WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DALKIA v. Apex Consulting, Yitao
Case No. D2020-1264
1. The Parties
The Complainant is DALKIA, France, represented by IP Twins S.A.S., France.
The Respondent is Apex Consulting, Yitao, China.
2. The Domain Name and Registrar
The disputed domain name <dalkia.biz> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2020. On May 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 21, 2020, 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 May 27, 2020 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 May 28, 2020.
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 May 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 18, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 20, 2020.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on June 24, 2020. 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 an energy provider in France, part of the EDF Group, with about 16,000 employees and revenues of EUR 4.2 billion in 2019. The Complainant has a number of registered trademarks including French word mark DALKIA, n° 98717437, registered on February 11, 1998 for goods and services in classes 35; 36; 37; 38; 40;41; 42; 43; 44; and 45; French word mark DALKIA, n° 97709784, registered on December 19, 1997, for goods and services in classes 11; 37; 39; and 40; International word mark DALKIA, n° 700874, registered on June 19, 1998 for goods and services in classes 11; 35; 36; 37; 38; 39; 40; and 42, designating notably China, Russian Federation, Germany, and United Kingdom; and United States of America (“United States”) Trademark DALKIA n°2320375, registered on February 22, 2000 for goods and services in classes 11, 37, 39, and 40.
The Complainant also has domain names incorporating its DALKIA trademarks both within generic Top-Level Domains (“gTLD”) and country code Top-Level Domains (‘ccTLD”), such as <dalkia.com> and <dalkia.fr>.
The disputed domain name was registered on December 1, 2019. The disputed domain name redirects towards a parking page containing commercial links as well as a link stating that the disputed domain name may be for sale. The Respondent offered the disputed domain name for sale to the Complainant for EUR 2,890.
5. Parties’ Contentions
The Complainant points out that the disputed domain name is identical to its DALKIA trademark.
Further, the Complainant says that “dalkia” is an arbitrary term with no meaning in any language and can thus not be claimed by the Respondent for descriptive purposes. The Complainant also failed to find any trademark registration for the term DALKIA anywhere in the world other than its own, so that it is impossible for the Respondent to claim any rights in the term. There is also no business or legal relationship between the Complainant and the Respondent.
The Complainant points out that the disputed domain name redirects towards a parking page with commercial links and a link stating that the disputed domain name “may be for sale”. The latter link redirects towards a page inviting Internet users to submit an offer for the disputed domain name. The Complainant asserts that the Respondent has also indicated its intent to sell the disputed domain name to the Complainant at a significant price.
None of the conditions enumerated in paragraph 4(a)(ii) of the Policy are therefore satisfied, according to the Complainant, and the Respondent should be held to have no rights or legitimate interests in the disputed domain name.
The Complainant also contends that its DALKIA trademark is distinctive and widely used. The Respondent therefore either knew or ought to have known that the registration of the disputed domain name violated the Complainant’s rights. There is no explanation available for the registration of the disputed domain name other than that it was deliberately targeted for the purpose of taking advantage of the Complainant’s attendant goodwill.
The Complainant says that it is the Respondent’s duty to ascertain whether any trademark rights subsist in the relevant term, something a simple Google and Baidu search would have readily disclosed. Further, the Complainant points out that the email address used by the Respondent (domainhk@[...]) is linked to a number of other domain name cases and the Complainant therefore contends that the Respondent engages in a pattern of conduct targeting trademark owners, which is listed as a bad faith consideration factor in section 3.2.1. of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Given that the Complainant’s DALKIA trademark is distinctive and much used, the subsequent offering for sale of the disputed domain name is also said to demonstrate that the registration itself was in bad faith.
Further, as pointed out above, the Respondent offers the disputed domain name for sale on the parking page it redirects to. The Complainant sent a cease-and-desist letter to the Respondent by means of the online form. The Respondent answered “[…] Sorry we violated your company’s trademark rights, and I understand that you said, so this domain could be sold to your company at a low price. Only 2890 EUR. […]”. The Respondent therefore admitted its infringing use of the Complainant’s DALKIA trademark while at the same time offering to sell it to the Complainant at a considerable sum, clearly demonstrating bad faith use, or so the Complainant contends.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is identical to the Complainant’s DALKIA trademark.
B. Rights or Legitimate Interests
The Respondent is not known by the disputed domain name and has not demonstrated any legal rights in the distinctive term “dalkia”. The Complainant has not authorised the Respondent to use the DALKIA mark in any way or to incorporate it in a registered domain name. The only use the Respondent has made of the disputed domain name is for it to resolve to a parking page where a link offering it for sale is among others available. The Respondent admitted in correspondence with the Complainant that its registration of the disputed domain name was in violation of the Complainant’s trademark rights. Moreover, the disputed domain name carries a high risk of implied affiliation. See section 2.5.1 of WIPO Overview 3.0.
Therefore, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name consists entirely of a trademark that has been very extensively used by the Complainant. There is no legitimate reason before the Panel for the Respondent to have selected and incorporated this distinctive trademark in an identical domain name without authorisation from the Complainant. The subsequent conduct of the Respondent, offering to sell the disputed domain name to the Complainant at a considerable cost, is entirely consistent with a bad faith registration conceived of exactly for that purpose. The disputed domain name resolved to a parking page where it was offered for sale, and the Respondent’s intention to derive advantage from its registration was put into practice after it received the Complainant’s cease-and-desist letter. The price offered was likely far above out of pocket expenses. It appears more likely than not that the Respondent has engaged in the same practice before thus establishing a pattern of conduct demonstrative of bad faith registration and use.
Therefore, the Panel holds that the disputed domain name was registered and 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 disputed domain name <dalkia.biz> be transferred to the Complainant.
William A. Van Caenegem
Date: July 8, 2020