WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arkema France v. Cameron Jackson
Case No. D2016-2131
1. The Parties
The Complainant is Arkema France of Colombes, France, represented by In Concreto, France.
The Respondent is Cameron Jackson of Kingston, New South Wales, Australia.
2. The Domain Name and Registrar
The disputed domain name <arkema.lol> (the “Domain Name”) is registered with Uniregistrar Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2016. On October 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 20, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 October 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 18, 2016.
The Center appointed Ellen B Shankman as the sole panelist in this matter on November 25, 2016. 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 date of the Domain Name registration was confirmed by the Registrar to be August 10, 2016.
The Complainant provided evidence of multiple trademark registrations for the mark ARKEMA including, inter alia, European Union Trade Mark (“EUTM”) No. 004181731, (registered on February 9, 2006) that predate the date of the Domain Name registration for a variety of related goods and services.
The Panel also conducted an independent search to determine that the Domain Name is currently active and resolves to a parking page maintained by the Registrar and confirmed the information regarding the EUTM registration.
Since the Respondent did not respond, the facts regarding the use and fame of the Complainant’s mark are taken from the Complaint and are generally accepted as true in the circumstances of this case.
5. Parties’ Contentions
The Complainant alleges that it is present in 50 countries around the world and holds, to date, 136 production sites, including 59 in Europe, 38 in North America, 39 in Asia and 5 in the rest of the world, and commercial subsidiaries in about fifty countries. The Complainant is composed of three businesses hubs: high-performance materials, industrial specialties and coating solutions.
The Complainant further alleges that through substantial investments, the company Arkema has developed a large clientele relating to Arkema brands, which have achieved a reputation and a certain fame in its field, chemistry, of which it is the leader in France. It also is alleged that there is trademark protection that covers Australia, where Respondent resides.
The Complainant claims its website “www.arkema.com” has been registered since May 21, 2001, and thus was available to the Respondent.
The Complainant further alleges that the Respondent has engaged in a pattern of bad-faith behavior and has been known to register other well-known brands, which attest to the fact that he was well aware of Complainant’s brand:
“This knowledge of the prior rights of the applicant is corroborate by the fact that Mr. Cameron Jackson has also registered many domain names incorporating known corporate brands, with whom he seems to have no link:
- <pringlestortillas.com> registered on November 29, 2015.
- <masterchefau.com> registered on June 28, 2016.
- <harvardbrainscience.com> registered on November 26, 2015.
- <mazdatirecentre.com> registered on November 23, 2015.
- <nutellalove.com> registered on November 22, 2015.
- <lorealadvancedhaircare.com> registered on November 20, 2015.
[..] This is supported by the fact that the Respondent has been found by previous panels to have engaged in a pattern of registering domain names to prevent the owners of marks from registering them, which reinforces the fact that the registration and use of the domain name at issue have been made in bad faith: WIPO Case No. D2007-1290, WIPO Case No. D2005-0909, WIPO Case No. D2007-0700, WIPO Case No. D2007-1022, WIPO Case No. D2008-0872, WIPO Case No. D2008- 1338, WIPO Case No. D2015-0090, WIPO Case No. D2015-1782, WIPO Case No. D2015-2214, WIPO Case No. D2015-2226.”
To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark ARKEMA alone and/or as part of a device or with other words, in respect of a wide range of goods and services, in multiple jurisdictions. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the generic Top-Level Domain (“gTLD”) “.lol” does not significantly affect the assessment that the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. That continued use of the Domain Name would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has shown that it has registered trademark rights for ARKEMA, and that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the addition of the gTLD “.lol” of the Domain Name does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark.
See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.”
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that he is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its mark.
The Panel finds that no license or authorization of any other kind has been given by the Complainant to the Respondent, to use the Complainant’s trademark, and agrees in the particular context of this case with Complainant’s argument and the finding in Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055 in which the panel stated that: “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent”. Further, the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. This was stated by the panel as a factor in the finding of non-legitimate interest with the respondent in Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds compelling factual and circumstantial evidence in the record that the Respondent knew of the Complainant’s mark when he registered the Domain Name. The Panel agrees with the Complainant’s claims and finds that the Respondent has registered the Domain Names with knowledge of the Complainant’s trademark and that the continued holding of the Domain Names is in bad faith. This is consistent with the holding in Pfizer Inc. v. Legal Dept, Barry McMahon and Pfizer ltd, Sys Admin, WIPO Case No. D2013-2046. It has been held in previous UDRP decisions that knowledge of a corresponding mark at the time of the domain name’s registration can suggest bad faith. See LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; Caixa D’Estalvis i Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464; Bartercard Ltd & Bartercard International Pty Ltd. v. Ashton-Hall Computer Services., WIPO Case No. D2000-0177.
Even where the Domain Name resolves to a more subtle ‘welcome’ “parking page, the Panel does not believe that it changes the finding. As stated in paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), regarding the question of whether there can be use in bad faith when the domain name is not actively used and there is passive holding, the consensus view is that it can: “With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. […] Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, [and] no response to the complaint having been filed […]. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere ‘parking’ by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals).” See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574.
Previous UDRP panels have already considered that passive holding of a disputed domain name can satisfy the requirements of paragraph 4(a)(iii) of the Policy, and that in such cases the panel must give close attention to all the circumstances of the respondent’s behaviour. See Telstra Corporation Limited v. Nuclear Marshmallows, supra. Other UDRP panels have held that passive holding can be sufficient to constitute bad faith. See Redcats S.A. and La Redoute S.A. v. Tumay Asena, WIPO Case No. D2001-0859 and Forte Communications, Inc. v. Service for Life, WIPO Case No. D2004-0613.
The Panel finds compelling evidence in the record that the Respondent is a repeat bad actor, and that his conduct of registering multiple other well-known brands clearly demonstrates registration and use in bad faith.
Given the evidence of the Complainant’s prior rights in the mark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant’s trademark, and the pattern of other improper/deceptive registrations of domain names of other known trademarks, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under paragraph 4(a)(iii) 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 Domain Name <arkema.lol> be transferred to the Complainant.
Ellen B Shankman
Date: December 5, 2016