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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Veolia Environnement v. Domains by Proxy, Inc. / Bethesda Properties LLC
Case No. D2008-0252
1. The Parties
The Complainant is Veolia Environnement, Paris, France, represented by Cabinet Gide Loyrette Nouel, France.
The Respondents are Domains by Proxy, Inc., Scottsdale, Arizona, United States of America; and Bethesda Properties LLC, Bethesda, Maryland, United States of America (hereinafter “the Respondent”).
2. The Domain Name and Registrar
The disputed domain name <veolia-proprete.mobi> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2008. On February 19, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On February 19, 2008, GoDaddy.com, Inc. 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on February 21, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complaint filed an amended Complaint on February 27, 2008. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 the Respondent of the Complaint, and the proceedings commenced on February 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 19, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2008.
The Center appointed John Katz QC as the sole panelist in this matter on April 2, 2008. 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 is a world leader in environmental services, operating on five continents. Its services are divided into four business divisions, transportation, water distribution and treatment, waste management and energy services.
In fiscal 2006 it enjoyed revenue of 28.6 billion Euros. It had some 300,000 employees, two thirds of which were in Europe.
It has registered trademarks for the word mark VEOLIA in a number of countries under the Madrid Protocol.
It has extensively promoted its name under and by reference to the trademark VEOLIA and in connection with its business units. It has a very large advertising spend devoted to advertising and promoting its business units by reference to the trademark VEOLIA.
In 2005 the Complainant reorganized its branding and divisions by bringing its four divisions under the one head and brand name and trademark VEOLIA with circular device. The four divisions are now clearly branded and identified as “Veolia Transportation”, “Veolia Water”, “Veolia Waste Managemenr”, and “Veolia Energy”.
The Complainant is a French company which in France and Francophone countries uses the trademark VEOLIA WASTE MANAGEMENT in the French translation as “Veolia Proprete”.
The Complainant has registered various “veolia-proprete” domain names such as <veolia-proprete.biz>, <veolia-proprete.org>, <veolia-proprete.info>, <veolia-proprete.net> and <veolia-proprete.com>.
5. Parties’ Contentions
The Complainant contends that by virtue of its trademarks, its general reputation and goodwill and its enormous public profile that it has established an international reputation such that anybody seeing or hearing or being exposed to the name and mark VEOLIA would think of and associate the name with the Complainant and the Complainant alone.
The name is said to be an invented word or neologism unlikely to be used by anybody else not connected with the Complainant.
The Complainant has also been assiduous in protecting its goodwill and trademarks. It has taken a number of actions in this regard including pursuing a number of earlier domain name disputes over disputed domain names. It appears to have had regular success in that regard.
The Respondent did not respond to the Complainant’s contentions.
6. Discussion and Findings
The Policy adopted by ICANN is directed towards resolving disputes concerning allegations of abuse of domain name registrations.
As part of the process, a complainant must provide evidence and submissions in support of its complaint. The expectation is that a complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the Policy. A respondent is given full opportunity to respond. In this instance, the Respondent has defaulted.
Paragraph 4(a) of the Policy sets out three elements that must be established by a complainant to merit a finding that a respondent has engaged in abuse of domain name registration and to obtain relief. These elements are that:
(i) The Respondent’s 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 Respondent’s domain name has been registered and is being used in bad faith.
Each of three elements must be established by the Complainant to warrant relief.
A. Identity of the Respondent
The Complaint was originally lodged against the registrant shown in the registrar’s publicly available WHOIS database: Domains by Proxy, Inc. However, as described above in Section 3, the Complainant filed an amended Complaint naming both the initially-listed registrant Domains by Proxy, Inc. and the later-disclosed registrant Bethesda Properties LLC as Respondents. Bethesda Properties LLC was added as a Respondent after the registrar disclosed to the Center (who in turn communicated this to the Complainant) that Bethesda Properties LLC is the underlying registrant of the disputed domain name. See, e.g., TDS Telecommunications Corporation v. Registrant  Nevis Domains and Registrant  Moniker Privacy Services,
WIPO Case No. D2006-1620 (“Faced with such ‘russian doll’ scenarios…panels [have treated] both the initially listed registrant and the subsequently disclosed registrant together as Respondent.”)
B. Identical or Confusingly Similar
As to the first ground, the disputed domain name must be shown to be identical or confusingly similar to trademarks in which the Complainant has rights.
The Complainant must establish that it has rights either to common law or registered trademarks or service marks and that the disputed domain name is identical or confusingly similar to those trademarks or service marks. The Complainant has registered trademarks and a number of “veolia-proprete” domain names. It also clearly has extensive common law rights based upon its very extensive trading and use of its trademarks in connection with its four business units. There can be no question that the Complainant has rights and protectable goodwill in its VEOLIA mark.
Because of the extensive use by the Complainant of its primary mark VEOLIA worldwide there would be no room for argument but that the Complainant has established and continues to enjoy protectable goodwill in the name and trademark VEOLIA. The addition of the purely descriptive words “transportation”, “water”, “waste management”, and “energy”, or the French “proprete” merely describe the actual business activity associated with the primary mark VEOLIA. The disputed domain name is strictly speaking not truly identical with any of the Complainant’s marks. The Panel also notes what the European Court said in the case of LTJ Diffusion SA v. Sardas Vertdaubet SR  FSR 34. In that case the European Court considered what constituted use of an identical mark. It held that a mark used by a respondent is identical with a complainant’s mark if the former “reproduced without any modification or addition all the elements constituting the trademark or, where, viewed as a whole, it contains differences so insignificant that they go unnoticed by an average consumer”.
The Panel considers this statement equally applicable to the facts of the present Complaint. It follows that, as has also been well established by previous UDRP panels, the addition of the “.mobi” suffix can be disregarded. This is simply nothing more than a generic or descriptive addition to signify the use of the disputed domain name in connection with mobile phone services.
Therefore, on a direct comparison between the disputed domain name and the Complainant’s mark there is a clear likelihood of confusion. The Panel accordingly has no hesitation in finding that the disputed domain name and the Complainant’s mark are confusingly similar even if they are not in the strictest or purest sense identical, and that is all the Complainant needs to establish. This must be especially so where the differences as here are of such a minor nature that to most people, they would go unnoticed or at best would simply, if noticed, would be dismissed as inconsequential or purely descriptive as denoting and identifying the particular service.
The Panel finds accordingly that paragraph 4(a)(i) of the Policy is made out.
C. Rights or Legitimate Interests
As to the second ground, that there are no rights or legitimate interests possessed by the Respondent, the Respondent does not put forward in evidence any business or trading operation known as or by reference to any of the trademarks in suit thereby justifying a proprietory right to the mark.
Under paragraph 4(a)(ii) a respondent can justify its registration of the disputed domain name on certain grounds some of which are set out in paragraph 4(c) of the Policy. Such grounds resolve broadly to own name use, bona fide use, or legitimate non commercial or fair use.
Because the Respondent has defaulted it has not put before the Panel any evidence. However some insight into its activities can be gained from the materials in the Complaint including in particular the drop down from the disputed domain name to sponsored links for other websites as diverse as health insurance, travel, education and CD/DVDs. This drop down menu also includes a link to Sedo, a website well known as a vehicle for parking and offering for sale domain names including the disputed domain name.
Even though the Respondent has defaulted, it is not sufficient simply to assume from that that the Respondent has no legitimate rights or can claim none.
As the Respondent has no obvious link with the Complainant and there is no basis to assume it has any other legitimate connection with the registered trademark VEOLIA or trade name “Veolia-Proprete” but appears merely to trade off the reputation and goodwill associated with them, the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name.
Nor is there any evidence of any bona fide right or interest that the Respondent may reasonably claim to the disputed domain name, whether by prior right, legitimate use, genuine connection with its own name or business or otherwise.
Moreover, the fact that the disputed domain name is parked with Sedo and is offered for sale can in the circumstances of this case be regarded as inconsistent with rights or legitimate interests in favour of the Respondent.
The Panel finds accordingly that paragraph 4(a)(ii) of the Policy is made out.
D. Registered and Used in Bad Faith
As to the third ground, this requires that the disputed domain name be registered and used in bad faith. As has previously been said in other UDRP panel decisions together with earlier decisions of this Panel, both elements must be made out. Accordingly, both registration and use in bad faith have to be established by the Complainant.
Any person coming across the website at the disputed domain name may assume, contrary to reality, that there was or may well be some connection or association between the Complainant and the Respondent. This is especially so where the disputed domain name is used in connection with mobile phone services, a rapidly increasing means of communication especially in business including the business units operated by the Complainant.
The drop down menus accessed via the website at the disputed domain name show a number of other websites and presumably pending sale of the disputed domain name the Respondent receives revenue on a click-per-view or click-per-use basis. Such activities (whether for use as a revenue stream or not) have long been held in other UDRP panel decisions including decisions of this Panel to be wrongful under certain circumstances as involving what is little more than cyber-squatting or free-loading on the established reputation and goodwill of a complainant.
The Complainant has cited a number of previous Panel decisions including that in Veolia Environnement v. Domain Drop SA,
WIPO Case No. D2006-1029 and also in Veolia Environnement v. Mr. Tom Baert,
WIPO Case No. D2007-0068. It is not necessary here to repeat what was said in those two panel decisions. This Panel adopts what has been said as regards bad faith in these two cited decisions.
The Panel also readily accepts that even if it is not necessarily the case that there is a revenue stream derived by the Respondent on a click-per-view or click-per-use basis from accessing the disputed domain name, mere inactivity can be regarded as use in bad faith. See e.g., Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003.
But even if that was not enough, the Panel considers that the advertising of the disputed domain name for sale through Sedo in a context where it has already been found that the Respondent has no rights or legitimate interests in the disputed domain name can constitute use in bad faith.
The Respondent Bethesda Properties LLC sent an email to the Complainant on January 25, 2008 (Annex 26 to the Complaint) offering to sell the disputed domain name. This offer for sale can also properly be taken into account as part of the overall evidence that the disputed domain name was registered and is being used in bad faith.
The Panel finds accordingly that paragraph 4(a)(iii) of the Policy has been made out.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <veolia-proprete.mobi>, be transferred to the Complainant.
John Katz QC
Dated: April 16, 2008