WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Veolia Environnement SA v. Whoisproxy.com LTD / Lukasz Witkowski
Case No. D2016-1257
1. The Parties
The Complainant is Veolia Environnement SA of Paris, France, internally represented.
The Respondent is Whoisproxy.com LTD of Auckland, New Zealand / Lukasz Witkowski of Warsaw, Poland.
2. The Domain Names and Registrars
The disputed domain names <veoliapolska.biz>, <veolia-polska.com>, <veoliapolska.com> and <veolia-polska.net> are registered with Key-Systems GmbH dba domaindiscount24.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2016. On June 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 22, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 23, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 30, 2016.
The Center verified that the amended 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 July 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 24, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2016.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on August 4, 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 active in three main service and utility areas traditionally managed by public authorities – water management, waste management and energy services.
The Complainant is the holder of various trademark registrations such as:
European Union Trademark registration No. 0910325 for VEOLIA registered on March 10, 2006 to cover services in classes 9, 11, 16, 35, 36, 37, 38, 39, 40,41, 42 and 44;
International Trademark registration No. 814678 for VEOLIA registered on September 11, 2003 to cover services in classes 1, 6, 9, 11, 17, 19, 32, 35, 36, 37, 39, 40, 41 and 42;
International Trademark registration No. 919580 for VEOLIA registered on March 10, 2006 to cover services in classes 9, 11, 16, 35, 36, 37, 38, 39, 40, 41 and 42.
In addition, the Complainant owns a domain name <veolia.com> reflecting its trademark which was registered on December 30, 2002.
The disputed domain names were registered on September 18, 2015.
On January 14, 2016, the Complainant sent a cease-and-desist letter by email to Whoisproxy.com LTD requesting it to cancel the disputed domain names. On the same day, Lukas Witkowski replied to the letter asking a translation of the message into French. On January 20, 2016, the Complainant sent back a translation of the letter into French to Lukas Witkowski. Then, several reminders were sent to him. The Respondent has not replied to the letter.
5. Parties’ Contentions
Firstly, the Complainant contends that the disputed domain names are confusingly similar to the VEOLIA mark as they reproduce the Complainant’s trademark in its entirety with the addition of the geographical term “polska” which is not sufficient to give distinctiveness to them. Moreover, in the Complainant’s opinion the mere adjunction of a generic Top-Level Domain (“gTLD”) such as “.com”, “.net”, “.biz” is insufficient to avoid a finding of confusing similarity.
Secondly, the Complainant asserts that the Respondent is not affiliated with it in any way and has not been authorized by it to use and register its trademarks or to seek registration of any domain name incorporating said marks. Furthermore, according to the Complainant, the Respondent is not commonly known by the disputed domain names and it has no rights or legitimate interests in the disputed domain names. The Complainant also claims that the Respondent did not demonstrate use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services since websites that <veoliapolska.com>, <veolia-polska.com> and <veolia-polska.net> resolve to reproduce the Complainant’s website by using the framing technic. In addition, the Complainant contends that the Respondent uses website that <veoliapolska.biz> resolves to direct the Internet users towards a website presenting what seems to be spare parts of various products.
Thirdly, according to the Complainant, the Respondent registered and used the disputed domain names in bad faith. The Complainant asserts that the Respondent was or should have been aware of its rights when the disputed domain names were registered as the VEOLIA mark is well-known throughout the world including Poland. The Complainant emphasizes that in his reply to the cease and desist letter, the Respondent did not argue that he was not aware of the Complainant’s rights. Further, the Complainant contends that the Respondent used the disputed domain names <veoliapolska.com>, <veolia-polska.com> and <veolia-polska.net> to lead Internet users to a framed version of the website <veolia.com>. In addition, the Complainant claims that the Respondent also used the disputed domain name <veoliapolska.biz> to direct towards a website containing the link “energetyka” which further directs the Internet users to various pages, presenting what seems to be spare parts of various products.
Moreover, the Complainant points out that “energetyka” means “energetic/power engineering” in Polish, which corresponds to one of the three core activity of the Veolia group. Taking the above into account, the Complainant concludes that the Respondent tried to create confusion with the Veolia group.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
(i) Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Polish. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Complaint was filed in English. The Complainant requested English to be the language of the administrative proceeding. The Complainant asserted that a need to translate the Complaint from English into Polish would result in substantial expenses and unduly delay the proceeding.
The Panel notes that the Respondent has been given the opportunity to object to English being the language of the proceeding but it has not done so even though the communications were submitted to him in Polish also. The Panel accepts the Complainant’s request that Polish be the language of proceeding, as translations of the documents would delay the proceedings and the Complainant would have to incur expenses for translation. Taking all the circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English as per paragraph 11(a) of the Rules.
(ii) Merits of the Case
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(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 interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The requested remedy may only be granted if the above criteria are met.
A. Identical or Confusingly Similar
The Complainant holds many valid trademark registrations for VEOLIA. The disputed domain names incorporate the Complainant’s VEOLIA mark in its entirety. As stated by previous panels under the UDRP, incorporating a trademark in its entirety is typically sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696).
In the Panel’s opinion, neither addition of a word “polska” nor the gTLD suffixes can serve to distinguish the disputed domain names from the Complainant’s registered marks. On the contrary, the addition of a word “polska” may even confuse Internet users who may easily link the disputed domain names to a website concerning the Complainant’s activity in Poland.
Therefore, the Panel finds that the disputed domain names are confusingly similar to the VEOLIA mark and as a consequence, the Complaint meets the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (See Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; see also the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1 and cases cited therein).
The Panel notes the following circumstances presented in the Complaint in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (a) the Respondent is not affiliated or related to the Complainant in any way; (b) the Respondent is neither licensed nor authorized by the Complainant to use the VEOLIA mark; (c) there is no evidence that the Respondent has been commonly known by the disputed domain names; (d) the Respondent has not demonstrated use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services; (e) the Respondent has ignored the cease and desist letter sent by the Complainant’s lawyer.
Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain names, the Panel accepts the Complainant’s unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names and concludes that the second element of paragraph 4(a) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain names.
Firstly, the disputed domain names were registered on September 18, 2015 and incorporate the VEOLIA mark, which was registered years before and is commonly known worldwide, including in Poland, the Respondent’s country of residence. In the Panel’s opinion, the notoriety of the VEOLIA mark indicates that the Respondent knew or should have known about the Complainant’s rights when registering the disputed domain names.
Secondly, the disputed domain names <veoliapolska.com>, <veolia-polska.com> and <veolia-polska.net> resolve to websites which reproduce the Complainant’s website by using framing technic. The Panel considers the use of the framing technic for the above mentioned domain names to be an indication of bad faith (DreamWorks Animation L.L.C. v. African American Film Network, WIPO Case No. D2013-1482).
Furthermore, the disputed domain name <veoliapolska.biz> resolves to a website of ProenGroupMichaud which offers spare parts of various products for power industry. In these factual circumstances it is apparent that Internet users attempting to visit the Complainant’s website will end up on the websites set up by the Respondent creates confusion in line with paragraph 4(b)(iv) of the Policy. (See e.g. MasterCard International Incorporated (“MasterCard”) v. Wavepass AS, WIPO Case No. D2012-1765).
As the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain names by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, or endorsement of or affiliation with the website, the Panel finds the bad faith requirement under paragraph 4(b)(iv) of the Policy to be fulfilled.
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 names, <veoliapolska.biz>, <veolia-polska.com>, <veoliapolska.com> and <veolia-polska.net> be transferred to the Complainant.
Date: August 18, 2016