WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Veolia Environnement SA v. Jeff Mitchell
Case No. D2016-0869
1. The Parties
The Complainant is Veolia Environnement SA of Paris, France, represented internally.
The Respondent is Jeff Mitchell of Salt Lake City, Utah, United States of America (“USA”).
2. The Domain Name and Registrar
The disputed domain name <veoliaeaust.com> (the “Domain Name”) is registered with Namearsenal.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2016. On April 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, 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. In response to a notification by the Center regarding Annexes to the Complaint, the Complainant submitted annexes to the Complaint by email on May 2, 2016.
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 May 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2015.
The Center appointed Dawn Osborne as the sole panelist in this matter on June 1, 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 the holding company of Veolia Group which is 160 years old. The Complainant helps cities and industries to manage and optimise their resources. It provides an array of solutions related to water, waste recovery and energy. The Complainant has registered trade marks, inter alia, in the USA where the Respondent is based, for VEOLIA in relation to its services which go back at least thirteen years ago. The Domain Name was previously held by the Complainant registered on December 5, 2005 and the Respondent registered it when it lapsed in 2015. The Complainant operates a website at “www.veolia.com”.
The Domain Name now inactive was pointed to a blog providing information about water technology. The Complainant sent a cease and desist letter to Respondent and in response Respondent offered to sell the Domain Name for USD 1,000. The Domain Name has also pointed to a parking site.
5. Parties’ Contentions
The Complainant’s contentions can be summarised as follows:
The Complainant is the holding company of Veolia Group which is 160 years old representing today a total of 24.96 billion Euros in revenue. The Complainant helps cities and industries to manage and optimise their resources. It provides an array of solutions related to water, waste recovery and energy. The trade mark VEOLIA and its holder are well known around the world and more particularly in the USA. The Complainant has registered trade marks, inter alia, in the USA where the Respondent is based, for VEOLIA. The Domain Name was previously held by the Complainant registered on December 5, 2005 and the Respondent took the opportunity to catch it when it lapsed. The Complainant operates a website at “www.veolia.com”.
The Domain Name is confusingly similar to the Complainant’s VEOLIA trade mark. It is composed of the Complainant’s trademark plus the word “eau” which means “water” in French and the letters “st” which is the abbreviation for “solution technologies”. Water is one of the three key businesses of the Complainant. It is well established that the addition of a generic Top-Level Domain (“gTLD”) “.com” is irrelevant as it is insufficient to avoid confusing similarity.
The Respondent is not affiliated with the Complainant in any way and has not been authorised by the Complainant to use and register its trade marks. Some of the Complainant’s registrations preceded the registration of the Domain Name by years. The Respondent is not commonly known by the name Veolia. No bona fide or legitimate use can reasonably be claimed.
The Domain Name now inactive was pointed to a blog providing information about water technology. This shows the Respondent’s actual knowledge of the Complainant.
The Complainant sent a cease and desist letter to the Respondent offered to sell the Domain Name for USD 1,000. This shows no rights and legitimate interests and no real interest in a blog about water especially since the site is now inactive.
In any event there is no need to provide a blog about water on the Domain Name impersonating the Complainant. The Respondent is deceptively taking advantage of the Complainant’s name and trade mark and the Domain Name was registered and used in bad faith.
In the response to the cease and desist letter the Respondent did not deny actual knowledge of the Complainant.
The Domain Name has also pointed to a parking site.
Even though the Domain Name is currently inactive, since the VEOLIA mark is well known and legitimate use cannot be made, the passive holding of the Domain Name by the Respondent can constitute bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or confusing similarity
The Complainant has trade mark registrations for the VEOLIA word mark around the world including the USA with first registration obtained at least thirteen years ago.
The Domain Name is confusingly similar to the Complainant’s trade mark consisting of the Complainant’s VEOLIA registered trademark and the generic text “eau” meaning “water” and the initials “st” standing for “solution technologies”. The Complainant was the first registrant of the Domain Name with these meanings, but let it lapse.
Both water and solution technologies are areas of business in which the Complainant operates. The distinctive part of the Domain Name is the VEOLIA mark. The addition of the non-distinctive text “eau” and “st” does not therefore prevent the confusing similarity of the Domain Name with the Complainant’s VEOLIA trade mark, especially since the Complainant operates in the water and solution technologies service sectors and customers, especially prior customers of the Complainant may recognise the meaning of the generic text. As such the Panel holds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights for the purpose of the Policy.
B. Rights or Legitimate Interest of the Respondent
The Respondent has not responded or explained why he would be entitled to register a domain name consisting of the Complainant’s VEOLIA trade mark and generic text which relates directly to the Complainant’s activities. Operating a parking site at a domain name containing a famous trade mark is not bona fide use. The Respondent does not appear to be commonly known by Veolia, has no permission from the Complainant to use the VEOLIA mark and is not affiliated with the Complainant. The use of the Domain Name for content related to water was confusing as it was not at all clear that the content was not connected with the Complainant or that the content was non-commercial. Given the lack of evidence of any legitimate or fair use and the evidence of confusing use, as discussed below, the Panel finds that the Respondent has not used or made demonstrable preparations to use the Domain Name for a bona fide use in relation to goods or services or made non-commercial fair use of it and holds that the second element of the Policy has been satisfied by the Complainant.
C. Registered and Used in Bad Faith
Paragraph 4 (b) of the Rules sets out four non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:
“by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [his] website or other on line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of [his] website or location or of a product or service on [his] website or location.”
As discussed above, in the opinion of the Panel the use made of the Domain Name for content related to water was deceptive. As such the Panel finds that the Domain Name has been registered and used in a way likely to confuse people into believing the Domain Name was registered to or connected to the Complainant. In the absence of a proper explanation from the Respondent as to his intentions regarding the use of the Domain Name, considering the well-established nature of the Complainant and the well-known nature of the VEOLIA mark and the prior use of the Domain Name by the Complainant and the fact that at least some of the Complainant’s customers were likely to recognise it the Panel is satisfied that the Complainant has shown on the balance of probabilities that the Respondent registered the Domain Name in bad faith and has used the Domain Name to attract Internet traffic to his site for commercial gain by creating a likelihood of confusion that his website or services offered on it are connected to the Complainant. As such the Panel finds that the Domain Name has been registered and used in bad faith satisfying the third limb of the Policy.
The Panel also notes that the Respondent has used the Domain Name for a parking page, has offered to sell the Domain Name for USD 1,000 and is no longer using the Domain Name. However, in light of the findings above it is not necessary to make any further finding as to bad faith.
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 <veoliaeaust.com> be transferred to the Complainant.
Date: June 6, 2016