ORANO SA v. Respondent [names redacted]
Claim Number: FA2306002047247
Complainant is ORANO SA (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent name is redacted.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <group-orano.com>, <groups-orano.com> and <groupe-orano.com>, registered with One.com A/S (“Registrar”).
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to Forum electronically on June 2, 2023; Forum received payment on June 2, 2023.
On June 6, 2023, the Registrar confirmed by e-mail to Forum that the <group-orano.com>, <groups-orano.com> and <groupe-orano.com> domain names are registered with it. The Registrar provided Forum with the names of the registrants and verified that they are bound by the One.com A/S registration agreement and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). For reasons which follow the registrant names have been redacted from this decision.
On June 9, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 2023 by which the registrants could each file a Response to the Complaint, via e-mail to all entities and persons listed on the registrations as technical, administrative, and billing contacts, and to postmaster@group-orano.com, postmaster@groups-orano.com, postmaster@groupe-orano.com. Also on June 9, 2023, the Written Notice of the Complaint, notifying the registrants of the deadline for a Response, was transmitted via post and fax to all entities and persons listed on the registrations as technical, administrative and billing contacts.
Having received no Response, Forum transmitted to the parties a Notification of Respondent Default.
On July 10, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response.
Complainant requests that the domain names be transferred from Respondent to Complainant.
PRELIMINARY PROCEDURAL ISSUE: MULTIPLE RESPONDENTS
Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Here, the Registrar disclosed the names of three separate domain name holders. Nevertheless, the Panel has a discretion to allow this one action against all three domain names if it can reasonably be inferred that the domain names are effectively controlled by one person or entity, which is operating under several aliases.
In that respect, Complainant points to the fact that the names are registered with the one Registrar and within a relatively close timeframe to one another. Further, that the domain names have a similar composition with the word “group(s)”/“groupe” hyphenated to Complainant’s trademark.
Furthermore, Complainant states that two of the three domain name holders are employees of Complainant, and that they did not register the relevant name. Those domain names have been used to launch phishing attacks under the name of Complainant misusing those employee names.
The Panel finds sufficient evidence that the domain names are controlled and used by a single person or entity having no connection with the real persons named as the holders. In these circumstances the Panel determines under Rule 3 that these proceedings can continue in respect of all three disputed domain names.
The Panel also employs paragraph 4(j) of the the Policy which provides for portions of a decision to be redacted in a proper case. To protect the identity of Complainant’s employees, the names of the holders have been omitted and all further references to them together are simply as “Respondent” (see, for example, Capital One Financial Corp. v. [Unknown Holder], Case No. FA1607001684338 (Forum Aug. 23, 2016) (“Respondent contends that it has been the victim of identity theft. Specifically, on July 28, Forum received email communications from Respondent stating that ‘Someone has apparently used my name without my knowledge or permission’. …The information supplied in that e-mail communication makes the claim of identity theft plausible, and Complainant does not contest this assertion. Accordingly, this Panel finds that it is in the interests of justice that the identity of the Respondent named in the Complaint be redacted from this decision to protect the identity of that person.”).
A. Complainant
Complainant asserts trademark rights in ORANO. It holds a national registration for that trademark and asserts that the domain names are confusingly similar to the trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that the Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant is a multinational nuclear fuel cycle company headquartered in Paris, France, doing business under the name, ORANO, which is registered, inter alia, with the French Patent & Trademark Office (“INPI”) as Reg. No. 4370904, registered June 22, 2017; and
2. the disputed domain names were all registered in 2023 and have been used variously to resolve to websites using Complainant’s trademark and a registered logo iteration thereof, and as part of email addresses used to phish for information.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent’s failure to submit a formal Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003). Complainant provides evidence of its registration of ORANO with the INPI, a national trademark authority, and has thus established rights in that mark.
The disputed domain names hyphenate the descriptive terms “group,” “groups” or “groupe”, to the trademark and add the “.com” generic top-level-domain (“gTLD”). The Panel finds that the trademark remains the dominant and recognizable part of the domain names and so finds that the domain names are confusingly similar to the trademark (see, for example, Orano SA v. WhoisGuard, Inc. / Stephen Chomg, DCO2019- 0039 (WIPO Nov. 11, 2019) ("Accordingly, the addition of the descriptive term “group” does not dispel the confusing similarity arising from the incorporation of Complainant’s ORANO trademark in the disputed domain name."); Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”); Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”).
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, Case No. D2000‑0624 (WIPO Aug. 21, 2000).
There is no suggestion that Respondent might be commonly known by any of the disputed domain names, nor that Respondent has any trademark rights. The Panel has been provided with evidence of misuse of the domain names in the ways described already. In particular, emails have been sent from two of the disputed domain names which use Complainant’s company name, address and phone number, and the name of one of Complainant’s actual employees. The remaining domain name has been improperly used to resolve to a website showing Complainant’s trademark and creating the impression of being a site maintained by Complainant.
The Panel finds that a prima facie case has been made that Respondent lacks rights or a legitimate interest in the disputed domain names (see, for example, Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The onus thus shifts to Respondent. Absent a Response that onus is not met and so the Panel finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and used in bad faith.
Paragraph 4(b)(iv) of the Policy circumscribes registration and use of a domain name in bad faith as follows:
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line 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 the site or location.
The Panel finds that paragraph 4(b)(iv) of the Policy has direct application to this case and so finds that the third and final element of the Policy is satisfied (see, for example, MySpace, Inc. v. Myspace Bot, FA 672161 (Forum May 19, 2006) holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme; Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (Forum July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <group-orano.com>, <groups-orano.com> and <groupe-orano.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: July 18, 2023
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