WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arkema France v. Swapnil S Mashalkar
Case No. D2021-1479
1. The Parties
The Complainant is Arkema France, France, represented by In Concreto, France.
The Respondent is Swapnil S Mashalkar, India.
2. The Domain Name and Registrar
The disputed domain name <arkema.tech> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2021. On May 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 13, 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 May 18, 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 May 20, 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 May 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2021.
On May 26, 2021, the Center received three email communications from the Respondent expressing its willingness to settle. On that same day, the Center informed the Parties if they would like to explore settlement options, the Complainant should submit a request for suspension by May 31, 2021. On May 31, 2021, upon receipt of the Complainant’s request for suspension the Center notified the Parties that the proceeding would be suspended until June 30, 2021. There were email exchanges between the Parties between June 1 and 21, 2021. On June 21, 2021, upon receipt of the Complainant’s request for reinstitution, the Center notified the Parties that the proceeding was reinstituted as of June 21, 2021. Accordingly, the due date for Response was July 6, 2021.
The Respondent did not submit any formal response. Accordingly, the Center notified the Parties that it would proceed to the panel appointment on July 7, 2021. The Center received two email communications from the Respondent asking procedural questions on July 8, 2021.
The Center appointed Andrew F. Christie as the sole panelist in this matter on July 16, 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.
4. Factual Background
The Complainant was registered as a company in France in February 1981. As of 2020, the Complainant is present in more than 55 countries, including India, with 147 production plants, over 20,000 employees, and approximately EUR 7.9 billion in sales. The Complainant is a leader in materials science, offering a wide range of products in various fields, including paints, adhesives, coats, glue, fiber, resins, rough materials and finished materials for both general industry and consumer goods. The Complainant produces, resells and distributes such materials and is also a leader in the research and development of such materials.
The Complainant is the owner of a wide range of International, European Union and national trademarks, including International Trademark Registration No. 847865 for the word trademark ARKEMA (registered on November 30, 2004), and Indian Trademark Registration No. 1325583 for the word trademark ARKEMA (registered on December 14, 2004).
The Complainant is the owner of multiple domain names used to promote its activities and products, including <arkema.com> (registered on May 21, 2001) and <arkema.info> (registered on July 12, 2004).
The disputed domain name was registered on March 15, 2021. As at the date of this decision, it resolves to a website containing what appear to be pay-per-click links to various websites that are unrelated to the Complainant’s business.
In response to the Respondent’s indication of its willingness to settle the dispute, the Complainant sent an email on June 1, 2021, requesting the Respondent to confirm that it was willing to transfer the disputed domain name free of charge. The Respondent replied on June 4, 2021, stating: “We purchased the same domain name for a purpose. For name finalisation, for branding perspective, for getting domain and doing related stuff we spent time, money and effort. Now after receiving your email, we stopped all these activities. And now we need to re-engage in the same stuff again to fulfill our purpose, if we leave this domain / name. Hence in order to leave this domain, we expect a sort of reimbursement - I propose it should be equivalent to USD 9500.”
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical to a trademark in which it has rights because: (i) the disputed domain name reproduces the Complainant’s ARKEMA trademark in its entirety; (ii) UDRP panels usually disregard the domain name suffix in evaluating confusing similarity, as this element is not likely to avoid the risk of confusion that may exist between the signs in question; and (iii) concerning the generic Top-Level Domain (“gTLD”) “.tech”, it refers to technology and innovative sectors which dramatically increases the likelihood of confusion because the Complainant’s baseline is innovative chemistry.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name because: (i) the Respondent did not acquire any European Union, International or Indian trademark rights for ARKEMA that would justify the reservation of the disputed domain name; (ii) the Respondent has not been commonly known by the disputed domain name; (iii) the Respondent is the founder and CEO of a digital company called ATS (Aarya Tech Solutions), and there is no link between it and the Complainant or its ARKEMA trademark on the ATS website at “www.aaryatechindia.in” that could justify a right or legitimate interest in the disputed domain name; (iv) the Complainant is the sole owner of the ARKEMA trademark in India, and it has not authorized, licensed or permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating them; (v) as the disputed domain name remained parked up to the time of the Complaint, there is no evidence that the Respondent has made serious preparations or efforts for the offering of goods or services; (vi) it is clear that the Respondent is wanting to capitalize on the notoriety of the Complainant by the pay-per-click system; and (vii) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the registration of a domain name identical to a trademark in which the Complainant has rights, and in which the Respondent has no rights or legitimate interests, in itself demonstrates that the Respondent is acting in bad faith; (ii) ARKEMA is not a descriptive term, a commonly used expression, or a word that would be instantly understood in the field of industry, and it is thus very unlikely the Respondent chose the disputed domain name without any knowledge of the company name, domain names or trademarks of the Complainant; (iii) a simple Google search would have forwarded the Respondent to the website of the Complainant, whose rights are old and well known; (iv) because the gTLD of the disputed domain name directly refers to an activity of the Respondent, there is a risk that in the future the Respondent will seek to capitalize on the reputation of the Complainant for the Respondent’s own activity; and (v) the only proposed settlement by the Respondent is the request of an inordinate amount of money for the disputed domain name.
The Respondent did not formally reply to the Complainant’s contentions.
However, the Respondent did make various assertions in communications with the Complainant during the settlement negotiations, including that: (i) the disputed domain name was purchased “for a purpose” (although the actual purpose was not specified); (ii) the disputed domain name was chosen “based on a strong numerological context”; (iii) subsequent to registration of the disputed domain name, “branding, logo and building a website was in process but due to the pandemic it took some time” (the Respondent attached images of an “Arkema” logo on which it claimed its branding consultant was working); and (iv) the Respondent purchased the disputed domain name also because it was available.
6. Discussion and Findings
A. Identical or Confusingly Similar
Once the gTLD “.tech” is ignored (which is appropriate in this case), the disputed domain name consists of the whole of the Complainant’s registered word trademark ARKEMA. Accordingly, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its ARKEMA word trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. At the time of this decision, the disputed domain name resolves to a website containing apparent pay-per-click links to third party websites for various goods and services unrelated to the Complainant. Given the identity or confusing similarity of the disputed domain name to the Complainant’s trademark and the absence of any relationship between the Respondent and the Complainant, such a use of the disputed domain name is neither a bona fide use nor a legitimate noncommercial or fair use of the disputed domain name. Although the Respondent emphasized several times that the disputed domain name was purchased “for a purpose”, it has never identified that purpose. Therefore, the Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has failed to rebut this. Accordingly, the Panel finds 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 was registered many years after the Complainant first registered its ARKEMA word trademark. It is inconceivable that the Respondent registered the disputed domain name ignorant of the existence of the Complainant’s trademark, given that the Complainant’s trademark is distinctive and has been heavily used and that the disputed domain name consists solely of it plus a gTLD apparently related to the Complainant’s nature of business. During the process of settlement negotiations, the Respondent offered to sell the disputed domain name to the Complainant for a sum of USD 9,500, which is an amount clearly in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name. Furthermore, as the disputed domain name resolves to a website containing apparent pay-per-click links to third-party websites, the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. By virtue of paragraphs 4(b)(i) and 4(b)(iv), respectively, of the Policy, these circumstances are evidence of the registration and use of the disputed domain name in bad faith. Accordingly, the Panel finds that the disputed domain name has been registered and is being 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, <arkema.tech>, be transferred to the Complainant.
Andrew F. Christie
Date: July 30, 2021