Arkema France v plus weeklyad, plusweeklyad

WIPO Case No. D2024-2803

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Arkema France v. plus weeklyad, plusweeklyad

Case No. D2024-2803

1. The Parties

The Complainant is Arkema France, France, represented by In Concreto, France.

The Respondent is plus weeklyad, plusweeklyad, Uganda.

2. The Domain Name and Registrar

The disputed domain name <arkema-uk.com> is registered with CloudFlare, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2024.

On July 10, 2024, the Center transmitted by email to the Registrar a request for registrar verification in

connection with the disputed domain name. On July 11, 2024, 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 (N/A) and contact information in the Complaint. The Center sent

an email communication to the Complainant on July 12, 2024 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 July 15, 2024.

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 July 19, 2024. In accordance with the Rules, paragraph 5,

the due date for Response was August 8, 2024. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on August 12, 2024.

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The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on August 14, 2024. 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 company Arkema France, was registered on February 24, 1981, at the Companies

Registry of Nanterre (France) under the number B 319 632 790.

It is a world leader of materials science offering a wide range of products for various goods such as paints,

adhesives, coats, glue, fiber, resins, rought materials, and finished materials for both general industry and

consumer goods.

As of 2023, the Complainant is present in 55 countries through the world including the United Kingdom

through its subsidiary Arkema UK Limited.

The Complainant owns a wide range of trademark registrations for ARKEMA including the following.

International Trademark Registration No. 847865 ARKEMA, filed on November 30, 2004, in classes 1, 2, 3,

4, 5, 16, 17, 37, 38, 39, 40, 41, 42 and 45.

European Union Trade Mark No. 004181731 ARKEMA, filed on December 8, 2004 in classes 1, 2, 3, 4, 5, 7,

9, 11, 12, 16, 17, 19, 20, 22, 25, 27, 35, 36, 37, 38, 40, 41, 42.

International Trademark Registration No. 1665655 ARKEMA, filed on April 21, 2022, in classes 1, 16, and

42.

The Complainant owns several domain names, currently used to promote its activities and products, such as

<arkema.com>, registered on May 21, 2001, <arkema.info>, registered on July 12, 2004, <arkema.eu>,

registered on April 29, 2006, and <arkema.fr>, registered on March 22, 2006.

The disputed domain name <arkema-uk.com> was registered on May 23, 2024 and resolves to a website

redirecting to the institutional website of the Complainant: “ while the latter has not

authorized, licensed, or permitted the Respondent to use any of its trademarks or to apply for or use any

domain name incorporating Complainant’s trademark, and thus, to make a redirection to <arkema.com>.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer

of the disputed domain name.

Notably, the Complainant contends that as the exploitation of the disputed domain name is directly linked to

the Complainant, it is clear that the Respondent is not commonly known through the disputed domain name

and actually attempts to create confusion.

ARKEMA is not a descriptive term, a commonly used expression, or a word that would be instantly

understood in the field of industry. The denomination Arkema has therefore a highly distinctive character.

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Following the Notice of Registrant Information sent by WIPO, even if it is clear that the provided data is false,

we can see that they are indicated as related to Uganda and not United Kingdom, therefore, there is also no

prima facie evidence of a potential legitimate interest for the Respondent to register a domain name with the

sequence “uk”.

The disputed domain name is redirecting obviously fraudulently to the institutional website of the

Complainant at the domain name <arkema.com>; this is clear evidence and damning proof of the

Respondent’s bad faith.

A simple Google search would have necessarily forwarded the Respondent to the website of the

Complainant, whose rights are old and well known. It can be noticed that the first links proposed are the

ones of the Complainant.

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.

The Respondent may take advantage of the redirection to the main website of the Complainant to

fraudulently pass itself off as the Complainant or its British subsidiary, for instance by using an email address

for scam purposes. The customer receiving the email and who would like to check the authenticity, will go to

the disputed domain name <arkema-uk.com> which will redirect to the website associated with the domain

name <arkema.com>.

The disputed domain name is therefore a real risk for the rights of the Complainant and for the public in the

hypothesis of malicious acts.

In view of the above, the inference may be drawn therefore that in some way Respondent hoped to capitalize

on the reputation and rights of the Complainant.

In addition, and following the Notice of Registrant Information, it is obvious that the provided data is false, for

the purpose of not being identified, which is another element demonstrating the bad faith.

Finaly, the Complainant requests the Panel to order the transfer of the disputed domain name to the

Complainant

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. 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. WIPO Overview of WIPO Panel Views on

Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

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The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain

name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms here, “-uk” may bear on assessment of the second and third elements,

the Panel finds the addition of such term does not prevent a finding of confusing similarity between the

disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate

rights or legitimate interests in a disputed domain name.

Although 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 difficult 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

relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of

proof always remains on the complainant). If the respondent fails to come forward with such relevant

evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0,

section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case

that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has

not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence

demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the

Policy or otherwise.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy

establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall

be evidence of the registration and use of a domain name in bad faith.

The Panel is satisfied that the Respondent must have been aware of the Complainant’s trademark ARKEMA

mentioned in section 4 above (Factual Background) when it registered the disputed domain name. By that

time, the Complainant had long ago registered and intensely used the trademark ARKEMA, particularly in the

United Kingdom where it has its subsidiary Arkema UK Limited.

The Panel also finds that by registering the disputed domain name which includes the Complainant’s

trademark ARKEMA in its entirety the Respondent was targeting the Complainant and its business. The

addition of the term “uk” to the trademark ARKEMA in the disputed domain name only contributes to confuse

Internet users and leads them to think that the Respondent’s website belongs to or is endorsed by the

Complainant or its subsidiary with the intention to capitalize on the fame of the Complainant’s trademark for

its own benefit.

Further, the fact that there is a clear absence of rights or legitimate interests coupled with no credible

explanation for the Respondent’s choice of the disputed domain name, the nature of the disputed domain

name, and the use of the disputed domain name to redirect to the Complainant’s official website support a

finding of bad faith. In this regard, Panels have found that a respondent redirecting a domain name to the

complainant’s website can establish bad faith insofar as the respondent retains control over the redirection

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thus creating a real or implied ongoing threat to the complainant. (section 3.1.4 of the WIPO Overview 3.0).

The Panel finds that the Respondent registered and is using the disputed domain name in bad faith.

The Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been fulfilled and that the

Complainant has established the third element of the Policy.

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-uk.com> be transferred to the Complainant.

/Miguel B. O’Farrell/

Miguel B. O’Farrell

Sole Panelist

Date: August 23, 2024