WIPO Arbitration and Mediation Center


Arkema France v. Benjamin McElvany

Case No. D2018-1447

1. The Parties

1.1 The Complainant is Arkema France of Colombes, France, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America ("United States").

1.2 The Respondent is Benjamin McElvany of Westford, Vermont, United States.

2. The Domain Name and Registrar

2.1 The disputed domain name <arkemaeu.com> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 28, 2018. On June 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 29, 2018, 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 sent a request for clarification to the Complainant on July 6, 2018, inviting the Complainant to amend the Complaint to address administrative formalities. The Complainant filed an amended Complaint on July 10, 2018.

3.2 The Center verified that the Complaint together with 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").

3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 31, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 2, 2018.

3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on August 13, 2018. 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

4.1 The Complainant is a company incorporated in France in 2004. It operates industrial facilities in Europe, North America and Asia. It manufactures and sells a wide variety of products including fluorochemicals, technical polymers, thiochemicals, functional additives, industrial coatings, acrylics, hydrogen peroxide, organic peroxides and molecular sieves. It has offices in 40 countries and over 13,800 employees.

4.2 The Complainant has obtained registered trade marks that either incorporate or comprise the term "Arkema" around the world. They include United Stated registered trade mark no. 3,082,057 being a standard character mark for ARKEMA, filed on December 16, 2004 and registered on April 18, 2006 in classes 1, 2, 17 and 42.

4.3 On its face the Respondent would appear to be an individual, but whether this is the individual identified in the WhoIs database for the Domain Name is questionable. The Domain Name was registered on April 5, 2018.

4.4 No active website other than a holding page appears to have operated for the Domain Name. However, the Domain Name has been used for at least one email fraudulently impersonating the Chief Executive Officer of the Complainant sent to a member of staff of the Complainant.

5. Parties' Contentions

A. Complainant

5.1 The Complainant refers to its business and marks and describes the use of the Domain Name to send a fraudulent email. The Complainant contends that the Domain Name is being used in a similar manner to other domain names that incorporated its mark and which were the subject of decisions in Arkema France v. Aaron Blaine, WIPO Case No. D2015-0502; and Arkema France v. Pepi Robert, WIPO Case No. D2014-1055.

5.2 The Complainant further contends that the Domain Name comprises nothing more that its mark, the geographical term "EU" and the ".com" generic top level domain ("gTLD"). Given this it is claimed that the Domain Name is confusingly similar to the Complainant's mark.

5.3 The Complainant effectively claims that the examples of rights and legitimate interests set out in the Policy do not apply in this case and that the fraudulent use of the Domain Name "demonstrates neither a bona fide offering of goods or services nor a legitimate interest." Such use is also claimed to demonstrate bad faith.

B. Respondent

5.4 The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent the panel from determining the dispute based upon the complaint, notwithstanding the failure of any respondent to lodge a Response.

6.2 To succeed in these proceedings the complainant must make out its case in all respects under paragraph 4(a) of the Policy. Namely, 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 (paragraph 4(a)(i)); and

(ii) the respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and

(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).

6.3 However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel shall "draw such inferences therefrom as it considers appropriate".

A. Identical or Confusingly Similar

6.4 The Panel accepts that the Complainant has registered trade mark rights in the word mark ARKEMA. It also accepts that the Domain Name can only sensibly be read as a reference to ARKEMA (and most likely to the Complainant's mark in particular) in combination with the term "EU" and the ".com" gTLD. It further accepts that the words "EU" would most likely be read as a geographic indicator for the European Union, where the Complainant is based. It follows that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. The Complainant has, therefore, made out the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests and Registration and Use in Bad Faith

6.5 It is usual for panels under the Policy to consider the issues of rights or legitimate interests and registration and use in bad faith in turn. However, in a case such as this it is more convenient to consider those issues together.

6.6 The Panel accepts that the Domain Name has been registered and used with the intention of furthering a fraudulent scheme whereby the registrant has sought to impersonate an individual in the senior management of the Complainant and that this has been done in order to try and deceive an employee or employees of the Complainant.

6.7 Exactly why this was done is not entirely clear. Perhaps this was an example of actual or attempted as "CEO fraud", of the sort described in The Swatch Group AG and Swatch AG v. Christopher Biedermann / Marcin Rulnicki, WIPO Case No. D2017-0388. No further details are provided by the Complainant in this respect, but this may be because the email was identified as fraudulent at an early stage. However, regardless of what exactly was intended, the Panel accepts that the only reasonable interpretation of the email is that some sort of fraudulent scheme was intended. The Panel also accepts that it is most likely that the Domain Name was registered with the intention of sending that email and furthering that scheme.

6.8 There is no right or legitimate interest in holding a domain name for the purpose of furtherance of a fraud through impersonation. Further, the registration and use of a domain name for such a purposes involves registration and use in bad faith (see, for example, Vestey Group Limited v. George Collins, WIPO Case No. D2008-1308). Indeed, it is difficult to conceive of a more clear cut example of bad faith registration and use of a domain name, even if such activity does not obviously fall within the scope of any of the non-exhaustive list examples of circumstances indicating bad faith registration or use set out in paragraph 4(b) of the Policy.

6.9 In the circumstances, the Panel has no hesitation in finding that the Complainant has made out the requirements of paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.

7. Decision

7.1 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 <arkemaeu.com> be transferred to the Complainant.

Matthew S. Harris
Sole Panelist
Date: August 23, 2018