WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Veolia Environnement SA v. Whois Privacy Protection Service by onamae.com / Shinya Miyauchi, Miyauchi Shinya

Case No. D2019-2663

1. The Parties

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

The Respondent is Whois Privacy Protection Service by onamae.com, Japan / Shinya Miyauchi, Miyauchi Shinya, Japan.

2. The Domain Name and Registrar

The disputed domain name <veoliawatersystems.com> is registered with GMO Internet, Inc. d/b/a Discount‑Domain.com and Onamae.com (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2019. On October 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 1, 2019, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on November 5, 2019 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 in English on November 6, 2019.

On November 5, 2019, the Center sent a communication to the Parties, in English and Japanese, regarding the language of the proceeding. On November 6, 2019, the Complainant confirmed its request that English be the language of the proceeding. On November 12, 2019, the Respondent sent an email communication in Japanese. On November 20, 2019, the Respondent requested Japanese be the language of the proceeding.

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 November 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2019. On November 20, 2019, the Center received an email communication from the Respondent, indicating its willingness to transfer the disputed domain name to the Complainant. On November 21, 2019, the Center sent an email communication to the Parties regarding possible settlement. The Complainant sent an email communication on November 26, 2019, indicating that “we do not wish to suspend the procedure and we prefer waiting for the UDRP decision”. On December 17, 2019, the Center informed the Parties that it would proceed to appoint the Panel.

The Center appointed Teruo Kato as the sole panelist in this matter on January 15, 2020. 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.

On January 16 and 20, 2020, the Respondent sent two email communications regarding the proceeding to the Center.

4. Factual Background

According to the Complainant, the Complainant is the holding company of the 160 years old Veolia group, which represents today a total of EUR 25.91 billion in revenue. Veolia group has three core businesses, being Water, Waste and Energy, and provides solutions to promote the optimized resource management and, among other things, the transition toward a circular economy.

The Complainant submitted evidence of various trademark registrations and owns, inter alia, International trademark VEOLIA (word) No. 910325, registered on March 10, 2006, as set out in section 6.2 A below.

The disputed domain name <veoliawatersystems.com> was registered on July 27, 2019.

The Respondent is Whois Privacy Protection Service by onamae.com, Japan / Shinya Miyauchi, Miyauchi Shinya, Japan.

According to the Complaint and evidence provided by the Complainant, the website at the disputed domain name currently directs towards an inactive page.

The Complainant requests that the disputed domain name be transferred to the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it is the owner of various trademarks including VEOLIA.

The Complainant also contends that the disputed domain name identically adopts the VEOLIA trademark and that the disputed domain name is confusingly similar to the Complainant’s VEOLIA trademark.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect to the domain name in dispute.

The Complainant also contends that the Respondent has registered and is using the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

6.1 Preliminary Issue: Language of the Proceeding

A. Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to authority of the Panel to determine otherwise having regard to the circumstances of the administrative proceeding. The Panel notes that in the present case the Registrar confirmed that the language of the Registration Agreement is Japanese.

The Complainant has filed the Complaint in English and requests that the language of the proceeding be English and contends, among others, that, if Japanese were the language of the proceeding, it would cause substantial expenses and undue delays to the proceedings. The Panel notes that information of these proceedings was provided to the Respondent both in English and Japanese.

In particular, the Panel notes that the Respondent was advised in both English and Japanese that, if the Respondent was to object to the Complainant’s request for English, the Respondent was invited to indicate that objection and to submit any arguments/supporting materials as to why the proceedings should not be conducted in English by November 10, 2019. The Respondent did not respond by this deadline.

When this administrative proceeding commenced on November 19, 2019, the Respondent sent two email messages expressing its desire for Japanese but did not provide any reasons nor supporting materials. The Panel would have accepted a Response from the Respondent in Japanese, but none was filed.

Further, the Panel notes that the disputed domain name includes “watersystems”, which consists of two English words.

In view of the circumstances of this case, and in accordance with paragraph 11(a) of the Rules, the Panel decides that English be the language of the proceeding.

6.2 Substantive Issues

A. Identical or Confusingly Similar

The Panel must determine whether (a) the Complainant has a trademark or service mark; and (b) whether the disputed domain name is identical or confusingly similar to that trademark or service mark.

The Complainant submitted evidence of various trademark registrations and the Panel is satisfied that the Complainant is the owner of VEOLIA registered trademarks, including inter alia International trademark VEOLIA (word) No. 910325, registered on March 10, 2006, designating multiple jurisdictions, including Japan, covering goods and services in classes 9, 11, 16, 32, 35, 36, 37, 38, 39, 40, 41, 42, and 44.

As to the confusing similarity element for the purposes of the Policy, the Panel has proceeded to compare the disputed domain name to the VEOLIA trademark in which the Complainant has rights.

Section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that “[t]he 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 disregarded under the first element confusing similarity test”, and the Panel finds no reason why this established practice should not be applied to the present case.

Apart from the generic TLD, the disputed domain name consists of the Complainant’s trademark VEOLIA and the term “watersystems”, which is generic. The Panel finds that the recognizable element of the disputed domain name is the term “Veolia”, which is identical to the Complainant’s trademark.

It is well established that, where a disputed domain name incorporates, as here, the entirety of a complainant’s trademark, the addition of a common term does not typically prevent a finding of confusing similarity. (See Salvatore Ferragamo S.p.A v. Ying Chou, WIPO Case No. D2013-2034; Salvatore Ferragamo S.p.A. v. Haonan Hong, WIPO Case No. D2013-2040; Salvatore Ferragamo S.p.A. v. Brian E. Nielsen, WIPO Case No. D2014-1123; and Salvatore Ferragamo S.p.A. v. Wei Huan, WIPO Case No. D2014-1290).

The Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a domain name:

(i) before any notice to it of the dispute, the respondent’s use 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 has been commonly known by the domain name, even if it 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 trademark or service mark at issue.

The consensus view of UDRP panels is that the burden of proof in establishing no rights or legitimate interests in respect of a domain name rests with the complainant in as far as making out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent (see section 2.1 of the WIPO Overview 3.0).

In the present case, the Complainant contends that “it is undoubtedly established that Respondent has no rights or legitimate interests in respect to the domain name in dispute” and also points out that “[t]he registration of several trademarks preceded the registration of the disputed domain name for years.”

The Complainant submitted to the Panel documentary materials to support its contentions as above, and the Panel finds that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

By not submitting a Response, the Respondent has failed to rebut such prima facie case and has also failed to invoke any of the defenses as set out in paragraph 4(c) of the Policy.

Further, in relation to the fair use defence as referred to in paragraph 4(c)(iii) of the Policy, the Panel notes that, where a domain name consists of a trademark plus an additional term (as in the present case), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner (see section 2.5.1 of the WIPO Overview 3.0).

The Panel also notes that the disputed domain name consists of the Complainant’s trademark VEOLIA and the term “watersystems”, which corresponds to one of the three core businesses of the Complainant, yet there is no evidence made available to the Panel that the Respondent was involved in the water related activities.

In the premises, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

To fulfill the third requirement, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.

In order to assess whether the Respondent registered and is using the disputed domain name in bad faith, paragraph 4(b) of the Policy provides non-exhaustive examples constituting evidence of bad faith, which includes the following:

(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 that website or location.

The Panel notes and accepts that the trademark VEOLIA was registered and is known internationally, including in Japan, before the disputed domain name was registered on July 27, 2019.

The Panel also notes from its own research that a local Internet search carried out in Japan using Google search engine, with VEOLIA as a key word, returned a number of references to the Complainant’s subsidiary in Japan, including a Wikipedia page written in Japanese, which stated a corporate history of VEOLIA Water Japan K.K. (now VEOLIA Japan K.K.) as established in 2006 in Japan.

In the premises, the Panel holds that the Respondent is most likely to have known of the Complainant, its products and trademarks prior to registering the disputed domain name.

As to the use in bad faith, the Complainant acknowledges that the domain name in dispute currently directs towards an inactive page, but the Complainant contends that “in the circumstances of this particular Complaint, the passive holding of the domain name by Respondent amounts to Respondent acting in bad faith”.

In this connection the Panel notes that Paragraph 3.3 of the WIPO Overview 3.0 states:

“While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”.

The Complainant submitted its contentions along the lines of (i), (ii) and (iv) above.

As regards “(iii) the respondent’s concealing its identity or use of false contact details”, the Panel notes that the international courier, DHL, arranged by the Center to the Respondent’s address failed to reach its destination in Tokyo due to “bad address”.

Further, the Panel notes that the Respondent used the privacy service to withhold its identity, and that, according to the Complainant, the Complainant sent a cease and desist letter on October 15, 2019 and its reminder on October 21, 2019 to the email address designated by the Respondent, but the Complainant received no reply.

Having considered all the circumstances, the Panel holds that the passive holding doctrine applies to the present case and that the Respondent is using the disputed domain name in bad faith.

In the premises, the third requirement of the Policy has been 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 <veoliawatersystems.com> be transferred to the Complainant.

Teruo Kato
Sole Panelist
Date: January 24, 2020