WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arkema France v. Derek Morgan
Case No. D2015-0494
1. The Parties
The Complainant is Arkema France of Colombes, France, represented by Fross Zelnick Lehrman & Zissu, P.C., United States of America.
The Respondent is Derek Morgan of Sunnyvale, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <arkemagroupcorporation.com> is registered with Melbourne IT Ltd (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 24, 2015. On March 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 26, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 the Respondent of the Complaint, and the proceedings commenced on March 30, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 19, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 22, 2015.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on April 29, 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
The Complainant is a French company in the chemical industry with offices in 40 countries and 13,800 employees. The Complainant has obtained registrations for its ARKEMA trademark around the world dating back to the year 2004, including the United States Registration Nos. 3,082,135 and 3,082,057.
The disputed domain name was registered on December 16, 2014. The disputed domain name currently redirects visitors to a parking website with the notice "This site is under construction".
5. Parties' Contentions
In summary, the Complainant contends the following:
Through significant expenditures of time, money and effort, the Complainant has developed substantial goodwill in the ARKEMA trademark, and its ARKEMA trademark has become famous and well-known throughout the industry.
The disputed domain name consists of nothing more than the ARKEMA trademark plus the descriptive words "group" and "corporation" as well as the generic Top-Level Domain ("gTLD") ".com". A gTLD indicator such as ".com" cannot be taken into consideration when judging confusing similarity, and the terms "group" and "corporation" were meant to further mislead Internet users to believe that the disputed domain name is associated with the Complainant. Thus, it is clear that the disputed domain name is identical or confusingly similar to the Complainant's validly registered trademark.
Given that the Complainant's use of the ARKEMA trademark predates the Respondent's registration of the disputed domain name, the burden is on the Respondent to establish its rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant and has not received any license or consent to use the Complainant's trademark in domain names or in any other manner. Moreover, considering the facts of this case, there cannot be any legitimate use to which the disputed domain name could be put that would not violate the Complainant's rights.
It is inconceivable that the Respondent was unaware of the Complainant's trademark when he registered the disputed domain name. The mere fact that the Respondent registered the confusingly similar disputed domain name without authorization is, in and of itself, evidence of bad faith registration. Furthermore, the association of the disputed domain name with an inactive website amounts to the disputed domain name being used in bad faith. It is also clear that the Respondent's use of the Complainant's trademark for the purpose of trading on the Complainant's rights and reputation is a classic example of bad faith under the Policy. Finally, the Respondent's use of the private protection service "MyPrivateRegistration.com" as a proxy when registering the disputed domain name also evidences bad faith1.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is comprised of the Complainant's trademark ARKEMA and the suffixes "group" and "corporation". UDRP panels have consistently held that the addition of merely generic or descriptive terms to a trademark in a domain name would typically be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.9).
The Complainant has thus fulfilled paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
There are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain name.
Based on the Complainant's contentions, the Panel finds that the Complainant, having made a prima facie case which remains unrebutted, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Currently, the disputed domain name is connected to a website with nothing more than a notice that says "This site is under construction". According to the consensus view of WIPO panelists, passive holding of a disputed domain name does not as such prevent a finding of bad faith registration and use (see WIPO Overview 2.0, paragraph 3.2). The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity (WIPO Overview 2.0, paragraph 3.2).
The first two examples mentioned above are clearly fulfilled in the present case. As to the third example (concealment of a respondent's identity), it must be assessed whether the Respondent has attempted to conceal his identity by using a privacy protection service. Although privacy shields might be legitimate in some cases – such as protecting the identity of a critic against reprisal – in this case it is difficult to see why the Respondent would need identity privacy protection services for purposes of being contacted except to make it more difficult for the Complainant to protect its trademark against infringement (cf., Ustream.TV, Inc v. Vertical Axis, Inc., WIPO Case No. D2008-0598; WIPO Overview 2.0, paragraph 3.9).
The Complainant has thus also satisfied paragraph 4(a)(iii) of 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 disputed domain name <arkemagroupcorporation.com> be transferred to the Complainant.
Date: May 13, 2015
1 The Complainant contends that the Respondent can be contacted via his privacy protection service "MyPrivateRegistration.com".