WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AREVA v. WhoIs Privacy Services Pty Ltd / Mike Hunt / Andrew Gomez
Case No. D2014-2051
1. The Parties
Complainant is Areva of Courbevoie, France, represented by Dreyfus & Associés, France.
Respondents are WhoIs Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia / Mike Hunt of London, United Kingdom of Great Britain and Northern Ireland / Andrew Gomez.
2. The Domain Name and Registrar
The disputed domain name <arevamines.com> (the "Domain Name") is registered with Fabulous.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 21, 2014. On November 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 25, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant identity and contact information for the Domain Name, which differed from the named Respondents and contact information provided in the Complaint.
The Center sent an email communication to Complainant on December 2, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant sent communications to the Center on December 5, 2014 and December 9, 2014, explaining why it declined to file an amendment to the Complaint, instead indicating that the registrant and contact information for the Domain Name (as shown in the WhoIs record) had been changed on November 24, 2014, after the Complaint had been filed, and that the new registrant and related contact information for the Domain Name was false and deceptive.
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 Respondents of the Complaint, and the proceedings commenced on December 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 29, 2014. Respondents did not submit any response. Accordingly, the Center notified Respondents' default on December 30, 2015.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on January 7, 2015. 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
Complainant is a company operating in the nuclear power industry, covering the entire nuclear cycle from uranium mining to reactor design to used fuel recycling. In 2013, Complainant's sales revenue was EUR 9.240 billion and it had 45,340 employees. Complainant is one of the largest uranium mining producers in the world. Mining is a core business with mining operations accounting 19% of its revenues in 2013. Complainant has a worldwide industrial presence on every continent, including Australia where it has two main subsidiaries, namely, Areva Holdings Australia Pty Ltd and Areva Solar Inc.
AREVA is the corporate and trade name of Complainant. Complainant owns numerous AREVA trademarks across the world, including:
- AREVA, international trademark no. 783282, designating Belarus, Switzerland, Japan, Serbia, Turkey, Ukraine and Morocco, registered on November 28, 2001 and renewed on December 22, 2011 covering goods and services in classes 1, 4, 6, 7, 9, 11, 19, 35, 36, 37, 38, 39, 40, 41 and 42;
- AREVA, international trademark no. 839880, designating China, registered on July 16, 2004 covering goods in classes 6, 7, 9, 17, 35, 37, 38, 39, 40, 41, 42 and 45;
- AREVA, Australian trademark no. 1393229, registered on November 9, 2010 covering goods in classes 1, 7, 9, 11, 19, 35, 36, 37, 40 and 42;
- AREVA, United States trademark no. 3061460, registered on February 28, 2006 covering goods in classes 1, 4, 6, 7, 9, 11, 19, 35, 36, 37, 38, 39, 40, 41 and 42.
Complainant owns the domain name <areva.com>, registered as of April 13, 1998 and has a website at "www.areva.com". Complainant also owns the following domain names: <areva.net>, registered as of September 17, 2002; <areva.info>, registered as of October 26, 2005; <areva.org>, registered as of November 25, 2003; and <areva.us>, registered of August 21, 2002.
The Domain Name was registered on October 28, 2013.
5. Parties' Contentions
(i) Identical or confusingly similar
Complainant contends that its trademark, AREVA, enjoys a worldwide reputation. Complainant has used the mark in connection with a wide variety of products and services relating to production and distribution of energy around the world. Complainant states the public has learned to associate the goods and services offered under this mark as being those of Complainant. AREVA is a distinctive term to designate mining activities, which increases the likelihood of confusion between the Domain Name and Complainant's trademark. As a result, Complainant contends that the Domain Name is almost identical or confusingly similar with Complainant's AREVA mark, which creates a likelihood of confusion.
Complainant states that the Domain Name was registered 12 days after the release of the award of a contract to Complainant and its partner in the Philippines. Respondent Andrew Gomez is allegedly located in the Philippines. Before commencing this case, Complainant sent a cease-and-desist letter dated January 24, 2014 to Respondents asking that the Domain Name be cancelled. Complainant then noticed a change in direction of the Domain Name. The Domain Name, which previously linked to a page relating to the sale of domain names, was now linked to a page showing the cartoon picture Homer Simpson making an obscene gesture with a title "Are Vam Ines". The Domain Name is also listed for sale at USD 975.
Respondent Andrew Gomez replied to Complainant's letter, asserting Complainant did not have a trademark for "Arevamines" and making an offer to sell the Domain Name. Complainant states that it attempted to explain to Respondent Gomez that his observations were irrelevant. However, the latter persisted in attempts to sell the Domain Name, making offers at USD 1,500, USD 1,250 and finally USD 850. Respondent Gomez also allegedly threatened that he would issue legal proceedings in Manila in the Philippines if Complainant filed a UDRP Complaint.
Complainant contends that the Domain Name is identical or at least confusingly similar to Complainant's AREVA mark. The Domain Name reproduces Complainant's mark in its entirety with the addition of the term "mines". Complainant states that many UDRP panels have considered that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a registered mark. Complainant contends that its AREVA mark is well-known worldwide and is thus the dominant part of the Domain Name. Further, the Domain Name includes the generic term "mines," which is insufficient to distinguish the Domain Name from the mark. Instead, the addition of the term "mines" increases the likelihood of confusion since mining is one of Complainant's core businesses. Accordingly, by registering the Domain Name, Respondents created a likelihood of confusion with Complainant's mark, as it is likely that the Domain Name could mislead Internet users into thinking that Respondents are associated with Complainant.
(ii) Rights or legitimate interests
Complainant states that Respondents are not affiliated with Complainant nor have Respondents been authorized by Complainant to use its AREVA trademark, or to seek registration of any domain name incorporating the mark. Complainant asserts that Respondents are not commonly known by the name Areva. Respondents are Andrew Gomez and WhoIs Privacy Services Pty Ltd. In the reply to Complainant's letter, Respondent Andrew Gomez fails to explain the reasons for registering the Domain Name or why he would have a legitimate interest in it. Complainant's numerous AREVA trademark registrations pre-date registration of the Domain Name.
Complainant urges that it has an extensive worldwide reputation and that, in the absence of any license or permission from Complainant to use its widely-known mark, no actual or contemplated bona fide or legitimate use of the Domain Name can be claimed. Respondents have not demonstrated use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. Initially, the Domain Name resolved to a page offering to sell domain names. While selling domain names is not illegitimate per se, it cannot be regarded as a legitimate offer of goods and services when the only purpose of the registration is to sell the Domain Name to Complainant for valuable consideration in excess of out-of-pocket costs. Further, after receiving Complainant's cease-and-desist letter, Respondent changed the direction of the Domain Name to link to a page displaying the cartoon character Homer Simpson making an obscene gesture. Complainant asserts it is probable that Respondent Andrew Gomez has no authorization to reproduce the character Homer Simpson. This web page thus appears to constitute copyright infringement, which cannot create a legitimate interest for Respondents.
Considering the communications with Respondents, it appears that they have registered the Domain Name is for the purpose of selling it to Complainant for valuable consideration in excess of the out-of-pocket costs directly related to the Domain Name. This is reinforced by the fact that the Domain Name is still offered for sale at USD 975. In addition, Complainant contends that Respondent registered the Domain Name with a privacy shield service in order to hide his identity and prevent Complainant from contacting him or locating him with precision. Such behavior supports Complainant's position that Respondents have no rights or legitimate interests in the Domain Name.
(iii) Registered or used in bad faith
Complainant states that taking into account the worldwide reputation of its AREVA trademarks, it is hard to believe that Respondents were unaware of the existence of Complainant and its trademarks at the time of registration of the Domain Name. The notoriety of Complainant's AREVA trademark has been recognized by several UDRP panels. In light of that reputation, Respondents' reproduction of the mark in its entirety in the Domain Name proves that Respondents were aware of the existence of Complainant's mark. Bad faith has been found by UDRP panels where a domain name is so obviously connected with a well-known trademark that its use by someone with no connection to the mark suggests opportunistic bad faith. Moreover, the combination of the mark AREVA with a term "mining" describing one of Complainant's activities shows that Respondents had Complainant and its trademark in mind at the time of registration of the Domain Name. The Domain Name was registered 12 days after the press release announcing Complainant was awarded a contract for the construction of a biomass power plant in the Philippines, which is another indication of bad faith.
Complainant contends that no possible good faith use of the Domain Name is possible in view of the notoriety of Complainant's trademark. Any use of the Domain Name by Respondents will create confusion. Respondent Andrew Gomez' immediate offer to sell the Domain Name is also a sign of bad faith. He attempted to sell the Domain Name for a sum varying between USD 1500 and USD 850, which is in excess of Respondents' out-of-pocket expenses. Respondents attempted to intimidate Complainant into buying the Domain Name by threatening Complainant with legal actions in Manila, the Philippines. Such behavior should be interpreted as bad faith use of the Domain Name. The new web page connected to the Domain Name after the cease-and-desist letter may also be viewed as an action from Respondent Gomez to push Complainant to purchase the Domain Name at a sum exceeding USD 800. Complainant states that the new webpage appears to contain material infringing a third-party's copyright, which cannot constitute use in good faith. The Domain Name is listed for sale at USD 975. Complainant concludes that it appears Respondents registered the Domain Name primarily for the purpose of selling it to Complainant or a competitor for valuable consideration in excess of the out-of-pocket costs directly related to the Domain Name.
Complainant states that under paragraph 2 of the Policy, when someone registers a domain name, he represents and warrants that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. According to Complainant, this means that Respondents had a duty to verify that the registration of the Domain Name would not infringe the rights of any third party. A quick trademark search for AREVA reveals the existence of Complainant and its trademark. Moreover, a search via Google or any other Internet search engine using the keyword "Areva" or "Arevamines" shows that all of the first results relate to Complainant's products or services. Moreover, Respondents never denied having knowledge of Complainant and its trademarks.
Complainant contends Respondents registered the Domain Name through a privacy shield service to hide their identity and contact details, preventing Complainant from contacting them. Complainant states the use of a privacy shield is not in itself bad faith, but combined with other elements it may convey a finding of bad faith. Combined with the other circumstances of this case, Complainant contends that the use of the privacy service corroborates Respondents' bad faith.
Respondents did not reply to Complainant's contentions.
6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondents is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondents have no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondents have registered and are using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel must first determine whether the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights. Complainant has submitted evidence to show that it owns trademark registrations in numerous countries around the world for its AREVA mark. Moreover, several UDRP panels have previously found that Complainant's AREVA trademarks enjoy a wide reputation and can be considered as well-known trademarks. See 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.
The Domain Name incorporates the AREVA mark in its entirety and differs only by the additional word "mines", and the additional generic Top-Level Domain ("gTLD") ".com". The Panel agrees with the well-established position that the incorporation of a well-known trademark in its entirety is usually sufficient to establish that a domain name is identical or confusingly similar to a complainant's registered mark. This is especially true when the additional word added to the mark, such as "mining" in this case, is descriptive of one of Complainant's core business activities. Many previous UDRP panels have held that the addition of a generic term will normally be insufficient to distinguish a domain name from a well-known trademark. Here, the Domain Name <arevamines.com> is confusingly similar to Complainant's well-known AREVA mark, especially because the added word "mines" is descriptive one of Complainant's core activities. See Areva v. Domains by Proxy, Inc./ Sheng Xiang, WIPO Case No. D2011-0061 (<areva-fondation.com>).
Respondents have not submitted a Response and therefore do not contest any of Complainant's points under the first element of the UDRP. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which Complainant has rights.
B. Rights or Legitimate Interests
The Panel finds that Complainant has made out a prima facie case that Respondents lack rights or legitimate interests in the Domain Name. Respondents are not affiliated with nor authorized by Complainant to use its AREVA mark or to incorporate it in a domain name. There is no evidence that Respondents are commonly known by the name, Areva, or that there have been demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. Instead, the Domain Name was initially linked to a webpage selling domain names and then, following communications with Complainant, was re-directed to a webpage featuring the cartoon character, Homer Simpson, making an obscene gesture. Moreover, Complainant has provided evidence of Respondents' threats of litigation in the Philippines and offers to sell the Domain Name to Complainant at prices that exceed Respondents' direct out-of-pocket costs.
Respondents failed to submit a Response in this case or otherwise provide any information that would indicate a basis for any right or legitimate interest in the Domain Name. Accordingly, the Panel finds that Respondents have no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondents registered and are using the Domain Name in bad faith.
The Panel first finds that Respondents were aware of Complainant and its AREVA trademark, and targeted Complainant's mark, when registering the Domain Name. As noted above, the evidence submitted by Complainant supports a finding that the AREVA mark is well-known internationally. Further, the Domain Name was registered 12 days after the release of the award of a contract to Complainant and its partner in the Philippines, where Respondent Andrew Gomez is apparently located. Respondent Gomez threatened to bring court proceedings in Manila if Complainant initiated a UDRP proceeding, which confirms his location. Moreover, adding the word "mines" to the trademark AREVA is an unlikely combination for Respondents to have chosen. Respondents could have explained how they chose the Domain Name incorporating Complainant's AREVA mark, but failed to do so.
Moreover, as noted above, Respondents have used the Domain Name in bad faith, threatening litigation proceedings in an effort to extort a higher price from Complainant for purchase of the Domain Name. Finally, while the use of a privacy shield cannot be considered in itself as use in bad faith, once connected with additional elements, it clearly points toward registration and use of the Domain Name in bad faith. Here, we have a unique situation in which the registrant and contact information for the Domain Name (as shown in the WhoIs record) had been apparently changed on November 24, 2014, after the Complaint was filed in this case. The new registrant and related contact information given for the Domain Name was clearly false and deceptive: the new registrant name provided was "Mike Hunt", which is a homonym for a vulgar term; the registrant organization specified was the UK Independence Party, which is a political party in the United Kingdom; and the registrant address provided was for the Prime Minister's residence for the United Kingdom. Due to the facial deceptiveness of these registrant details, Complainant rightly declined the opportunity to amend its Complaint when offered the opportunity to do so by the Center. These changes, accompanied by the changes to the website to which the Domain Name was linked (as described above), merely confirm the Respondents' bad faith ploy in seeking to abusively use the Domain Name to extort payment from Complainant.
Consequently, the Panel determines that the Domain Name has been registered and is being used in bad faith under 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 Name, <arevamines.com> be transferred to Complainant.
Christopher S. Gibson
Date: January 26, 2015