WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ARKEMA FRANCE v. Kasz-Han, Richard Hajdu
Case No. D2021-0149
1. The Parties
The Complainant is ARKEMA FRANCE, France, represented by In Concreto, France.
The Respondent is Kasz-Han, Richard Hajdu, the Netherlands.
2. The Domain Name and Registrar
The disputed domain name <arkema.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 January 19, 2021. On January 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 21, 2021, 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 8, 2021, 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 12, 2021.
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 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 16, 2021.
The Center appointed Geert Glas as the sole panelist in this matter on April 13, 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.
The Panel refers to paragraphs 10 and 11 of the Rules which set up the general powers of the Panel on the language of the procedure. To the best of the Complainant’s knowledge, the language of the registration agreement is German, and the Registrar confirmed that the language of the Registration Agreement is Dutch. However, the Complaint was submitted in English. To this end, the Panel notes the silence of both the Respondent and the Registrar to provide further information about the Respondent’s identity and the language(s) it is familiar with. The Panel also notes the fact that the Complainant is a French company and chose English as the language of complaint, rather than German, in order to ensure a smooth communication with the Respondent who resides in the Netherlands. Given that English is the most widely used foreign language in the Netherlands, and noting that the Center’s communications in this matter have been both in English and Dutch, and the Respondent was hence given the opportunity to comment regarding the Language of Proceeding (and that the Respondent did not do so), the Panel finds that English is the language in which the Decision is to be issued.
4. Factual Background
The Complainant, ARKEMA FRANCE, is a French company and a world-leader in the field of specialty materials. The Complainant offers a wide range of products, including paints, adhesives, coats, glue, fiber, resins, rough materials and finished materials, in more than 55 countries throughout the world.
The Complainant holds a wide range of International, European and national trademarks that consist of or include the word “arkema”, among which the following:
International word mark ARKEMA, registration No. 847865, registered on November 30, 2014. in classes 1, 2, 3, 4, 5, 16, 17, 37, 38, 39, 40, 41, 42 and 45;
European Union word mark (“EUTM”) ARKEMA, registration No. 004181731, registered on February 9, 2006, in classes 1, 2, 3, 4, 5, 7, 9, 11, 12, 16, 17, 19, 20, 22, 25, 27, 35, 36, 37, 38, 40, 41, and 42;
European Union word mark ARKEMA INNOVATIVE CHEMISTRY, registration No. 011272366, registered on February 28, 2003, in classes 1, 17 and 42;
European Union semi-figurative trademark, registration No. 004306437, registered on August 7, 2009, in classes 1, 16 and 17; and
European Union semi figurative trademark, registration No. 011186285, registered on February 12, 2013, in classes 1, 17 and 42.
The Complainant also owns a number of domain names, including <arkema.com>, registered on May 21, 2001. This domain names gives access to the Complainant’s global website (“https://www.arkema.com/”).
The disputed domain name was registered on October 2, 2020, and redirects to a parking page stating that the page is not working.
5. Parties’ Contentions
The following is a summary of the Complainant’s contentions.
The Complainant requests that the disputed domain name be transferred to it on the following grounds:
The Complainant claims that the disputed domain name is identical to its registered trademarks containing the word “arkema”. The disputed domain name <arkema.ceo> reproduces the ARKEMA word mark in its entirety and Panels usually disregard the domain name suffix, such as “.ceo”, in evaluating confusing similarity. The Complainant also alleges that the “.ceo” generic Top-Level Domain (“gTLD”) refers to the world of companies and entrepreneurship, which in fact increases the likelihood of confusion with a
well-known company such as ARKEMA FRANCE.
The Complainant further contends that the Respondent does not have rights or legitimate interests in respect of the disputed domain name, given that the Respondent did not register or does not own any trademark rights corresponding to the “arkema” denomination and that the Respondent is not commonly known by the disputed domain name. Moreover, the Complainant is the sole owner of European and international trademarks containing the word “arkema”, and it has not authorized the Respondent to use any of its trademarks. Finally, because the disputed domain name <arkema.ceo> remains unused by the time of the complaint, the Complainant considers that the Respondent is not (making serious preparations to) using the disputed domain name in connection with a bona fide offering of goods or services and is also not making a legitimate noncommercial or fair use of the disputed domain name <arkema.ceo>.
Finally, the Complainant argues that the disputed domain name was registered and is being used in bad faith. According to the Complainant, the reservation of a domain name identical to the ARKEMA trademarks without having a right to such domain name or having legitimate interests in this respect, demonstrates in itself that the Respondent is in bad faith. The Complainant further states that such bad faith may be presumed as the trademark has a highly distinctive character and has acquired a reputation in the industry. The Complainant also argues that it is very unlikely that the Respondent chose the domain name <arkema.ceo> without any knowledge of the existence of the Complainant and that the Respondent is therefore engaged in“passive holding of the disputed domain name, because it hoped to capitalize on the reputation of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the disputed domain name. As the UDRP proceedings are administrative, the standard of proof is the balance of probabilities.
Thus, for the Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy, that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith.
The Panel will therefore deal with each of these requirements.
The Panel also notes that it has undertaken limited independent research because of the limited information provided about the Respondent, in particular to investigate information on its identity and its legitimate interests in registering the disputed domain name. The Panel has made its investigation in accordance with paragraph 10 of the Rules. Such an approach is consistent with a majority of panel views about the capacity of a panel to undertake independent research (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, section 4.5). The Panel has undertaken this research only to the extent necessary to clarify matters of public record on which both the Complainant and Respondent were silent.
A. Identical or Confusingly Similar
The disputed domain name is <arkema.ceo>.
The Complainant has demonstrated that it owns numerous national, European and international trademarks consisting of the word “arkema”.
The disputed domain name consists of the Complainant’s ARKEMA word mark in its entirety, without alterations nor additions. Several UDRP panel decisions have stated that wholly incorporating a complainant’s registered trademark in a domain name is sufficient to establish confusing similarity (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) section 1.7; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206; Ice House America, LLC v. Ice Igloo, Inc., WIPO Case No. D2005-0649).
Moreover, it is a well-established principle that the gTLD (such as “.ceo”) may be disregarded when considering the issue of whether a domain name is identical or confusingly similar to a complainant’s trademark (section 1.11.1, WIPO Overview 3.0). This principle was also explicitly confirmed for the gTLD “.ceo” (Arcelormittal (SA) v. Richard Hajdu, Kasz-Han, WIPO Case No. D2020-2593; Andreas Stihl AG & Co KG v. Andrew Davis, WIPO Case No. D2014-0576). The disputed domain name is therefore identical to the Complainant’s ARKEMA trademarks.
Accordingly, the Panel finds that the first element under paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, the consensus view is that, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (section 2.1, WIPO Overview 3.0; Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Dow Jones & Company, Inc., (First Complainant) and Dow Jones LP (Second Complainant) v. The Hephzibah Intro-Net Project Limited (Respondent), WIPO Case No. D2000-0704).
Based on the evidence submitted by the Complainant, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
In accordance with paragraph 4(c) of the Policy, such finding is based on the entire absence of evidence that the Respondent:
(i) used or was making 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 (section 2.2, WIPO Overview 3.0), in particular as <arkema.ceo> remains unused by the time of this decision;
(ii) has been commonly known by the disputed domain name, in particular because the only information available about the Respondent’s identity (i.e., Richard Hajdu and Kasz-Han) does not suggest any correlation with the word “arkema” (section 2.3, WIPO Overview 3.0); and
(iii) is making a legitimate noncommercial or fair use of the domain name.
Furthermore, the fact that a respondent engages in a pattern of abusively registering domain names corresponding to marks held by third parties is considered to be illustrative of lacking legitimate rights and interests (section 2.5.2.(iv) and (v) and 2.5.3, WIPO Overview 3.0). In this context, the Panel observes that on two occasions in 2020 (see Vallourec v. Richard Hajdu, Kasz-Han, WIPO Case No. D2020‑2935 (<vallourec.ceo>) and Arcelormittal (SA) v. Richard Hajdu, Kasz-Han, supra (<arcelormittal.ceo>)), domain name registrations by the Respondent were ordered by UDRP panels to be transferred in view of the bad faith with which the Respondent had registered or was using them. It should be noted that domain names also contained, in both cases, the “.ceo” gTLD.
Moreover, when the gTLD is descriptive (such as “.ceo”) or relates to terms associated with the complainant (such as, as the case may be, the CEO of ARKEMA FRANCE), it is generally accepted that the respondent’s selection of such gTLD would tend to support a finding that the respondent obtained the domain name to take advantage of the complainant’s mark and as such that the respondent lacks rights or legitimate interests in the domain name (section 2.14, WIPO Overview 3.0). Hence, the Panel believes that the “.ceo” gTLD of the disputed domain name is particularly likely to support an absence of rights or legitimate interests.
Given the above and the fact that the Respondent did not file a response to present any plausible explanation for its registration of the disputed domain name, the Panel considers that the Complainant has satisfied its burden of proof under this element of the Policy.
Accordingly, the Panel finds that the second element under paragraph 4(a)(ii) of the Policy has been established.
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) refers to the question of whether the disputed domain name has been registered and is being used in bad faith by the Respondent.
Paragraph 4(b) of the Policy describes some circumstances which, if found to exist, will be evidence of the registration and use of the domain name in bad faith. Among these circumstances is the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a 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 the website or location or of a product or service on the website or location (paragraph 4(b)(iv) of the Policy). Registering the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct, is another circumstance suggesting bad faith (paragraph 4b(ii) of the Policy).
(a) Registered in bad faith
The Complainant has been benefitting from trademark protection for its ARKEMA name from 2005 onwards. Moreover, the Complainant’s ARKEMA trademarks are distinctive and enjoy a substantial reputation in the specialty materials industry.
Panels have consistently found that the mere registration of a domain name that is identical to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith (section 3.1.4, WIPO Overview 3.0; Barclays Bank PLC v. PrivacyProtect.org / Sylvia Paras, WIPO Case No. D2011-2011). This is particularly true where the registered trademark has a highly distinctive character and has acquired a certain reputation. In this context, the Panel observes that the non-descriptive ARKEMA trademarks are well known and that all the results featured on the first page of Google search results when searching for “arkema” are linked to the Complainant (section 3.2.2, WIPO Overview 3.0). Therefore, the Respondent cannot reasonably dispute that it knew, or should have known, the ARKEMA trademarks when registering the disputed domain name. The fact that the Respondent chose to register the disputed domain name anyway and opted not to offer any explanation in response to the Complaint, strongly suggests that the decision to register <arkema.ceo> was made in bad faith.
Moreover, the Respondent’s pattern of bad faith conduct should also be taken into account. Indeed, previous UDRP panels have held that two instances of abusive domain name registration are sufficient to induce bad faith (section 3.1.2, WIPO Overview 3.0). Given that the Respondent has been held to have made bad faith registrations on two distinct occasions (Vallourec v. Richard Hajdu, Kasz-Han, supra (<vallourec.ceo>) and Arcelormittal (SA) v. Richard Hajdu, Kasz-Han, supra (<arcelormittal.ceo>), the Panel is of the opinion that the Respondent is involved in a pattern of bad faith registrations.
In light of the above, the Panel finds that the Respondent registered the disputed domain in bad faith.
(b) Used in bad faith
The disputed domain name is inactive as it redirects to a parking page stating that the page is not working.
Panelists have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding (section 3.3, WIPO Overview 3.0; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574). As indicated earlier, there is no indication that the Respondent uses or intends to use the disputed domain name to any end. In this context, it can be said that any use to which the disputed domain name may be put by the Respondent is likely to be misleading.
This is particularly true given the descriptive nature of the “.ceo” gTLD. Indeed, the Panel understands that this gTLD is generally meant to be used by CEO’s and other leaders. As the Respondent is not the CEO of Arkema France, the Panel believes that the use of the disputed domain name is likely to give the false impression that the Respondent is the CEO of ARKEMA FRANCE. It is therefore implausible that the disputed domain name could ever be put to good faith use by the Respondent.
Moreover, the Panel observes the presence of additional factors that also support the finding of bad faith in relation to the passive holding of the disputed domain name. Such factors relate to the degree of distinctiveness and reputation of the ARKEMA trademarks, and the failure of the Respondent to submit a response (section 3.3, WIPO Overview 3.0).
Consequently, the Panel finds that the Respondent has been using the disputed domain name in bad faith.
Therefore, the Panel concludes that, on the balance of probabilities, it is shown that the disputed domain name was registered and is being used in bad faith. In light of the above, the third element under paragraph 4(a)(iii) of the Policy has been established.
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 <arkema.ceo> be transferred to the Complainant.
Date: April 27, 2021