WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Areva v. Whois Privacy Protection Service, Inc. / Name Redacted
Case No. D2013-1778
1. The Parties
The Complainant is Areva of Courbevoie, France, represented by Dreyfus & associés, France.
The Respondent is Whois Privacy Protection Service, Inc. of Bellevue, Washington, United States of America and Name Redacted.
2. The Domain Name and Registrar
The disputed domain name <arevagroup.net> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2013. On October 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 16, 2013, 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 October 18, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant sent an e-mail on October 22, 2013, explaining to the Center that in its view the underlying registrant and contact information constituted identity theft.
The Center verified that the Complaint, together with the comment of the Complainant, 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 November 1, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 25, 2013.
The Center appointed Martine Dehaut as the sole panelist in this matter on December 2, 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 language of the registration agreement is English, thus the language of the proceeding shall be English.
4. Factual Background
The Complainant, the French company Areva, 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.
The Complainant has a worldwide presence and industrial presence on every continent with its head-office based in France which represented 38% of its revenue and 63% of its workforce in 2009. The Complainant’s activities are carried out at 30 industrial sites throughout France, including 18 stationary nuclear facilities and one classified defense stationary nuclear facility. In 2012, the Complainant’s revenue was over 9 billion EUR.
The word AREVA is registered as a trademark worldwide. It is sufficient to underline, here, the existence of a community trademark no. 3871084, registered on June 04, 2004.
The Complainant also operates through the Internet, and is the owner of numerous domain names, including <areva.com> and <arevagroup.com>.
L. Oursel is the President and CEO, and Chairman of the Executive Board of the Complainant since June 30, 2011.
The disputed domain name <arevagroup.net> was registered on February 26, 2013.
The disputed domain name was registered through a privacy service, which is identified as the Respondent in this proceeding. Upon request of the Center, the Registrar, eNom, disclosed the following data concerning the registrant and its address: L. Oursel of Paris, with an email address being […]@gmail.com.
The alleged data concerning the disputed domain name holder combines the name of the CEO of the Complainant, L. Oursel, and the former address of the Complainant in Paris.
5. Parties’ Contentions
The Complainant claims the disputed domain name to be transferred according to the Rules and the Policy.
The main arguments put forward by the Complainant are reproduced hereinafter:
With respect, first, to the similarity of the earlier trademarks and the disputed domain name:
The disputed domain name “comprises (a) an exact reproduction of the Complainant’s trademarks AREVA, (b) the English word “group”, and (c) the top level suffix “.net””. The dominant and distinctive part of this domain name is the trademark AREVA. The addition of the generic term “group” is insufficient to avoid a likelihood of confusion (…). The use of the generic or dictionary term “group” appended to the Complainant’s trademark suggests a connection with Complainant’s business, the resultant domain name may heighten the risk of consumer confusion”.
With respect, second, to the lack of rights or legitimate interest of the Respondent in the disputed domain name:
“Respondent is not affiliated with Complainant in any way, nor has Respondent been authorized by Complainant to use and register Complainant’s AREVA trademark, or to seek registration of any domain name incorporating said trademark. (…) It should be noted that the circumstances of the case reveal an identity theft. Indeed, despite the fact that the domain name was registered using the name, L. Oursel, the CEO of the Complainant is not the actual registrant of the domain name (…). In similar circumstances, where the Respondent has used the name of a person unrelated to the domain name the Panel hold he had no rights or legitimate interest in the disputed domain name”.
With respect, third, to the registration and use of the disputed domain name in bad faith:
“It is implausible that Respondent was unaware of Complainant’s activities and trademark when the disputed domain name was registered. Firstly, Complainant is well-known throughout the world, including and especially in France where is located its head-office and where the actual registrant could be located. (…) The choice of the disputed domain name including Complainant’s trademark and the generic term “group” corresponding to Complainant’s structure suggests that Respondent was perfectly aware of Complainant and its AREVA trademark. (…) Bad faith has already been found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith.(…) More important, the disputed domain name is the result of an identity theft”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Preliminary Matter – Redaction of the Respondent’s Name
The Complainant has requested that the name of its CEO would not be used for the parties’ names or title of the decision. The Panel has decided that no purpose is to be served by including the name of the above-referenced individual co-Respondent in this decision for the parties’ names or title of the decision, and has therefore redacted his name from the caption of this decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name that includes the name of the referenced individual co-Respondent, and has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published based on exceptional circumstances.
Consideration of the Merits
According to the Paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain either the cancellation or the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interest 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
The Panel notes that the Complainant is the owner, among others, of the registered International Trademark and the registered Community Trademark AREVA.
Furthermore, the Complainant owns and uses domain names for its activity, such as <areva.net> and <arevagroup.com>. The trademarks were registered before the creation of the disputed domain name.
The confusing similarity between the disputed domain name <arevagroup.net> and the trademark AREVA is obvious. The disputed domain name reproduces the trademark in its entirety, without any alteration, followed by the generic word “group”.
Previous UDRP decisions have held that the mere addition of the generic word “group” attached to a registered trademark is insufficient to give distinctiveness to the disputed domain name and to remove any likelihood of confusion. See in particular SGS Société Générale de Surveillance S.A. v. Inspectorate, WIPO Case No. D2000-0025.
In this specific case, the top level domain “.net” has no impact on the assessment of confusing similarity.
Therefore, the disputed domain name has to be regarded as confusingly similar because of the risk that Internet users may actually believe there to be a real connection between the disputed domain name and the Complainant and its goods and services.
B. Rights or Legitimate Interests
Following the second condition of paragraph 4(a) of the Policy, the Complainant has to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Following standard practice, the Complainant has asserted not to have granted the Respondent any authorization to use the trademark AREVA whatsoever nor to have granted any license giving the right to the Respondent to use the disputed domain name. As mentioned in the Complaint, the Respondent is in no way affiliated or associated with the Complainant.
Absent any response to the Complaint, and any active use of the disputed domain name, the Panel concludes that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
This presumption is reinforced by a specific circumstances of the case, namely that the Respondent has registered the disputed domain name under a false identity and providing a false address.
Accordingly, the Panel finds that the second element is established.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Respondent has registered and used the disputed domain name in bad faith. Paragraph 4(b) of the Policy gives examples of circumstances which constitute evidence of both bad faith registration and bad faith use.
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.
In the present matter, various elements demonstrate that the disputed domain name <arevagroup.net> was registered, and is being used, in bad faith.
First, AREVA is a well-known trademark, in France and worldwide. The Complainant is a leading group in the field of nuclear energy, in particular. The very fact of associating, in a domain name, this famous brand and the word “group”, evidences the fact that the Respondent had the Complainant in mind when selecting this particular domain name. The Panel notes that this is the 26th UDRP proceeding involving the trademark AREVA. This shows that that well-known trademark is particularly sensitive to cybersquatting. Previous decisions involving AREVA, and upholding its reputation, include Areva v. N/A, WIPO Case No. D2008-0537; Areva v. Razine Alain, WIPO Case No. D2011-1188 ; Areva v. Wang Songxu, WIPO Case No. D2012-2422.
Second, the disputed domain name was registered with a false identity. The Respondent selected as a false identity, the name of the CEO of the Complainant, L. Oursel, and the former address of the Complainant in Paris. This also demonstrates knowledge – one could even mention “deep knowledge” – of the Complainant. Not every cybersquatter takes the time to look for the name and address of the CEOs of the owners of the trademark rights that they usurpate in a domain name. This implies a particular interest from the Respondent in the Complainant and its activities.
Third, the use of a privacy service with false contact information, under the circumstances mentioned above, is also an indication of bad faith registration.
Fourth, and as far as the passive holding of the disputed domain name is concerned, this Panel shares the opinion expressed by the learned panel in Areva v. N/A, WIPO Case No. D2008-0537, concerning the domain name <arevapower.com>: “Having regard to the fact that the domain name takes the whole of Complainant’s mark and couples it with a word describing Complainant’s goods and services, it is difficult, without a compelling showing to the contrary, to conclude that Respondent’s use of the domain name can be anything other than for the purpose of either selling the domain name to Complainant, or directing traffic to a website at the domain name. The fact that this purpose has not yet been realized does not of itself negate a finding of bad faith use.” In the case at hand, this finding is consistent with the doctrine developed in the Telstra case, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Because of the association of the well-known trademark AREVA with a word that makes reference to its structure (AREVA Group), and in view of the identity theft concerning the Complainant’s CEO, this Panel cannot reasonably foresee any legitimate, noncommercial and non abusive use of the disputed domain name.
The Complainant has established its case under all the elements of the Policy, and accordingly the Complaint must succeed.
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 <arevagroup.net> be transferred to the Complainant.
For purposes of properly executing this order, the Panel also directs the Registrar’s attention to Annex 1 hereto that identifies the individual listed as registrant of the disputed domain name in the formal record of registration, and orders that the disputed domain name <arevagroup.net> be transferred from that individual to the Complainant.
The Panel directs the Center that Annex 1 shall not be published along with this decision.
Date: December 16, 2013