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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Zv Holding v. Nitish Ghuse

Case No. DNL2019-0052

1. The Parties

The Complainant is Zv Holding, France, represented by Nameshield, France.

The Respondent is Nitish Ghuse, India.

2. The Domain Name and Registrar

The disputed domain name <zadig-et-voltaire.nl> (the “Domain Name”) is registered with SIDN through 1API GmbH.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2019. On the same day, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On November 27, 2019, SIDN transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 28, 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 the same day. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).

In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 3, 2019. In accordance with the Regulations, article 7.1, the due date for Response was December 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2019.

The Center appointed Gregor Vos as the panelist in this matter on January 9, 2020. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.

4. Factual Background

The Complainant is a French company, operating in the fashion industry. The Complainant is the owner of the following trademarks (the “Trademarks”):

- European Union Trademark registration No. 005014171 for the word mark ZADIG & VOLTAIRE, registered on June 8, 2007; and

- International Trademark registration No. 907298 for the word mark ZADIG & VOLTAIRE, registered on September 15, 2006.

In addition to the Trademarks, the Complainant owns the domain name <zadig-et-voltaire.com>. This domain name was registered May 16, 2002. Both the Trademarks and this domain name predate the registration of the Domain Name on November 22, 2019.

The Respondent appears to be an individual based in India. The Domain Name resolves to a parking page comprising of pay-per-click (“PPC”) links to pages offering products and services that compete with the Complainant’s (“the Website”). In addition, it is indicated on the Website that the Domain Name is for sale.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the Domain Name is confusingly similar to the Trademarks as they have been incorporated in the Domain Name in their entirety, while substituting the ampersand (“&”) by its French equivalent “et”. The Complainant contends that the addition of the country code Top-Level Domain (“ccTLD”) “.nl” is to be disregarded.

The Complainant further asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name. According to the Complainant, the Respondent is not commonly known by the Domain Name and the Respondent is not in any way related to the Complainant or its business activities. The Complainant states that it has not granted a license or authorized the Respondent to use the Trademarks or incorporate them in a domain name. The Complainant contends that the use of the Domain Name for a parking page with commercial links cannot be regarded as legitimate noncommercial or fair use. The Complainant asserts that the Respondent only registered the Domain Name in order to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Trademarks.

According to the Complainant, the Respondent registered the Domain Name with full knowledge of the Trademarks, as the Trademarks are included in its entirety, while the ampersand is replaced by the French equivalent “et”, in the same way as the Complainant’s official domain name <zadig-et-voltaire.com>. In addition, the Complainant asserts that all the results in an Internet search carried out by the Complainant for “Zadig et Voltaire” are related to the Complainant’s products. Furthermore, the Complainant contends that the Respondent is using the Domain Name in bad faith, since (i) the Website is a parking page with commercial links and offering it for sale; and (ii) the Respondent has attempted to attract Internet users for commercial gain to the Respondent’s own website by using the Trademarks in the Domain Name.

B. Respondent

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

6. Discussion and Findings

Pursuant to article 2.1 of the Regulations, a complainant’s request to transfer a domain name must meet three cumulative conditions:

(a) The disputed domain name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which the complainant has rights, or other name by means of article 2.1(a) under II of the Regulations;

(b) The respondent has no rights or legitimate interests in the disputed domain name; and

(c) The domain name has been registered or is being used in bad faith.

As the Respondent has not filed a response, the Panel shall rule on the basis of the Complaint. In accordance with article 10.3 of the Regulations, the Complaint shall in that event be granted, unless the Panel considers it to be without basis in law or in fact.

A. Identical or Confusingly Similar

The Complainant has submitted copies of the registrations of the Trademarks. Consequently, the Panel finds that the Complainant has proven that it has rights in the Trademarks.

With regard to the assessment of identity or confusing similarity of the Domain Name with the Trademarks, it is generally accepted that this test involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain name. While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) ).

It is established case law under the Regulations that the ccTLD “.nl” may be disregarded in assessing the similarity between the trademark on the one hand and the disputed domain name on the other hand (see, e.g., Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).

The Domain Name incorporates the entire dominant part of the Trademarks, while substituting the ampersand (“&”) by its French equivalent “et”. The substitution of the ampersand in the Domain Name does not alter the fact that the dominant feature of the Trademarks is recognizable in the Domain Name. Therefore, the Panel finds that the Domain Name is confusingly similar to the Trademarks.

Consequently, the Panel concludes that the Complainant has met the requirement under article 2.1(a) of the Regulations.

B. Rights or Legitimate Interests

This condition of article 2.1(b) of the Regulations is met if the Complainant makes out a prima facie case that the Respondent has no such rights or legitimate interests and if the Respondent fails to rebut this (see, e.g., Technische Unie B.V. and Otra Information Services v. Technology Services Ltd., WIPO Case No. DNL2008‑0002).

Based on the evidence and the undisputed submissions of the Complainant, the Panel finds that the Complainant has prima facie established that there are no indications for legitimate use of the Domain Name. The Respondent is not affiliated with the Complainant and is not authorized to use the Trademarks. Also, the Respondent is not known under the Domain Name, as its name does not correspond to the Domain Name.

It is established case law that parking pages comprising sponsored links do not constitute a bona fide offering of goods or services, or a legitimate noncommercial use of a trademark or trade name, where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users (see, e.g., Coöperatieve Raiffeisen-Boerenleenbank B.A. (Rabobank Nederland) v. Nguyet Dang, ND Dang, WIPO Case No. DNL2010-0074; Stichting VVV Groep Nederland v. Balata.com Ltd., WIPO Case No. DNL2012-0042, and WIPO Overview 3.0, section 2.9).

Also, the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good faith use is a factor that points towards a lack of rights or legitimate interests.

As the Respondent has not replied to the Complainant’s case, the Panel finds that the Complainant has met the requirement of article 2.1(b) of the Regulations.

C. Registered or Used in Bad Faith

The Domain Name is confusingly similar to the Trademarks, as explained under section 6.A. above. As pointed out by the Complainant, the Respondent is not affiliated with the Complainant. Based on the uncontested information and the evidence provided by the Complainant, and noting especially the highly specific nature of the Trademarks, the Panel finds that at the time of registration of the Domain Name the Respondent knew or should have known that its registration would be confusingly similar to the Trademarks. All the results in an Internet search engine are related to the Complainant or its products, and it is obvious that the Respondent’s registration targeted the Complainant and its products. Under these circumstances, the Panel concludes that the Domain Name has been registered in bad faith (see, Veuve Clicquot Ponsardin, Maison Fond ée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov, WIPO Case No. D2002-0562; Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435).

With regard to use in bad faith, the Panel considers the fact that the Domain Name resolves to a website containing a parking page with PPC links related to the Complainant’s field of activities, to be a clear indication that the Domain Name is being used to intentionally attempt to attract, for commercial gain, Internet users to the website or other online location by creating a likelihood of confusion with the Trademarks as to the source, sponsorship, affiliation or endorsement of the website to which the Domain Name resolves, within the meaning of paragraph 3.2(d) of the Regulations.

Considering the circumstances of this matter, the Panel finds that the Domain Name was registered and is being used by the Respondent in bad faith.

Therefore, the Panel finds that the Complainant has also established the requirement under article 2.1(c) of the Regulations.

7. Decision

For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain name <zadig-et-voltaire.nl> be transferred to the Complainant.

Gregor Vos
Panelist
Date: January 21, 2020

In view of the fact that the Regulations are to an extent based on the Uniform Domain Name Dispute Resolution Policy (“UDRP”), it is well established that cases decided under the UDRP are relevant to this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V., WIPO Case No. DNL2008-0050).

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