WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arkema France v. Domain Administrator, PrivacyGuardian.org / Geren Wenzhen Gu
Case No. D2019-0239
1. The Parties
The Complainant is Arkema France of Colombes, France, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America (“United States”).
The Respondent is Domain Administrator, PrivacyGuardian.org of Phoenix, Arizona, United States / Geren Wenzhen Gu of Bangkok, Thailand.
2. The Domain Name and Registrar
The disputed domain name <ceca360.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2019. On January 31, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 31, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 1, 2019 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 February 1, 2019.
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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 5, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 6, 2019.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on March 19, 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 founded in 2004, operating 80 industrial facilities around the world. One of its subsidiaries is Ceca Chemicals which manufactures specialty chemical products (<cecachemicals.com>).
It is the owner, amongst others, of the United States registration No. 4229644 of October 23, 2012 for the word mark CECA in class 01 (Annex H to the Complaint).
The disputed domain name <ceca360.com> was registered on December 13, 2018 and currently does not resolve to an active webpage. In the past it has been used in connection with a combination of pornographic website and ecommerce for industrial wrenches and other tools (Annex I to the Complaint).
5. Parties’ Contentions
The Complainant asserts to have developed substantial goodwill in the CECA trademark, which has become well known throughout the industry.
The Complainant further asserts that the disputed domain name is confusingly similar with the CECA trademark, with the “360” number unable to distinguish the disputed domain name from the Complainant’s trademark in a significant way.
In addition to that, the Complainant argues that the disputed domain name was used in connection with a pornography as well as a website for Cangzhou Ocean Explosion-Proof Tool Manufacturing Co., Ltd. (“沧州海洋防爆特种工具制造有限公司”).
According to the Complainant, Cangzhou Ocean Explosion-Proof Special Tool Manufacturing Co., Ltd. is a Chinese company established on April 13, 2012 by Kou Zhonghao, Li Jingjing and Kou Baozhong in Congguang County, Cangzhou City, Heibi Province, China (Annex K to the Complaint).
Also according to the Complainant, this company appears to be engaged in the manufacture and sale of explosion proof, anti-magnetic tools, instruments and motors and it owns two Chinese trademark registrations No. 10784937 (海诚 (Pronounced in Chinese as Hai Cheng) and No. 14012756 (WOSEAEX 海防) (Annex L to the Complaint) as well as six other domain names and respective websites in which the CECA trademark does not appear and is not used.
Under the Complainant’s view, therefore, the Respondent cannot claim that the CECA is a name, trademark or an abbreviations or acronym for any name or mark that it uses.
As to the Respondent’s lack of rights or legitimate interests, the Complainant further contends that the Respondent (i) has no connection or affiliation with the Complainant and has not received any license or consent, express or implied to use the Complainant’s trademark in domain names or in any other manner; and (ii) is not making a bona fide or legitimate commercial use of the disputed domain name, given that it has been used to promote and redirect traffic to an unrelated pornographic website.
Lastly, the Complainant alleges that the disputed domain name was registered and is being used in bad faith given the well-known status of the Complainant’s CECA trademark and the use of the disputed domain name in connection with a website that sells industrial tools and also redirects to pornographic videos.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name:
(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.
The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present so as to have the disputed domain name transferred, according to the Policy.
A. Identical or Confusingly Similar
The Complainant has established rights in the CECA trademark.
The disputed domain name only differs from the Complainant’s trademark with of the addition of the “360” suffix which under this Panel’s view does not avoid a finding of confusing similarity between it and the Complainant’s trademark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.
In that sense the Complainant indeed states that it has not given Respondent any license or consent, express or implied to use the Complainant’s trademark in domain names or in any other manner as well as there is no connection or affiliation between the Parties.
Furthermore, the absence of any indication that the Respondent has rights in a term corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate the Panel’s finding of the absence of rights or legitimate interests.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b) that bad faith registration and use can be found when “(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location”.
In the present case, the Respondent’s conduct, while using the disputed domain name in connection with a website that sells industrial tools but at which visitors are also redirected to pornographic videos, indicates a clear lack of bona fide offering of goods or services, creating a likelihood of confusion with the Complainant’s mark and potential tarnishment of the Complainant’s mark.
For the reasons stated above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy.
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 <ceca360.com> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: April 2, 2019