WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arkema France v. gueijuan xu
Case No. D2018-2888
1. The Parties
The Complainant is Arkema France of Colombes, France, represented by In Concreto, France.
The Respondent is gueijuan xu of Shaoguanshi, China.
2. The Domain Name and Registrar
The Disputed Domain Name <paladin-china.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2018. On December 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 20, 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 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 December 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2019.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on January 24, 2019. 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. The Complainant operates in 55 countries around the world with presence in Europe, North America, and Asia.
The Complainant is composed of three businesses hub: high-performance materials, industrial specialties and coating solutions.
Moreover, the Complainant owns numerous trademark registrations for the term PALADIN. Among others, the Complainant is the owner of the following trademark registrations:
- The European Union trademark PALADIN Registration No. 005899521, registered on March 27, 2008;
- The European Union trademark PALADIN BY ARKEMA (& Design) Registration No. 012400842, registered on April 18, 2014;
- The Chinese trademark PALADIN Registration No. 11106162, registered on December 28, 2013, and;
- The Chinese trademark PALADIN BY ARKEMA (& Design) Registration No. 16269471, registered on April 7, 2016.
In addition, the Complainant is the owner of the domain name <paladin.com> registered on December 11, 1991.
According to the indications provided by the Registrar in its verification response, the Disputed Domain Name has been registered on September 5, 2018.
Finally, according to the undisputed evidence provided by the Complainant, the Disputed Domain Name currently resolves to a website with pictures of nude women.
5. Parties’ Contentions
Identical or confusingly similar
The Complainant states that the Disputed Domain Name is confusingly similar to the Complainant’s trademark PALADIN, since the Disputed Domain Name reproduces all the letters of the Complainant’s trademark.
The addition of the geographical term “China” causes a greater confusion suggesting that the Disputed Domain Name is operated by the Complainant for its product Paladin in China.
Furthermore, the generic Top-Level Domain (“gTLD”) “.com” in the Disputed Domain Name does not affect the likelihood of confusion.
Rights or legitimate interests
The Complainant states that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Moreover, the Respondent has not acquired trademark rights on the denomination “paladin”.
Furthermore, the Complainant has not authorized, licensed or permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating the Complainant’s trademark.
What is more, there is no evidence that the Respondent has been commonly known by the Disputed Domain Name.
The Complainant alleges that the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services.
Registration and use in bad faith
The Complainant contends that the Respondent registered and is using the Disputed Domain Name in bad faith.
Moreover, the Complainant states that the term “paladin” is not a descriptive term, a commonly used expression, or a word that would be instantly understood in the field of industry. Thus, it is unlike that the Respondent registered the Disputed Domain Name without any knowledge of the Complainant’s trademark.
Furthermore, the trademark PALADIN is used in China and therefore known by the relevant public.
Finally, the Complainant asserts that the Respondent was involved in five UDRP procedures because of the registration of others domain names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the Disputed Domain Name should be transferred or cancelled:
(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 respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it has trademarks rights over the term PALADIN.
Based on the evidence submitted, the Panel finds that the Disputed Domain Name <paladin-china.com> is confusingly similar to the Complainant’s PALADIN trademark. The Disputed Domain Name wholly incorporates the Complainant’s trademark and it is clearly recognizable in it.
Furthermore, the addition of geographical term “china” and the use of the hyphen do not alter the assessment of confusing similarity. Moreover, the addition, of the gTLD “.com” does not change this finding, since the gTLD is generally disregarded in such an assessment of confusingly similarity.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a 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.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademarks. The Complainant has prior rights in the trademarks, which precede the Respondent's registration of the Disputed Domain Name by several decades. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the Disputed Domain Name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trademark rights in respect of the Disputed Domain Name or that the Disputed Domain Name is used in connection with a bona fide offering of goods or services.
Therefore, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the Disputed Domain Name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the Disputed Domain Name’s registration and use in bad faith.
One of those circumstances is specified in paragraph 4(b)(iv), i.e., where the domain name is used to intentionally attempt to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location. In the Panel’s view, the Respondent has intentionally registered the Disputed Domain Name, which identically contains the Complainant’s trademark PALADIN plus the geographic term China for that purpose.
The Panel visited the website at the Disputed Domain Name and was able to verify that it contains several Chinese characters with photos of nude women. Moreover, the Panel finds that with this action, the Respondent disrupts the Complainant’s business and tarnishes the Complainant’s trademark PALADIN by using it in a domain name which is linked to a pornographic website and that this amounts to an act of bad faith. This has been held in several previous panel decisions (see V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962, and L'Oreal v. Robert Caceres, Dollarviews, WIPO Case No. D2015-1200).
In addition, the Respondent “gueijuan xu” has been a respondent in ten (10) other UDRP proceedings where it was decided that it registered the disputed domain names involved in those cases in bad faith. The Panel notes that this is further evidence of bad faith.
Therefore, taking all circumstances into account and for all above reasons, the Panel concludes that the Respondent has registered and is using the Disputed Domain Name 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 Disputed Domain Name, <paladin-china.com> be transferred to the Complainant.
Pablo A. Palazzi
Date: February 7, 2019