WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Vivendi v. Lassad Toumi

Case No. D2018-2035

1. The Parties

The Complainant is Vivendi of Paris, France, represented by Nameshield, France.

The Respondent is Lassad Toumi of Corcy, France.

2. The Domain Name and Registrar

The disputed domain name <vivendibank.com> is registered with 1&1 Internet SE (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2018. On September 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 6, 2018, 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 September 11, 2018 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 September 11, 2018.

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 September 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 7, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 11, 2018.

The Center appointed Isabelle Leroux as the sole panelist in this matter on October 26, 2018. 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 French multinational media group headquartered in Paris. The company has activities in music, television, film, video games, telecommunications, tickets and video hosting service.

The Complainant is the owner of several international trademark registrations VIVENDI, in particular:

- The International trademark VIVENDI No. 706637, registered on December 22, 1998, duly renewed, designating products and services on classes 1, 6, 9, 11, 17, 19 and 35 to 42;

- The International trademark VIVENDI No. 687855, registered on February 23, 1998, duly renewed, designating products and services on classes 9 and 35 to 42.

The Complainant also owns, among others, the domain name <vivendi.com>, registered on November 12, 1997.

The Respondent is an individual located in France. The disputed domain name <vivendibank.com> was registered on August 12, 2018.

The disputed domain name is active and redirects to a registrar parking page.

5. Parties’ Contentions

A. Complainant

(i) The Complainant contends the disputed domain name <vivendibank.com> is confusingly similar to its trademark registrations since it incorporates the VIVENDI trademark in its entirety.

The Complainant further submits that the addition of the generic term “bank” is not sufficient to prevent the risk of confusion and the extension “.com” should not to be taken into consideration.

(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant submits that the Respondent is not affiliated with the Complainant or authorized by the Complainant to use its trademarks.

Besides, the Complainant contends that the Respondent does not make any use of the disputed domain name in connection with a bona fide offering of goods or services, since the disputed domain name resolves to a parking page hosted by the Registrar.

(iii) The Complainant contends that the disputed domain name was registered in bad faith. The Complainant submits that its trademarks are well known throughout the world and especially in France so the Respondent, who is living in France, knew or should have known of the existence of the Complainant’s rights.

The Complainant further contends that the failure to make an active use of a disputed domain name is also evidence of bad faith.

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

B. Respondent

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

6. Discussion and Findings

6.1 Procedural Aspects

The Panel notes that the Respondent is formally in default pursuant to paragraphs 5(f) and 14(a) of the Rules, because no response was received from the Respondent within the time limit set by the Policy and the Rules.

However, the Panel finds that this does not mean that the remedies requested should automatically be awarded. The Panel will have to establish whether the Complainant’s prima facie case meets the requirements of paragraph 4 of the Policy, as follows:

(i) The 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 domain name; and

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

These elements will be examined in turn below.

6.2 Requirements of paragraph 4(a) of the Policy

A. Identical or Confusingly Similar

The Complainant provided evidence that it has rights in VIVENDI trademarks, well before the Respondent registered the disputed domain name. This satisfies the Panel that the Complainant has registered trademark rights in the VIVENDI trademarks for the purposes of the Policy.

According to Section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the applicable Top Level Domain (“TLD”) in a domain name (e.g., “.com”) is disregarded under the first element confusing similarity test.

The relevant part shall therefore be “vivendibank” composed of the term “vivendi” which is the exact reproduction of the Complainant’s trademark VIVENDI and an English generic word “bank”.

Previous UDRP panels have found that where the relevant trademark is recognizable within the disputed domain name, the addition of other generic or descriptive terms would not prevent a finding of confusing similarity under the first element, especially for the term “bank”, see Carrefour v. Xiamen PrivacyProtection Service Co., Ltd. / He Wen Ming, WIPO Case No. D2018-1577, <carrefourbank.com>, Siemens AG v. Mr. Ozgul Fatih, WIPO Case No. D2010-1771, <siemensbank.com>.

Hence, the Panel finds that the disputed domain name is confusingly similar to the trademark VIVENDI in which the Complainant has rights, since the addition of the word “bank” to the trademark VIVENDI does not prevent a finding of confusing similarity.

The requirement under paragraph 4(a)(i) of the Policy is thus satisfied.

B. Rights or Legitimate Interests

The Complainant submits that the Respondent has not been authorized by the Complainant to use its trademarks and that there is no business relationship existing between the Complainant and the Respondent.

In addition, the disputed domain name is not used in connection with a bona fide offering of goods or services and no legitimate noncommercial or fair use is made of the disputed domain name.

Indeed, the Complainant provided evidence that the website associated to the disputed domain name resolves to a parking website hosted by the Registrar.

Accordingly, the Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name.

Since the Respondent has not replied to the Complaint and, thus, has not presented any other evidence or elements to justify any rights or legitimate interests in connection with the disputed domain name, the Panel finds no indication that any of the circumstances described in paragraph 4(c) of the Policy could apply to the present matter.

Given the circumstances described above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and thus the requirement under paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

It has been proven to the Panel’s satisfaction that the Complainant’s trademarks are well known all around the world and in France, and the Panel accepts that the Respondent, whose alleged address is in France, could not reasonably ignore the Complainant’s trademarks and activities.

Previous UDRP panels have regularly ruled that bad faith was found where a domain name is so obviously connected with a well known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith. See LEGO Juris A/S v. store24hour, WIPO Case No. D2013-0091 and Carrefour v. Jean-Claude Bot / Albert Pierre, WIPO Case No. D2017-0969.

The Panel finds that the association of the generic term “bank” with the Complainant’s trademark is likely to create a risk of confusion that the disputed domain name would be perceived as referring to banking services of the Complainant, especially given the fact that the Complainant’s trademark registrations also cover banking and financial services in class 36.

The above elements indicate that the disputed domain name has been registered in bad faith.

In addition, the Complainant argues that the non-use of the disputed domain name constitutes evidence of bad faith.

As established in previous UDRP decisions, the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding (WIPO Overview 3.0, section 3.3).

Relevant factors should be taken into consideration, such as degree of distinctiveness or reputation of the complainant’s mark, the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and the respondent’s concealing its identity or use of false contact details. See “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc., WIPO Case No. D2017-0246.

Further, the Respondent did not submit any response to the Complaint. Therefore, the Respondent failed to provide any evidence of an actual or contemplated good-faith use.

Thus, the Panel is convinced that the overall circumstances of this case suggest that the Respondent’s
non-use of the disputed domain name is in bad faith.

For the above reasons, the Panel finds the Respondent registered and is using the disputed domain name in bad faith and the condition of paragraph 4(a)(iii) 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 <vivendibank.com> be transferred to the Complainant.

Isabelle Leroux
Sole Panelist
Date: November 9, 2018