WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vallourec v. Richard Hajdu, Kasz-Han
Case No. D2020-2935
1. The Parties
The Complainant is Vallourec, France, represented by Casalonga Avocats, France.
The Respondent is Richard Hajdu, Kasz-Han, the Netherlands.
2. The Domain Name and Registrar
The disputed domain name <vallourec.ceo> is registered with Cronon AG Berlin, Niederlassung Regensburg (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2020. On November 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 9, 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 Registrar also disclosed that the registration agreement for the disputed domain name is Dutch. The Center sent an email communication to the Complainant on November 27, 2020, in English and Dutch, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Parties were also invited to submit their comments regarding the language of the proceeding. The Complainant filed an amended Complaint in English on December 3, 2020, and argued that the language of the proceeding should be conducted in English. The Respondent made no submission regarding the language of the proceeeding.
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 December 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 25, 2020.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on February 8, 2021. 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.
In relation to the language of the proceeding, the registration agreement appears to be in Dutch. However, the Complainant submits that the language of the proceeding should be English and has submitted its Complaint in that language. The Respondent has not answered the cease-and-desist letter of the Complainant, nor has he filed a Response or made any representation in relation to preferred language. The Respondent used a privacy shield service and the disputed domain name is identical to the distinctive mark of the Complainant, using also the “.ceo” extension, which represents an English language acronym for “Chief Executive Officer”. The Respondent resides in the Netherlands where knowledge of English is very widespread, as it is throughout the European Union. The Complainant points to this fact as well as to the fact that it is based in France and that the cost and inconvenience of translation would be very considerable.
In the circumstances the Panel determines that the language of the proceeding be English.
4. Factual Background
The Complainant is a global company concerned with tubes and pipes for oil and gas industries, with a reputation in France, the United States, the Russian Federation, Saudi Arabia, and other countries producing oil and gas. The Complainant has a number of registered trademarks, these being European Union trademark registration VALLOUREC No. 018004533 filed on December 21, 2018, and registered on September 13, 2019, for goods and services in classes 6, 9, 20, 35, 37, 38, 39, 40, and 42; International trademark registration No. 414689 registered on July 11, 1974, and duly renewed for covering goods and services in classes 6, 7, 9, 11, 12, 17, 19, 20, 37, 40, and 42 and providing protection notably in the United Kingdom, Austria, Benelux, Switzerland, Germany, Spain, Hungary, Italy, and Romania; and, European Union trademark registration VALLOUREC No. 011392008 registered on June 18, 2013 for goods and services in classes 6, 7, 9, 11, 20, 37, 40, 41, and 42.
The Complainant also owns a number of domain names, including <vallourec.com> registered on January 15, 2000.
The disputed domain name was registered on August 28, 2020, and redirects to a Registrar’s parking page stating the website is not available.
5. Parties’ Contentions
The Complainant points out that the disputed domain name is identical to its VALLOUREC trademark, the extension “.ceo” being irrelevant to the comparative exercise. The Complainant says that the likelihood of confusion between the Complainant’s trademarks and the disputed domain name is enhanced by the well-known character of the trademark and company name VALLOUREC in the field of oil and gas. The identical nature of the disputed domain name is said to increase the likelihood of confusion and demonstrate that the Respondent intends to cause and is likely to cause confusion. In any case, incorporating a trademark in its entirety is enough to meet the first requirement of confusing similarity.
A cease and desist letter to the Respondent has gone unanswered, which is said by the Complainant to highlight the fact that the Respondent’s aim was to reap profit from the disputed domain name despite not having any legitimate interest in it. The Complainant asserts that it has no relationship with the Respondent, nor has it given any license, permission or authorization to use VALLOUREC to the Respondent, who himself has no proper right or personal interest in the trademark. A search conducted on the European Union Intellectual Property Office trademarks database revealed no trademarks filed or registered in the name of the Respondent. The disputed domain name is not currently used in relation to any website, the Complainant points out. The Complainant submits that on the evidence therefore, there is no basis for any finding of rights or legitimate interests in favour of the Respondent.
The Complainant further emphasises that its VALLOUREC trademark was registered well before the disputed domain name and that it has never authorized use of its mark. Its trademarks are closely associated with its own presence on the web and given that the Respondent is associated with the metallurgical industries the Complainant says it is highly unlikely he would not be aware of the Complainant’s reputation and mark. Therefore, according to the Complainant, it is clear that the Respondent sought to benefit from the Complainant’s reputation when he registered the disputed domain name, in a manner that is unfair and misleading. Not responding to any communication from the Complainant is said to be a further indication of bad faith. All the Respondent did was passively hold the disputed domain name, which amounts to bad faith inactive use. It prevented the Complainant from legitimately reflecting its trademark and its corresponding commercial activities on the Internet.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Noting the Complainant’s lengthy trademark record referenced in Section 4, and the continuous use thereof, the Panel finds that the Complainant has rights in VALLOUREC. The disputed domain name is identical to the Complainant’s VALLOUREC trademark.
Accordingly, the Complainant has established the first element of the Policy.
B. Rights or Legitimate Interests
The Respondent did not respond to any communication from the Complainant and did not file a response. There is no indication before the Panel that the Respondent is known by the disputed domain name or has any legal rights in the mark VALLOUREC. The goodwill in that mark belongs exclusively to the Complainant, who has not authorized its use by the Respondent in any way. The disputed domain name resolves to a registrar page and has not been used to establish any activity, legitimate or otherwise. The Panel sees no reason why the Respondent should register a domain name incorporating a trademark as distinctive as VALLOUREC. The disputed domain name is identical to the Complainant’s trademark, and hence carries a high risk of implied affiliation. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.5.1.
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 trademark VALLOUREC, to which the disputed domain name is identical, is highly distinctive and enjoys a substantial reputation in multiple jurisdictions in relation to the oil and gas extraction industries. There is some indication that the Respondent has a connection with metallurgical industries which falls within the area of activity of the Complainant (tubes and pipes). A simple Internet search of the term VALLOUREC immediately reveals the Complainant’s rights in that term and the considerable goodwill attached to it. The registration and use of the VALLOUREC marks by the Complainant substantially predate registration of the disputed domain name.
Further, the disputed domain name is inactive, as it leads only to a registrar page. There is no indication that the Respondent uses or intends to use the disputed domain name to any end. The only possible explanation for his decision to register the disputed domain name lies in his intention of turning its confusing similarity to the Complainant’s marks to account in a manner that is abusive. Clearly, the Respondent intended to take advantage of the fact that the trademark was not registered in the “.ceo” Top-Level Domain. It is close to impossible to imagine any good faith use of a domain name such as this, undifferentiated as it is from the distinctive VALLOUREC trademark.
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 <vallourec.ceo> be transferred to the Complainant.
WiIliam A. Van Caenegem
Date: February 22, 2021