WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Veolia Environnement SA v. VistaPrint Technologies Ltd

Case No. D2019-2665

1. The Parties

The Complainant is Veolia Environnement SA, France, internally represented.

The Respondent is VistaPrint Technologies Ltd, Bermuda.

2. The Domain Name and Registrar

The disputed domain name <veoliawaterr.com> (the “Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed 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 October 31, 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 11, 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 on November 13, 2019.

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 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 11, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2019.

The Center appointed Lynda M. Braun as the sole panelist in this matter on January 9, 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.

4. Factual Background

The Complainant is the holding company of Veolia group, a 160-year old group of companies with a revenue of EUR 25.91 billion. The Veolia group operates across three core businesses – water, waste, and energy – and assists cities and industries in managing and optimizing their resources. In addition to these three core activities, the Complainant has other key growth markets in sectors with significant potential to generate revenue, including the circular economy, pollution treatment and decommissioning services for oil rigs, ships, aircraft, and nuclear plants. It has more than 171,000 employees over five continents.

The Complainant has launched various advertising campaigns in the past years, the most recent of which focuses on the Complainant’s role in the 2015 United Nations Climate Change Conference.

The Complainant owns a number of trademarks in jurisdictions worldwide for the term VEOLIA, including, but not limited to, the following: International Trademark No. 814678 for VEOLIA, registered on September 11, 2003, in International classes 1, 6, 9, 11, 17, 19, 32, 35, 36, 37, 39, 40, 41, and 42; and International Trademark No. 919580 for VEOLIA, registered on March 10, 2006, in International classes 9, 11, 16, 35, 36, 37, 38, 39, 40, 41, and 42 (hereinafter referred to as the “VEOLIA Mark”).

The Complainant also owns and operates the domain names <veolia.com>, registered on December 30, 2002, and <veoliawater.com>, registered on January 31, 2003.

The Disputed Domain Name was registered on July 2, 2019 and resolves to an inactive landing page that states: “This site can’t be reached. The webpage at http://veoliawaterr.com/ might be temporarily down or it may have moved permanently to a new web address.”

In July 2019, the Complainant’s legal department was alerted of the registration of the Disputed Domain Name. The Complainant sent a cease-and-desist letter to the Respondent on October 15, 2019 and a reminder was sent on October 21, 2019. The Complainant has not received any reply.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- The Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights;

- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

- The Disputed Domain Name was registered and is being used in bad faith.

The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i)-(iii)):

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) The Disputed Domain Name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the VEOLIA Mark.

It is uncontroverted that the Complainant has established rights in the VEOLIA Mark based on its years of use as well as its registered trademarks for the VEOLIA Mark in various jurisdictions worldwide. The general rule is that “registration of a mark is primafacie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has enforceable rights in the VEOLIA Mark.

The Disputed Domain Name <veoliawaterr.com> consists of the VEOLIA Mark followed by a misspelling of the term “water”, followed by the generic Top-Level Domain (“gTLD”) “.com”. Here, the addition of the term “waterr” does not prevent a finding of confusing similarity between the VEOLIA Mark and the Disputed Domain Name, nor does the misspelling of the term “water”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at section 1.8.

Furthermore, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.

Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent bears the burden of production to demonstrate rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.

There is no evidence in the record suggesting that the Respondent has rights or legitimate interests in the Disputed Domain Name. The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use the Complainant’s VEOLIA Mark. The Complainant does not have any type of business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name.

In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case. As such, the Panel determines that the Respondent does not have rights or legitimate interests in the Disputed Domain Name.

Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

The Panel finds that, based on the record, the Complainant has demonstrated the Respondent’s bad faith registration and use of the Disputed Domain Name pursuant to paragraph 4(b) of the Policy.

First, bad faith may be found where the Respondent knew or should have known of the registration and use of the Complainant’s VEOLIA Mark prior to registering the Disputed Domain Name. See Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Name years after the Complainant first registered and used the VEOLIA Mark and especially since the Complainant has enjoyed a high degree of recognition as a result of its renown for its water, waste, and energy services.

Second, under the circumstances of this case, the Respondent’s registration of the Disputed Domain Name that is confusingly similar to the Complainant’s trademark is suggestive of bad faith registration.

Finally, inactive or passive holding of the Disputed Domain Name by the Respondent may amount to bad faith use. See Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615; Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties, WIPO Case No. D2005-1085. It has long been held in UDRP decisions that the passive holding of a domain name that incorporates a well-known trademark without a legitimate purpose may indicate that the Disputed Domain Name is being used in bad faith under paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574.

Accordingly, the third element of paragraph 4(a) has been met by the Complainant.

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 <veoliawaterr.com> be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: January 16, 2020