complainant that Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence of use of the disputed domain name in connection with a bona fide offering of goods or services. There is no evidence that Respondent has been commonly known by the disputed domain name. There is no evidence that Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain, to misleading divert consumers or to tarnish the trademark or service mark at issue. Moreover, what evidence there is, suggests fraudulent use of the disputed domain name.
The Panel finds that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
The Panel is satisfied the disputed domain name was registered and is being used in bad faith. The following non-exclusive list of circumstances, if found by the Panel to be present, shall be evidence of registration in bad faith:
(i) circumstances indicating that Respondent has registered the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding disputed domain name provided Respondent has engaged in the pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, 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 Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or location or of a product or service of Respondent’s website or location.
The Panel is satisfied that at least paragraph 4(b)(iv) of the Policy is made out in that it is likely that Respondent has registered the disputed domain name to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant’s mark ARKEMA as to the source, sponsorship, affiliation, or endorsements of Respondent’s website or location or of any product or service of Respondent’s website or location.
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 <arkemagroupinc.com> be transferred to Complainant.
Date: July 29, 2013