Arkema France v Lucas Thomas

WIPO Case No. D2022-2578

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Arkema France v. Lucas Thomas

Case No. D2022-2578

1. The Parties

The Complainant is Arkema France, France, represented by Fross Zelnick Lehrman & Zissu, PC,

United States of America (“United States”).

The Respondent is Lucas Thomas, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <arkemagroupsusa.com> 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 July 15, 2022.

On July 15, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 18, 2022, 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 the due date for Response was August 22, 2022. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on August 23, 2022.

The Center appointed Zoltán Takács as the sole panelist in this matter on August 31, 2022. 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.

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4. Factual Background

The Complainant is a French specialty chemicals and advanced materials company with offices in 55 countries and employing over 20,000 employees.

The Complainant operates 136 industrial facilities in Europe, North America, and Asia and has sales subsidiaries in every region of the world.

Among others the Complainant owns the Unites States Trademark Registration No. 3082057 for the word
mark ARKEMA registered since April 18, 2006, for multiple classes of goods and services of the Nice
Agreement Concerning the International Classification of Goods and Services for the Purposes of the
Registration of Marks.

Since May 21, 2011, the Complainant owns the domain name <arkema.com>, which links to its corporate website.

The disputed domain name was registered on April 6, 2022, and has not resolved to an active website since registration.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its ARKEMA trademark

because it fully incorporates the trademark with addition of the terms “groups” and “usa”, which is reference

to the United States.

The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed
domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii), or (iii) of the
Policy.

The Complainant claims that the Respondent was aware of the Complainant and its activities and has registered the disputed domain name with the purpose of perpetrating apparent illegal activities.

The Complainant requests that the disputed domain name be transferred from the Respondent to the

Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and

documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that

it deems applicable”.

It has been a consensus view in UDRP decisions that a respondent’s default (i.e., failure to submit a response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s

default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO

Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

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A complainant must satisfy each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii)          the respondent has no rights or legitimate interests in respect of the domain name; and

(iii)         the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.

It has been a consensus view among UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.

The Complainant produced proper evidence of having registered rights in the ARKEMA trademark and for
the purpose of this proceeding the Panel establishes that the Unites States Trademark Registration

No. 3082057 satisfies the requirement of having trademark rights for the purpose of the Policy.

Having determined the presence of the Complainant’s trademark rights, the Panel next assesses whether

the disputed domain name is identical or confusingly similar to the Complainant’s trademark.

According to section 1.7 of the WIPO Overview 3.0, the standing (or threshold) test for confusing similarity

involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the

disputed domain name. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.

According to section 1.8 of the WIPO Overview 3.0, 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.

According to section 1.11.1 of the WIPO Overview 3.0, the applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is generally

disregarded under the first element confusingly similar test.

The Complainant’s ARKEMA trademark is fully incorporated in the disputed domain name. The addition of

the terms “groups” and “usa”, which is reference to the United States, in view of the Panel does not avoid a

finding of confusing similarity.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and

that requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:

(i) its use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;

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(ii)          it has been commonly known by the domain name;

(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

In the present case, the Complainant has submitted sufficient evidence that it holds well-established rights in the ARKEMA trademark.

The Complainant has never authorized the Respondent to use its ARKEMA trademark in any way, and its prior rights in the trademark precede the date of registration of the disputed domain name.

According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests

in a domain name may result in the often impossible task of “proving a negative”, requiring information that is

often primarily within the knowledge or control of the respondent.

As such, where a complainant makes out 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 the 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 the second element.

The Respondent failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case.

The Respondent used the disputed domain name in an email address to send fraudulent emails impersonating the Complainant. UDRP panels have categorically held that use of a domain name for impersonation or other types of fraud can never confer rights of legitimate interests on a respondent (see section 2.13.1. of the WIPO Overview 3.0).

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily

for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant
who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable
consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered 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; or

(iii)         you have registered the domain name primarily for the purpose of disrupting the business of a

competitor; or

(iv)         by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet

users to your 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 your website or location or of a product or
service on your website or location.

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The Complainant’s ARKEMA trademark, which the disputed domain name fully incorporates, is inherently

distinctive.

A basic Internet search against the trademark, which is the only distinctive portion in the disputed domain name returns solely the Complainant and its businesses.

The Respondent’s reproduction of the Complainant’s inherently distinctive ARKEMA trademark in the

disputed domain name convinces the Panel that the Respondent was aware of the Complainant’s trademark

at the time of obtaining the disputed domain name and chose to register it in order to target its business and

trademark within the meaning of paragraph 4(b)(iv) of the Policy.

The disputed domain name has not resolved to an active website since registration.

However, the Respondent impersonated the Complaint through use of the disputed domain name in an
email address in ordering goods and redirecting their delivery to addresses unassociated with the

Complainant.

The Respondent’s impersonation of the Complainant and use of the disputed domain as the origin of the

emails in placing fraudulent orders on its behalf is disruptive of the Complainant’s business and constitutes

bad faith under the Policy (see section 3.4 of the WIPO Overview 3.0 and Graybar Services Inc. v. Graybar

Elec, Grayberinc Lawrenge, WIPO Case No. D2009-1017).

Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.

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 <arkemagroupsusa.com> be transferred to the Complainant.

/Zoltán Takács/

Zoltán Takács

Sole Panelist
Date: September 14, 2022