WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arkema France v. Xing Zhou
Case No. D2019-0418
1. The Parties
The Complainant is Arkema France of Colombes, France, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Xing Zhou of Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <arkema-fra.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2019. On February 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 22, 2019, 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 February 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 18, 2019. Apart from an email received on March 1, 2019 no formal response was filed with the Center.
The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on April 16, 2019. 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 following summary sets out the uncontested factual submissions made by the Complainant:
The Complainant is a company, incorporated in France, that is active in the chemical sector as a producer of, inter alia, fluorochemicals, technical polymers, thiochemicals, functional additives, industrial coatings, acrylics, hydrogen peroxide, organic peroxides, and molecular sieves.
The Complainant owns registered trademarks for ARKEMA across a number of jurisdictions, including but not limited to the Argentina, Brazil, Canada, Colombia, the European Union, France, India, Mexico, New Zealand, Republic of Korea, United States of America, and Venezuela, including the international registration number 848870 registered on February 23, 2005 (collectively, the “ARKEMA mark”). The Complainant has also registered marks incorporating the ARKEMA mark, such as “ARKEMA RENEWABLES”, in Canada, France and the United States of America.
In addition, the Complainant owns a domain name related to its ARKEMA mark, that being <arkema.com>.
The disputed domain name was registered on November 14, 2017. The disputed domain name is not in use as of the date of this decision, resolving to a parked page with links to unrelated third parties.
5. Parties’ Contentions
The Complainant contends that it has rights in the trademarks listed in section 4 above and has produced an extensive list of the relevant registration records.
The Complainant contends that the disputed domain name is identical or confusingly similar to its ARKEMA mark as if it is constituted entirely of the Complainant’s ARKEMA mark with the added element “-fra”. The Complainant further contends that the additional element “-fra” in the disputed domain name increases the risk of confusion, as it is a common abbreviation of the word “France”.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant contends that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s ARKEMA mark in domain names or in any other matter.
The Complainant further contends that the Respondent has registered the disputed domain name in bad faith. The Complainant submits that its ARKEMA mark is famous and predates the disputed domain name registration. As a result, the Respondent could not ignore the preexistence of the Complainant’s trademark rights and the Respondent must have been fully aware when selecting the disputed domain name.
Furthermore, the Complainant contends that the Respondent’s use of the email address “[...]@arkema-fra.com” to send emails to at least one employee of the Complainant gives rise to fraud as the sender misrepresented themselves as the Chief Financial Officer (CFO) of the Complainant at the time of the email. The Complainant also states that the CFO has further confirmed that he had never sent nor authorized that sending of that email nor the registration of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel is satisfied with the evidence adduced by the Complainant to establish its rights to the ARKEMA mark (and its associated ARKEMA RENEWABLES marks) through its extensive and numerous registrations in a variety of jurisdictions.
The Panel is guided by the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Under section 1.8 of the WIPO Overview 3.0, it states that:
“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”
The disputed domain name comprises the ARKEMA mark in its entirety followed by the additional element “fra” which this Panel accepts is a common abbreviation of the word “France”, which, this Panel observes, forms the latter part of the Complainant’s name and the Complainant’s place of incorporation. As such, this Panel agrees that the “fra” element thus constitutes a geographical term pursuant to section 1.8 of the WIPO Overview 3.0. The distinctive feature of the disputed domain name remains the ARKEMA mark and the additional word does not serve to distinguish the disputed domain name from the ARKEMA mark. This Panel is guided by similar decisions in BHP Billiton Innovation Pty Ltd v. Oloyi, WIPO Case No. D2017-0284 (<bhpbillitonusa.com>), Allianz SE v. IP Legal, Allianz Bank Limited, WIPO Case No. D2017-0287 (<allianzkenya.com>), Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768 (<playboyturkey.com>).
This Panel also accepts the Complainant’s submission that the addition of the hyphen between “arkema” and “fra” does not act to distinguish the disputed domain name from the ARKEMA mark and this Panel approves of the decision in Pier 1 Imports, Inc., Pier 1 Licensing, Inc., Pier 1 Services Company v. William Vaughan, WIPO Case No. D2008-1679 where the panel in that case held that: “The addition of a hyphen in the domain name is immaterial.”
Lastly, this Panel agrees that a gTLD indicator such as “.com” cannot be taken into consideration when judging confusing similarity and is guided by the decision in Foundation Le Corbusier v. Mercado M., WIPO Case No. D2004-0723.
As such, the Panel finds that the Complainant has proved that the disputed domain name is confusingly similar to the Complainant’s ARKEMA mark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
It is well settled that a complainant may put forward a prima facie case that the respondent lacks rights or legitimate interests in a domain name. The burden of production then shifts to the respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain name in order to rebut that prima facie case. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of WIPO Overview 3.0 and Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416.
The Panel is satisfied with the unrebutted evidence adduced by the Complainant in support of its prima facie case. Based on the absence of a response and the absence of any nexus between the disputed domain name and the Respondent’s name, the Panel could not find any justification, rights, or legitimate interests on the part of the Respondent to the disputed domain name. The notoriety of the Complainant’s ARKEMA mark would present a significant hurdle for the Respondent to justify rights or legitimate interests to the trademark without submitting compelling reasons to this Panel to conclude otherwise.
The Panel also takes cognizance that there have also been several UDRP decisions relating to the ARKEMA mark whereby the panels recognized the Complainant’s rights thereof. These include disputes involving the domain names <arkema-france.com>, <arkemafrance.com>; <arkema-eu.com>; <arkemaeu.com>; <arkema.ir>; <arkema-group.com>; <arkema-groupe.com>; <arkemagroups.com> and <arkemagroupinc.com>.
Further, there is also no evidence to indicate that the Respondent is known by the name “arkema-fra”, “arkema”, “fra” or any combinations thereof.
In the circumstances, the Panel is, therefore, satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant.
C. Registered and Used in Bad Faith
The Panel agrees with the contention by the Complainant that the Respondent had or should have had knowledge of the Complainant’s ARKEMA mark when it registered the disputed domain name. The factors that were taken into account to arrive at this conclusion include the date of registration of the disputed domain name which was much later than the date the Complainant registered the ARKEMA mark and the widespread use of the ARKEMA mark by the Complainant at an international level. This includes, for the avoidance of doubt, protection in China, the Respondent’s country of correspondence.
Indeed, the Panel takes cognizance of the many jurisdictions that the Complainant has registered their ARKEMA mark or variations thereof, with some marks having been registered as early as 2004. As such, the Panel is satisfied that the Respondent had or should have had knowledge of the reputation and goodwill of the ARKEMA mark when it sought to register the disputed domain name and by including the additional word “-fra” as an abbreviation of “France”, both the Complainant as well as the Complainant’s country of incorporation, the Respondent is attempting to misrepresent a connection with the Complainant when in fact no such connection existed.
In addition, the Respondent’s use of the Complainant’s CFO’s name along with the Complainant’s ARKEMA mark in the Respondent’s contact email address when there is no evidence of any such connection between the Respondent and either the Complainant or that CFO (or a similarly-named individual) casts significant doubt that the Respondent’s registration had been in good faith. This Panel approves of the approach in Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge, WIPO Case No. D2009-1017 with respect to emails impersonating a senior executive and this Panel makes a finding of bad faith.
The fact that an active website has not to date been linked with the disputed domain name does not preclude the Panel from making a finding of bad faith. Indeed, the Panel finds that the Respondent’s passive holding and the surrounding circumstances also establish use of the disputed domain name in bad faith (see e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
In light of the above, the Panel finds that bad faith has been demonstrated under paragraph 4(b) of the Policy and that the third element of paragraph 4(a) of the Policy has been met.
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-fra.com> be transferred to the Complainant.
Syed Naqiz Shahabuddin
Date: April 30, 2019