ARBITRATION
AND
MEDIATION CENTER
ADMINISTRATIVE PANEL DECISION
Arkema France v. Robert Greco/Domains By Proxy, LLC
Case No. D2013-0650
1. The Parties
Complainant is Arkema France of Colombes, France, represented by Fross Zelnick Lehrman & Zissu, PC,
United States of America.
Respondent is Robert Greco of San Francisco, California, United States of America; Domains By Proxy,
LLC of Scottsdale, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <arkema-group.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 April 9, 2013. On
April 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On April 12, 2013, 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(a) and 4(a), the Center formally notified Respondent of the
Complaint, and the proceedings commenced on April 12, 2013. In accordance with the Rules, paragraph
5(a), the due date for Response was May 2, 2013. Respondent did not submit any response. Accordingly,
the Center notified Respondent’s default on May 3, 2013.
The Center appointed Mary Padbury as the sole panelist in this matter on May 21, 2013. 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 due date for decision was extended to July 14, 2013.
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4. Factual Background
Complainant is a French company formed in 2004 which has offices in 40 countries, employing over 13,800
employees. Complainant has 80 industrial facilities in Europe, North America and Asia and has sales
subsidiaries in every region of the world. Complainant is organised into three business segments: High
Performance Materials, Industrial Specialities and Coating Solutions. Complainant makes and sells a wide
variety of products including flurochemicals, technical polymers, thiochemicals, functional additives, industrial
coatings, acrylics, hydrogen peroxide, organise peroxides and molecular sieves.
In connection with its businesses, Complainant has obtained registrations for its ARKEMA trademark in
United States Registration Nos. 3,082,135 and 3,082,057 from April 18, 2006. Complainant also has
registrations in Canada, Mexico, Argentina, Brazil, Colombia, Bolivarian Republic of Venezuela, France,
India, Republic of Korea, New Zealand, Norway and Sweden and some Community Trademark registrations
with the earliest dating from 2004. Complainant has registered <arkema.com> as a domain name.
The disputed domain name was created on January 21, 2013.
5. Parties’ Contentions
A. Complainant
Complainant’s basis for its Complaint is its use, registration and ownership of the ARKEMA trademark, as
well as numerous domain names incorporating the ARKEMA trademark.
Complainant contends that, through its significant expenditures of time, money and effort, Complainant has
developed substantial goodwill in the ARKEMA trademark and its ARKEMA trademark has become famous
and well-known throughout the industry.
Complainant contends that the disputed domain name is confusingly similar to the trademark in which
Complainant has rights and that the generic Top Level Domain (gTLD) “.com” cannot be taken into
consideration in judging confusing similarity and that the incorporation of its trademark in its entirety is
sufficient. Complainant also asserts that Respondent’s registration of the disputed domain name attempts to
take advantage of the fact that Complainant uses the term "Arkema Group" to refer to the collection of
companies that make up the organization around the world. Moreover, Complainant contends that the
insertion of a hyphen does not diminish confusing similarity.
Complainant contends that Respondent registered the disputed domain name to perpetrate a fraud in that
someone falsely claiming to be Mr. Greco, the Treasurer of Arkema, Inc., used the email address
[…]@arkema-group.com in an attempt to purchase video projectors and external hard drives and other items
valued at over USD 40,000 using bank account information and credit references from Arkema Inc. and its
facility in King of Prussia, Pennsylvania. Though Mr. Greco is actually the name of Complainant's Treasurer,
the real Mr. Greco has no knowledge of Respondent’s activities and did not send the emails attached to the
Complaint. Similarly, Complainant does not have an employee named Ms. Mendez to whom the goods were
to be shipped.
Complainant contends that the website associated with <arkema-group.com> is merely a place-holder
website and that the disputed domain name was only registered by Respondent for use as an email server to
send fraudulent emails such as the one from […]@arkema-group.com referred to above.
Complainant sent a cease and desist letter to the registrant of the disputed domain name on March 19, 2013
to which there was no response.
Given that Complainant's adoption and extensive use of the ARKEMA trademark predates Respondent's
registration of the disputed domain name, Complainant contends that the burden is on Respondent to
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establish its rights or legitimate interests in the disputed domain name and that Respondent cannot
demonstrate or establish any such right or legitimate interest.
Complainant contends that Respondent has no connection or affiliation with Complainant and has not
received any license or consent, express or implied, to use Complainant’s trademark in domain names or in
any other manner.
Complainant contends that Respondent's only use of the disputed domain name is in connection with an
email server used to place a fraudulent order for video projectors and external hard drives using the credit
history and references of Complainant, as described above, in order to confuse various vendors so that they
would sell supplies worth over USD 40,000 to Respondent but bill Complainant. Complainant contends that
such use demonstrates neither a bona fide offering of goods or services nor a legitimate interest.
Complainant asserts it is likely that an unsuspecting retailer would be willing to sell such equipment to
Respondent based on Complainant’s credit information and not realize that they were not communicating
with an official representative of Complainant.
Moreover, Complainant contends that Respondent’s non-use of the disputed domain name for any legitimate
commercial purpose, is itself bad faith use in view of the renown of the ARKEMA mark and absence of likely
legitimate uses by an unauthorized party like Respondent.
Complainant contends that ARKEMA marks are well known within the industrial specialties, high
performance materials, and coating solutions industries and enjoy widespread international recognition.
Complainant further contends that, that fact, combined with Respondent’s deliberate effort to impersonate
employees of Complainant, make it inconceivable that Respondent was unaware of ARKEMA mark when it
registered the disputed domain name. The Complainant states that the mere fact that Respondent
registered the confusing similar disputed domain name without authorization is, in and of itself, evidence of
its bad faith registration.
Based on the foregoing, Complainant contends that it has established that (i) the disputed domain name is
identical and/or confusingly similar to Complainant’s well-known ARKEMA marks; (ii) Respondent has no
right or legitimate interest in the disputed domain name; and (iii) Respondent registered and is using the
disputed domain name in bad faith.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The panel must decide a complaint on the basis of the statements and documents submitted and in
accordance with the Policy, Rules and Supplemental Rules. Complainant has the onus of proving three
elements:
(i)
that the disputed domain name is identical or confusingly similar to a trademark or service mark in
which Complainant has rights;
(ii)
that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii)
that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <arkema-group.com> is confusingly similar to the registered
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trademark ARKEMA owned by Complainant. Complainant’s trademark has been adopted in its entirety and
the additions of the gTLD “.com”, the description “group” and a hyphen do not change this conclusion.
B. Rights or Legitimate Interests
The Panel must decide whether Respondent has any rights or legitimate interests to the disputed domain
name. In doing so, regard may be had to the circumstances which might demonstrate as follows:
(i)
before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations
to use, the disputed domain name or a name corresponding to the disputed domain name in
connection with a bona fide offering of goods or services; or
(ii)
Respondent as an individual, business or other organisation, has been commonly known by the
disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii)
Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without
intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service
mark at issue.
The Panel accepts the contention of Complainant that Respondent has no rights or legitimate interests in the
disputed domain name. There is no evidence of use of the disputed domain name in connection with a bona
fide offering of goods or services. There is no evidence that Respondent has been commonly known by the
disputed domain name. There is no evidence that Respondent is making a legitimate noncommercial or fair
use of the disputed domain name, without intent for commercial gain, to misleading divert consumers or to
tarnish the trademark or service mark at issue. Moreover, what evidence there is, suggests fraudulent use of
the disputed domain name.
The Panel finds that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
The Panel is satisfied the disputed domain name was registered and is being used in bad faith. The
following non-exclusive list of circumstances, if found by the Panel to be present, shall be evidence of
registration in bad faith:
(i)
circumstances indicating that Respondent has registered the disputed domain name primarily for the
purpose of selling, renting or otherwise transferring the disputed domain name registration to
Complainant who is the owner of the trademark or service mark or to a competitor for valuable
consideration in excess of Respondent’s out-of-pocket costs directly related to the disputed domain
name;
(ii)
Respondent has registered the disputed domain name in order to prevent the owner of the
trademark or service mark from reflecting the mark in a corresponding disputed domain name
provided Respondent has engaged in the patent of such conduct;
(iii)
Respondent has registered the disputed domain name primarily for the purpose of disrupting the
business of a competitor; or
(iv)
using the disputed domain name, Respondent has intentionally attempted to attract, for commercial
gain, Internet users to its website or other online location, by creating a likelihood of confusion with
Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent's
website or location or of a product or service of Respondent's website or location.
The Panel is satisfied that at least paragraph 4(b)(iv) of the Policy is made out in that it is likely that
Respondent has registered the disputed domain name to attract, for commercial gain, Internet users to its
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website or other online location, by creating a likelihood of confusion with Complainant’s mark ARKEMA as
to the source, sponsorship, affiliation, or endorsements of Respondent’s website or location or of any product
or service of Respondent’s website or location.
7. Decision
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-group.com> be transferred to Complainant.
Mary Padbury
Sole Panelist
Date: July 22, 2013