WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arkema France v. WhoisGuard, Inc.
Case No. D2016-0627
1. The Parties
The Complainant is Arkema France of Colombes, France, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is WhoisGuard, Inc. of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <arkema-france.com> is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 31, 2016. On April 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 4, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 3, 2016.
The Center appointed Nuno Cruz as the sole panelist in this matter on May 23, 2016. 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, formed in 2004, which has offices in 40 countries and 13,800 employees. The Complainant has obtained registrations for its ARKEMA trademark around the world dating back at least to the year 2004, including United States Registration Nos. 3,082,135 and 3,082,057.
The Complainant also has registrations in Canada, Mexico, France and some European Union Trademark registrations with the earliest dating from 2004.
The Complainant has registered <arkema.com> as a domain name.
The disputed domain name was registered on February 11, 2016. The website currently associated with the disputed domain name appears to be a place-holder website with generic links regarding the establishment of corporations.
5. Parties' Contentions
The Complainant asserts that it has registered and used the trademark ARKEMA since its formation in 2004 in relation to its businesses of "High Performance Materials, Industrial Specialities, and Coating Solutions". 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 <arkema-france.com> is confusingly similar to the Complainant's ARKEMA trademark because it consists of nothing more than the ARKEMA trademark plus the geographic term "france," where the Complainant is located, and the generic Top Level Domain ("gTLD") extension ".com".
The Complainant contends that the Respondent's use of the name "Arkema-France" is a blatant attempt to take advantage of the fact that the Complainant uses the term "Arkema France" as its trade name.
The Respondent has no 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. Upon information and belief, the Respondent's only use of the disputed domain name is in connection with the parked website described above. Such use demonstrates neither a bona fide offering of goods or services nor any other type of legitimate interest.
The fact that the ARKEMA trademark is well-known in the materials and coatings industries means it is inconceivable that the Respondent was not aware of the Complainant's trademark when the disputed domain name was registered. The mere fact that the Respondent registered the confusingly similar disputed domain name without authorization is, in and of itself, evidence of its bad faith registration.
The Complainant also asserts that the Respondent's registration and use of the disputed domain name for redirecting Internet users, particularly customers and potential customers of the Complainant, from the Complainant's website to the website of a company which directly competes with the Complainant, constitutes bad faith registration and use.
Finally, the Complainant further contends that the Respondent's use of a privacy protection service suggests bad faith.
Based on the foregoing, the Complainant contends that it has established that (i) the disputed domain name is identical and/or confusingly similar to the Complainant's well-known ARKEMA marks; (ii) the Respondent has no right or legitimate interest in the disputed domain name; and (iii) the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the 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. The 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 the Complainant has rights;
(ii) that the 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 Complainant, operating under the company name "Arkema France", is the holder of various ARKEMA trademarks and the domain name <arkema.com>.
The disputed domain name contains the company name of the Complainant in its entirety and the trademark ARKEMA, combined with a hyphen with the geographic identifier "france" and the ".com" gTLD suffix.
Thus, the Panel finds that the disputed domain name <arkema-france.com> is confusingly similar to the Complainant's mark ARKEMA. The fact that the disputed domain name contains a hyphen between the Complainant's mark and the geographical indication ("france"), as well as the ".com" gTLD suffix is irrelevant to such a finding.
Moreover, a domain name is confusingly similar to a mark where it merely adds a country name after a well-known mark. See, e.g., Pfizer Inc. v. Bharat Gohil, WIPO Case No. D2005-1290; Pfizer Inc. v. Carlos Rosario, WIPO Case No. D2005-0067; Pfizer Inc. v. Tahar Aoudia, WIPO Case No. D2004-0958; Princess International Sales and Service Limited and Princess Yachts International PLC v. Lambert and Turner/Lambert Turner Marine, WIPO Case No. D2002-0419.
Furthermore, the addition of the gTLD suffix ".com" to the disputed domain name is for Internet registration purposes only, being a requirement of the domain naming system, and does not serve as a distinguishing feature for purposes of the first Policy element (See The Bank of the Pacific v. Digi Real Estate Foundation, WIPO Case No. D2006-1112 and Alliant Credit Union v. Mark Andreev, WIPO Case No. D2007-1085).
B. Rights or Legitimate Interests
Once a complainant establishes a prima facie case of the second element of the Policy, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.).
By not submitting a response, the Respondent failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy or otherwise, any rights or legitimate interests in the disputed domain name or to rebut the Complainant's prima facie case that it lacks rights or legitimate interests.
The Panel finds that the Respondent has no rights to use the Complainant's trademark and is not an authorized agent or licensee of the Complainant's services or trademarks. There is no evidence in the present record to indicate that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name.
On the contrary, the Panel finds that the Respondent's use of the disputed domain name to attract consumers to other web pages, which, according to the Complainant, belong to competitor companies, 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
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 the respondent's website or location or of a product or service on its website or location.
In the present case, the Complainant has used the ARKEMA trademark since its inception in 2004. The Complainant is a major corporation with business in many countries and a large number of employees, and has put ample evidence of use of the trademark ARKEMA in relation to those businesses before the Panel. In fact, it can even be said that it is a well-known trademark within the industrial specialties, high performance materials and coating solutions industries, and enjoys widespread international recognition.
The disputed domain name appears to be connected to a place-holder website with generic links regarding the establishment of corporations. The 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 the Complainant's trademark 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.
Under these circumstances, it may be concluded that the Respondent has registered and is using the disputed domain name to divert Internet traffic to unrelated websites offering competing and similar services to those of the Complainant, for the purpose of achieving commercial gain.
Such conduct constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy.
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 <arkema-france.com> be transferred to the Complainant.
Date: June 6, 2016