WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Veolia Environnement SA v. Nanci Nette, Name Management Group

Case No. D2017-1511

1. The Parties

The Complainant is Veolia Environnement SA of Paris, France, represented by IP Twins S.A.S., France.

The Respondent is Nanci Nette, Name Management Group of Los Angeles, California, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <veoliaes.net> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2017. On August 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 2017, 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 August 8, 2017. In accordance with the Rules, Paragraph 5, the due date for Response was August 28, 2017. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 29, 2017.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on September 1, 2017. 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 Veolia Environnement SA, a French company dedicated to supplying drinking water, waste treatment and energy production.

The Complainant owns, among others, the following trademark registrations:

The Complainant is also the owner of the following domain names:

The Respondent registered the disputed domain name <veoliaes.net> on February 9, 2006.

5. Parties’ Contentions

A. Complainant

The Complainant argues the following:

I) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

That the disputed domain name is confusingly similar to its trademark VEOLIA.

That the disputed domain name imitates the Complainant’s trademark, by using the letters “es” as a reference to the environmental services offered under said trademark.

That the disputed domain name is identical to the Complainant’s domain name <veoliaes.net.cn>.

That in previous decisions, Panels have considered the trademark VEOLIA as having been used around the world and as being well-known.

That the addition of the generic Top-Level Domain (“gTLD”) “.net” is insufficient to avoid a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.

That because the Complainant’s trademark is well known, any use of it as part of a domain name will most likely result in confusion among Internet users.

II) The Respondent has no rights or legitimate interest in respect of the disputed domain name

That the Respondent has no affiliation to the Complainant. That the Respondent has not been authorized to use or register the Complainant’s trademarks, or to register any domain names containing said trademarks.

That the Respondent has no rights or legitimate interests in the disputed domain name.

That owing to the likeness between the disputed domain name and the VEOLIA trademark, it would not be reasonable to believe that the Respondent was intending to make a legitimate use of the disputed domain name.

That the Respondent has not been commonly known by the disputed domain name.

That there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.

That the Complainant sent a cease-and-desist letter to the Respondent through an email communication, to which the Respondent did not reply.

III) The disputed domain name has been registered and is being used in bad faith

That it is implausible that the Respondent was unaware of the Complainant’s existence when registering the disputed domain name.

That the Respondent’s use of the VEOLIA trademark for the registration of a disputed domain name and the use of the letters “es” as a reference to the environmental services offered by the Complainant, prove that the Respondent was aware of the existence of the Complainant’s trademark at the time of registration of the disputed domain name.

That a simple search via “Google” or any other search engine would have delivered results related to the Complainant’s trademark VEOLIA.

That the Respondent tries to benefit from the fame of the Complainant’s trademarks.

That, under the particular circumstances of this case, the passive holding of the disputed domain name proves that the Respondent acted in bad faith.

B. Respondent

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

6. Discussion and Findings

According to the Policy, to qualify for a cancellation or transfer, a complainant must prove each of the elements listed below:

(i) the disputed 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 disputed domain name; and

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

Since the Respondent has failed to reply to the Complainant’s assertions, the Panel may choose to accept the reasonable contentions of the Complainant as true. This Panel will determine whether those facts constitute a violation of the Policy that is sufficient to order the transfer of the disputed domain name (see, Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech, WIPO Case No. D2006-0292).

A. Identical or Confusingly Similar

The Complainant has proven to be the owner of trademark registrations for VEOLIA in several jurisdictions, including the United States, where the Respondent is claimed to be domiciled.

The disputed domain name <veoliaes.net> is confusingly similar to the Complainant’s trademark VEOLIA, as it includes said trademark in its entirety.

The addition of the letters “es” does not overcome the confusing similarity between the disputed domain name and the Complainant’s trademark. Previous UDRP panelists have considered that such minor differences do not diminish the confusion resulting from the remaining similarities (see Lammot Copeland, Jr. v. Computer Product Introductions, WIPO Case No. D2003-0823; and Inter-IKEA Systems B.V v. Technology Education Center, WIPO Case No. D2000-0522).

Furthermore, the addition of the gTLD “.com” to the disputed domain name is irrelevant and immaterial for the purposes of assessing confusing similarity with the Complainant’s trademark VEOLIA (see Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc., WIPO Case No. D2014-1919).

The first element of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a domain name:

I. before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

II. the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

III. the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademar1k or service mark at issue.

The Complainant has proven to be the owner of trademark registrations for VEOLIA in several jurisdictions. Trademark registration number 3000764 for VEOLIA was granted in the United States on September 27, 2005, prior to the date of registration of the disputed domain name.

Additionally, the Complainant claims that the trademark VEOLIA is well known. This claim is supported by the evidence provided as Annexes 2, 3, 4, 5, 6, 8, and 9 to the Complaint. Other panels appointed under the Policy have determined that the trademark VEOLIA is well known (see Veolia Environnement SA v. Donald Goecke / Registration Private / Domains By Proxy, LLC, WIPO Case No. D2016-2379; and Veolia Environnement SA v. Whoisproxy.com LTD / Lukasz Witkowski, WIPO Case No. D2016-1257).

According to the Complainant, it has not authorized the Respondent to use the VEOLIA trademarks, or to register domain names including said trademarks. The Respondent did not submit any arguments or evidence to prove the contrary.

There is no evidence in the docket that could indicate that the Respondent has been commonly known by the disputed domain name.

The Complainant asserts that there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, or a noncommercial or fair use.

An inspection of the website to which the disputed domain name resolves conducted by the Panel reveals that the website to which the disputed domain name currently resolves, displays the headline “Veoliaes.net”, alongside the following list:

“1 Waste Management Solutions

2 Cleaning Services

3 Electronics Recycling

4 Waste Recycling

5 Energy Management Services

6 Community Services”

According to the evidence provided by the Complainant, the services described on said list correspond to the services offered by the Complainant under the trademark VEOLIA. Each of the listed elements functions as a hyperlink to a web page containing another list of so-called “Related Links”, which lead to domain names like <mx.search.com>, <zapmeta.mx> and <chinalots.com> and the web pages to which they resolve.

The content of the website to which the disputed domain name resolves is an obvious reference to the services offered by the Complainant under the trademark VEOLIA. The inclusion of links to unrelated third party websites suggests that the Respondent’s web page is associated to a pay-per-click scheme, which could cause confusion as to the source of the services featured therein, and the appearance that the Complainant may have sponsored or endorsed the Respondent or her website.

This use of the disputed domain name, along with the Respondent’s constructive notice of trademark registration number 3000764 for VEOLIA, prove the Respondent’s knowledge of the existence of the Complainant and its trademark VEOLIA at the time of registration of the disputed domain name, and now.

In light of the above, neither the present nor the past use of the disputed domain name can be considered to be a bona fide offering of goods or services, or a noncommercial or fair use.

This Panel considers that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. This fact shifts the burden of production to the Respondent (see Cellular One Group v. COI Cellular One, Inc., WIPO Case No. D 2000-1521; and Skipton Building Society v. skiptonassetmanagement.com, Private Registration, WIPO Case No. D2011-0222).

Since the Respondent provided no arguments or evidence to demonstrate its rights or legitimate interests in the disputed domain name, the second element of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:

I. circumstances indicating that the respondent has registered or the respondent has 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

II. the respondent has 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 the respondent has engaged in a pattern of such conduct; or

III. the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

IV. by using the domain name, the 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 the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

An inspection of the website to which the disputed domain name resolves conducted by the Panel reveals that said disputed domain name resolves to a website that comprises a list of services that are in direct competition to those of the Complainant. The Respondent’s website comprises links to websites of unrelated third parties, such as <mx.search.com>, <zapmeta.mx> and <chinalots.com>. This shows that the Respondent has had the intention to exploit and capitalize on the reputation and goodwill derived from the Complainant’s trademarks.

In light of the above, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website to which the disputed domain name resolves, by creating a likelihood of confusion with the Complainant’s trademark, through the use of the disputed domain name (see Alpine Entertainment Group, Inc. v. Walter Alvarez, WIPO Case No. D2007-1082; Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, supra; Asian World of Martial Arts Inc. v. Texas International Property Associates, supra; Owens Corning v. NA, WIPO Case No. D2007-1143). The Respondent’s use of the disputed domain name falls within the scope of Paragraph 4(b)(iv) of the Policy.

Considering that trademark registration number 3000764 for VEOLIA was granted in the United States on September 27, 2005, the Respondent knowingly registered a domain name that fully incorporates the Complainant’s trademark VEOLIA. At the time of registration of the disputed domain name, the Respondent had constructive notice of registration No. 3000764 for VEOLIA. This conduct constitutes bad faith (see eBay Inc. v. Renbu Bai, WIPO Case No. D2014-1693; and Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137).

Considering that the letters “es” seems to be commonly used as an abbreviation for “environmental services” in the industry to which the Complainant belongs, its addition to the disputed domain name would likely heighten the risk of confusion between the trademark VEOLIA and the disputed domain name.

The Respondent has been involved in other UDRP proceedings. These proceedings describe circumstances that are analogous to those of this case (see OkCupid, operated by Humor Rainbow, Inc. v. Nanci Nette, Name Management Group, WIPO Case No. DCO2017-0008, in which the Respondent used terms that clearly associated the disputed domain name with the Complainant's goods and included links to third parties’ websites; and Licensing IP International S.A.R.L. v. Nanci Nette, WIPO Case No. DTV2017-0003, in which the Respondent attracted Internet users for commercial gain by redirecting the disputed domain name to websites of various third parties). Therefore, this Panel finds that the Respondent has engaged in a pattern of conduct in registering domain names in order to prevent trademark owners from reflecting their marks in the respective domain name, under Paragraph 4(b)(ii) of the Policy.

In light of the above, the third element of the Policy has been fulfilled.

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 <veoliaes.net> be transferred to the Complainant.

Kiyoshi Tsuru
Sole Panelist
Date: September 15, 2017