WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Veolia Environnement SA v. Donald Goecke / Registration Private / Domains By Proxy, LLC
Case No. D2016-2379
1. The Parties
Complainant is Veolia Environnement SA of Paris, France, represented internally.
Respondent is Donald Goecke of Rutland, Vermont, United States of America, Registration Private / Domains By Proxy, LLC of Scottsdale, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <veolia-nl.com> (the “Domain Name”) is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2016. On November 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 28, 2016, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in Complaint. The Center sent an email communication to Complainant on November 29, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 1, 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 Respondent of the Complaint, and the proceedings commenced on December 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 29, 2016.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on January 6, 2017. 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 the holding company of Veolia Group which is 160 years old. Complainant helps cities and industries to manage and optimise their resources. It provides an array of solutions related to water, waste recovery and energy. Complainant has registered trademarks, inter alia, in the United States of America, where Respondent is based, for VEOLIA in relation to its services which go back almost fourteen years ago. Complainant operates a website at “www.veolia.com”.
The Domain Name was registered on September 9, 2016. The Domain Name resolves to an inactive web page.
5. Parties’ Contentions
Insofar as relevant, Complainant contends the following:
Veolia Group has 174,000 employees and revenues of EUR 24.96 billion. The trademark VEOLIA is therefore well known around the world and more particularly in the United States of America.
On September 12, 2016, the legal department of Complainant was alerted that the Domain Name had been used for a phishing attempt. The Domain Name was used to impersonate the managing director of Veolia Water Solutions & Technologies Support in order to send an email in the Dutch language providing instructions to a staff member of the Veolia Group to take care of an international payment.
On September 13, 2016, Complainant sent a cease-and-desist letter to Respondent on the basis of its trademark rights. The cease-and-desist letter requested Respondent to block the Domain Name in such a way that it could not be used in connection to other phishing scams. Several reminders were sent, but no satisfactory replies were received.
The Domain Name is confusingly similar to the trademark VEOLIA. The Domain Name reproduces Complainant’s trademark in its entirety with the addition of the element “nl”, which seems to refer to the Netherlands. This addition is not sufficient to give distinctiveness to the Domain Name.
By registering the Domain Name, Respondent created a likelihood of confusion with Complainant’s well-known trademark. It is likely that this domain name could mislead Internet users into thinking that it is at least associated with Complainant. This would not be surprising since it is likely that the Domain Name was only registered to conduct phishing activities.
Respondent is not affiliated with Complainant in any way and has not been authorized by Complainant to use and register its trademarks or to seek registration of any domain name incorporating the said marks.
Furthermore, Respondent has no prior rights or legitimate interest in the Domain Name. The registration of several trademarks preceded the registration of the Domain Name for years.
The Domain Name is so similar to Complainant’s well known trademark VEOLIA that Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the Domain Name. Moreover, Respondent is not commonly known by the name VEOLIA, in any way affiliated with Complainant, nor authorized or licensed to use the VEOLIA trademark, or to seek registration of any domain name incorporating the said mark.
In addition, Respondent did not demonstrate use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. Moreover, the Domain Name is highly similar to the famous VEOLIA trademark of Complainant, therefore Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the Domain Name. Having been used for a phishing scam, the task of demonstrating a bona fide activity seems rather impossible to complete.
Furthermore, Respondent is neither commonly known by the name “Veolia”, nor in any way affiliated with Complainant, nor authorized or licensed to use the VEOLIA trademark, or to seek registration of any domain name incorporating said marks.
If Respondent had a right or legitimate interest in connection with the Domain Name, he would have vigorously defended its rights by quickly replying to Complainants’ cease-and-desist letter. In light of these circumstances, it clearly appears that Respondent does not have any legitimate interest with respect to the Domain Name.
The Domain Name was registered and has been used in bad faith.
It is implausible that Respondent was unaware of Complainant when the Domain Name was registered. Indeed, Complainant is well known throughout the world including the United States where Respondent is located.
In light of the reputation of Complainant’s trademark VEOLIA, Respondent’s reproduction of the VEOLIA trademark in its entirety in the Domain Name clearly proves that Respondent was aware of the existence of Complainant’s trademark. In addition, Respondent sent an email to the email address of the Veolia employee, which proves that Respondent is aware of the existence of Complainant.
Supposing that Respondent was not aware of the possibility of searching trademarks online before registering the Domain Name, a simple search via Google or any other search engine using the keyword Veolia shows that all of the first results relate to Complainant’s trademark. Respondent’s failure to do so is a contributory factor to its bad faith.
The Domain Name was used to conduct a phishing activity, as described above. This is obviously use in bad faith of the domain name.
There is no doubt that Internet users attempting to visit Complainant’s website have ended up on the web pages set up by Respondent. The clear inference to be drawn from Respondent’s operations is that it is trying to benefit from the fame of Complainant’s trademark.
It is more likely than not, that Respondent’s primary motive in registering and using the Domain Name was to capitalize on or otherwise take advantage of Complainant’s trademark rights, through the creation of initial interest of confusion. The phishing scheme is proof of this capitalization.
When it comes to the fact that the Domain Name is currently inactive, it is important to consider whether, in the circumstances of this particular Complaint, the passive holding of the Domain Name (in the present case, the holding of the domain name may not be considered as “passive” since the domain name has been used for a phishing scam) by Respondent amounts to Respondent acting in bad faith. The particular circumstances to be taken into account are the following: (i) Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use around the world; (ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the Domain Name; (iii) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of Complainant’s rights under trademark law.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, Complainant must prove each of the following three elements:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name registered by Respondent has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has trademark registrations for the VEOLIA word mark around the world including the United States of America with first registration obtained almost fourteen years ago.
The Domain Name incorporates Complainant’s trademark VEOLIA in its entirety. The element “nl” seems to refer to the Netherlands and can be considered as a descriptive addition. The Panel finds that the addition of this geographical identifier “nl” does not suffice to distinguish the Domain Name from Complainant’s trademark since “VEOLIA” is the dominant part of the Domain Name. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”).
The Panel takes into account that Internet users considering the Domain Name without awareness of its content may believe that the Domain Name is in some way connected and associated with Complainant (see Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206; CBS Broadcasting Inc., f/k/a CBS Inc v. Nabil Z. aghloul, WIPO Case No. D2004-0988).
Finally, with regards to the suffix “.com” (which indicates that the Domain Name is registered in the “.com” generic Top-Level Domain (gTLD)), as it was established in many previous UDRP decisions (see A.P. Møller v. Web Society, WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / firstname.lastname@example.org, WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; and Crédit Industrile et Commercial S.A v. Name Privacy, WIPO Case No. D2005-0457), it does not generally affect the analysis under the first element of the Policy for the purpose of determining whether it is identical or confusingly similar; indeed the suffix is a necessary component of the domain name and does not give any distinctiveness.
Thus, the Panel finds that the Domain Name is confusingly similar to Complainant’s trademark.
For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.
B. Rights or Legitimate Interests
Respondent did not reply to Complainant’s contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by Complainant.
In particular, Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has rights or legitimate interests in the Domain Name, such as:
(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds that no use of the Domain Name has been made in connection with the bona fide offering of good or services. To the contrary, the Domain Name has been used by Respondent in connection with an attempt to defraud Complainant and/or one its affiliates.
Respondent is not known by the Domain Name, nor has Respondent made any legitimate noncommercial or fair use of the Domain Name.
Finally, given the circumstance of this case, the Panel finds that Respondent’s lack of rights or legitimate interests in the Domain Name may also be inferred by the fact that no response was filed by Respondent. According to earlier UDRP decisions ‘non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090; and Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493).
Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met.
C. Registered and Used in Bad Faith
The Panel finds that the Domain Name was registered and is being used in bad faith.
In light of the evidence filed by Complainant and the absence of a reply, the Panel finds that Complainant’s trademark and activities are well known throughout the world. Accordingly, in the Panel’s view, Respondent must have been aware of Complainant’s existence and rights when it registered the Domain Name.
This is emphasized by the fact that the Domain Name was being used in connection with an attempt to defraud Complainant and/or one its affiliates by impersonating one of its senior managers. In doing so, Respondent is disrupting Complainant’s business.
Additionally, the Panel also finds that this behavior of Respondent fits the example of paragraph 4(b)(iv) of the UDRP i.e., that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. Moreover, the Domain Name does not resolve to an active website.
Although the lack of a reply by Respondent cannot by itself, lead to the conclusion that there is use in bad faith, the cumulative circumstances as outlined in the decision are sufficient for the Panel to find that the use of the Domain Name by Respondent is in bad faith.
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is being used in 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 <veolia-nl.com> be transferred to Complainant.
Willem J. H. Leppink
Date: January 9, 2017