WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vente-Privee.com and Vente-Privee.com IP S.à.r.l. v. Linzongxing
Case No. D2016-0618
1. The Parties
The Complainants are Vente-Privee.com of La Plaine Saint Denis, France (the “First Complainant”) and Vente-Privee.com IP S.à.r.l. of Luxembourg (the “Second Complainant”), both represented by Cabinet Degret, France.
The Respondent is Linzongxing of Putian, Fujian, China.
2. The Domain Names and Registrar
The disputed domain names are <vente-priver.com> and <vent-privee.com> and both are registered with 22net, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2016. On March 31, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 1, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On April 5, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On April 5, 2016, the Respondent requested that Chinese be the language of the proceeding. On April 7, 2016, the Complainants reiterated their request that English be the language of the proceeding.
The Center verified that the 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 in both Chinese and English, and the proceeding commenced on April 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 3, 2016. The Respondent did not submit any formal response besides a short email on April 13, 2016. Accordingly, the Center notified the parties that it would proceed with panel appointment on May 4, 2016.
The Center appointed Matthew Kennedy as the sole panelist in this matter on May 18, 2016. 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.
The Complainants submitted additional observations in an email communication dated May 19, 2016 in response to the Respondent’s email of April 13, 2016. These observations referred to an email from the Respondent to the Complainants dated April 1, 2016 in Chinese and English sent in response to the filing of the Complaint, which was later appended to the Complainants’ language request of April 7, 2016.
4. Factual Background
The Complainants are part of the same corporate group; the Second Complainant is in fact a wholly-owned subsidiary of the First Complainant. The Complainants operate the “vente-privee” shopping club website which organizes event sales of all kinds of discounted products and services bearing well-known trademarks. The website is operated from the domain names <vente-privee.com> and <venteprivee.com> but the Complainants have registered very similar domain names containing a typographical error, such as <vente-prive.com>, <vente-privve.com> and <vente-priveee.com> that redirect to the club. The shopping club has over 30 million members while every month several million unique Internet users visit the Complainants’ website.
The Complainants between them have registered trademarks consisting of VENTE-PRIVEE.COM in a logo and VENTE-PRIVEE and logo. The First Complainant has registered trademarks consisting of VENTE-PRIVEE.COM in a logo, namely French trademark registration no. 04/3.318.310, registered in 2004 and modified in 2005, and Community trademark registration no. 005413018, registered in 2007. The First Complainant has also registered a trademark consisting of VENTE-PRIVEE and logo, namely Community trademark registration no. 011991965, registered in 2014. The Second Complainant owns trademarks consisting of VENTE-PRIVEE and logo, including United States of America trademark registration no. 4263242, registered in 2012, and International trademark registration no. 1116436, registered in 2012 and valid in multiple jurisdictions. These registrations specify services such as advertising, retail and/or telecommunications services, and the first registration also specifies a wide range of goods in multiple classes. These trademark registrations are all still in effect.
The Respondent is the registrant of the disputed domain names, which were both created on April 22, 2015. The disputed domain name <vente-priver.com> resolves to a website that consists of hyperlinks to e-commerce websites, selling clothes as well as other goods and services. The disputed domain name <vent-privee.com> has variously redirected to a webpage warning that the user’s computer may be infected by a virus and asking the user to contact a call center, a page displaying a “Googel” (sic) logo advising users that they have been chosen to win a gift but ultimately seeking their personal details, a page presented as a press article offering a smartphone for one euro that has been denounced as a ploy to obtain users’ bank details, and a page consisting of hyperlinks to e-commerce websites. The sites to which the pages redirect are in English and other languages.
5. Parties’ Contentions
The Complainants submit that the disputed domain names are confusingly similar to their prior trademarks. The disputed domain names are almost identical to the verbal part of the trademarks which constitutes their essential and dominant element given its size, and the fact that it is the only part of them that is pronounced. There is only one letter of difference between each disputed domain name and the Complainants’ VENTE-PRIVEE.COM trademarks, and these differences correlate to common typing errors likely to be made by Internet users when entering the Complainants’ domain names in a browser (“typosquatting”).
The Complainants submit that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not known by either of the disputed domain names. The disputed domain names are put to commercial use: they both display advertising links to the Complainants’ competitors; the “www.vente-priver.com” website links to a webpage explaining how the services enable users to generate income; and the “www.vent-privee.com” website redirects to fraudulent webpages designed to harvest users’ personal and banking details. The Respondent wants to profit from the traffic generated by Internet users who mistakenly type the disputed domain names when they actually want to reach the Complainants’ website, which is not illegitimate and unfair. The Respondent has no intention to make a bona fide use of the disputed domain names.
The disputed domain names were registered and are being used in bad faith. The Complainants’ trademarks are well known at the international level and the typing errors that they contain reveal an intention to typosquat the Complainants’ trademarks. The Respondent was previously also the registrant of the <ventr-privee.com> domain name which also typosquatted the Complainants’ trademarks. The webpages accessed through the advertising links sometimes display the Complainant’s trademarks while others link to the Complainants’ competitors’ websites and show that the Respondent is familiar with the Complainants’ business. Typosquatting itself can be an indication of bad faith registration. The Respondent did not respond to cease-and-desist emails and did not provide complete and accurate contact information in the Registration Agreements, which are further signs of bad faith. The disputed domain names have been registered in order to prevent the Complainants from registering domain names extremely close to their trademarks, and the Respondent is engaged in a pattern of such conduct. The use of the disputed domain names disturbs the Complainants’ business. By using the disputed domain names, the Respondent intentionally attempts to attract, for commercial gain, Internet users on websites belonging to him, by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites.
The Respondent did not submit a formal Response to the Complainants’ contentions. However, in an email dated April 13, 2016 the Respondent asserted that the Complaint was clearly a case of barefaced cybersquatting of his property.
6. Discussion and Findings
6.1 Language of the Proceeding
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreements for the disputed domain names are in Chinese.
The Complainants request that the language of the proceeding be English. Their main arguments are that 1) the Complainants have no knowledge of the Chinese language and that translating the Complaint and all its annexes would be unfairly time‐consuming and costly and would unduly delay the proceedings; 2) the Respondent is proficient in English, as evidenced by the fact that he holds or has held several thousands of domain names most of which were made up of English words, English phrases and/or denominations close to trademarks of companies established in English-speaking countries; 3) many websites to which the Respondent’s domain names redirect are entirely or at least partly in English; 4) the Respondent never indicated that he could not understand the Complainants’ cease-and-desist emails written in English; and 5) a previous UDRP panel has already ruled that this Respondent “has a level of familiarity with and knowledge of English”.
The Respondent requests that the language of the proceeding be Chinese. His arguments are: 1) the Registration Agreements for the disputed domain names are in Chinese; 2) the Respondent is a Chinese citizen and Chinese is his mother tongue and therefore he needs to file his Reply in Chinese and, further, the Complainants must translate the Complaint into Chinese, otherwise it is unfair and he cannot understand the contents of the Complaint or file a Reply.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the parties are treated with equality, that each party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. (See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293).
The Panel notes that all the Center’s email communications with the parties have been in both Chinese and English. The Complaint was filed in English and the communications from the Respondent have been in Chinese but he did not file a formal Response. The Panel observes that in a 2015 UDRP proceeding the Respondent was evidently able to understand a complaint filed in English. See NVIDIA Corporation v. Linzongxing, Lin Zongxing, WIPO Case No. D2015-0075. Further, the Respondent is the registrant of various other domain names comprised of English phrases, such as <cofeemeetsbagel.com>, <uberforbusiness.com>, <ministryofsuply.com> and <openwebofthings.com>, as well as domain names combining trademarks with relevant English words, which indicates that he understands those phrases and words even though some contain a typographical error. The Panel considers that this evidence indicates that the Respondent is familiar with English and able to understand the contents of the Complaint in this proceeding. Therefore, the Panel considers that requiring the Complainants to translate the Complaint into Chinese would create an undue burden and delay the proceeding.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. Nevertheless, the Panel has considered the Respondent’s communications written in Chinese and would have considered any formal Response to the Complaint written in Chinese as well, but none was filed.
6.2 Multiple Complainants
The Complaint was filed by two Complainants against a single Respondent. Both Complainants form part of the same corporate group. Each Complainant owns registrations of trademarks incorporated in the disputed domain names, but in different jurisdictions. The Respondent is the registrant of both disputed domain names. The Panel finds that they have a common grievance against the Respondent and that it is efficient to permit the consolidation of their complaints. Therefore, the Complainants are referred to below collectively as the “Complainant” except as otherwise indicated.
6.3 Unsolicited Supplemental Filing
The Complainant filed unsolicited additional observations on May 19, 2016 after the appointment of the Panel. The Panel does not consider it appropriate to accept this filing without offering the Respondent an opportunity to comment on it. In any case, the contents of these additional observations would not alter the ultimate conclusions on either the language request or the merits of the case based on the prior record of this proceeding. Therefore, the Panel does not accept this unsolicited supplemental filing.
6.4 Analysis and Findings
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the first Complainant has rights in registered trademarks consisting of the term VENTE-PRIVEE.COM and logo and VENTE-PRIVEE and logo.
The disputed domain names both incorporate the textual elements of the Complainant’s trademarks with only one minor difference each. The textual elements are the dominant elements of the Complainant’s trademarks and both disputed domain names include all but one of the letters and the hyphen in them. However, the disputed domain name <vente-priver.com> includes an “r” instead of an “e” and the disputed domain name <vent-privee.com> omits an “e”. These differences are no more than typographical errors in the spelling of the textual elements in the Complainant’s trademarks; indeed, “r” and “e” are often next to each other on a keyboard. The Panel finds that the disputed domain names are obvious misspellings of the dominant element of the Complainant’s trademarks, a practice commonly known as “typosquatting”. Therefore, the Panel does not consider these typographical differences capable of dispelling confusing similarity with the Complainant’s trademarks. See Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775; and Vente-privee.com, Vente-privee.com IP S.à.r.l. v. Whois Agent / Gustavo Winchester, WIPO Case No. D2014-0796.
The disputed domain names do not include the figurative elements of the Complainant’s trademarks. However, as the figurative elements are incapable of representation in a domain name and do not form an especially prominent or distinctive part of the trademarks overall, the Panel does not consider this difference capable of dispelling confusing similarity with the Complainant’s trademarks either. See Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031.
The disputed domain names contain the generic Top-Level Domain (“gTLD”) suffix “.com” but this element is also present in the Complainant’s VENTE-PRIVEE.COM and logo trademarks. While this element is not present in the Complainant’s VENTE-PRIVEE and logo trademarks, a gTLD suffix generally has no capacity to distinguish a domain name from a trademark. See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080. Therefore, the gTLD “.com” is not a distinguishing element in the comparison of the disputed domain names with any of the Complainant’s trademarks.
Therefore, the Panel finds that each of the disputed domain names is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain names or a name corresponding to the [disputed] domain names in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain names, even if [the Respondent has] acquired no trademark or service mark rights; or
(iii) [the Respondent is] making a legitimate noncommercial or fair use of the [disputed] domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
With respect to the first and third circumstances set out above, the Panel has already found that each of the disputed domain names is an obvious misspelling of the dominant elements of the Complainant’s trademarks. The Respondent intentionally uses the Complainant’s trademark to attract Internet users to websites that display many advertising links to the Complainant’s competitors’ e-commerce websites either for his own commercial gain, or that of the operators of the linked websites, or both. That is not a legitimate use. Further, the disputed domain name <vent-privee.com>, at least some of the time, also links to websites that seek to mislead users into disclosing their personal and banking details, which is not a legitimate use either.
With respect to the second circumstance, the Respondent’s name is “Linzongxing”, which has no apparent connection with the names “vente-priver” or “vent-privee”.
In view of the above circumstances, the Panel considers that the Complainant has discharged its burden of proof that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The burden now shifts to the Respondent to show that he does have some rights or legitimate interests. The Respondent asserts that the Complaint is an attempt to cybersquat his property but he does not indicate how his alleged rights might arise other than by the mere registration of the disputed domain names.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of either of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
“(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site 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] web site or location or of a product or service on [the Respondent’s] web site or location.”
The disputed domain names were registered in 2015, years after the Complainant registered its trademarks. The disputed domain names are obvious misspellings of the Complainant’s trademarks, which is also the Complainant’s own domain name. The disputed domain names have no apparent meaning other than as an approximation of the Complainant’s trademarks and domain name. The nature of the goods and services on the advertised linked websites indicates to the Panel that the Respondent was well aware of the Complainant’s trademark and its services and that the choice to register domain names confusingly similar to the Complainant’s trademark was deliberate.
The disputed domain names are used to attract Internet users who misspell the Complainant’s domain name and direct them to the Complainant’s competitors’ websites, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of those websites or of a good or service on those websites. The disputed domain name <vent-privee.com> is also used to link to sites that seek to obtain Internet users’ personal and banking details. This use is intentional and either for the Respondent’s own commercial gain, if he is paid to direct traffic to these other websites, or for the commercial gain of the operator of that other websites, or both. In any of these scenarios, the facts satisfy the requirements of paragraph 4(b)(iv) of the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267.
Furthermore, the Respondent has engaged in a pattern of conduct of registering domain names that incorporate or misspell third party trademarks, including <adobedocumentcloud.com>, <amafzon.com>, <amazoncollectiblecoins.com>, <androiddevicemanager.com>, <nexusplayer.net>, <shieldtablet.com>, <siemensindustry.com>, <sonysmartwatch.com>, <store‐google.com> and <yah9o.com>. One of these was later found to have been registered and used in bad faith. See NVIDIA Corporation v. Linzongxing, Lin Zongxing, supra. This is further evidence of bad faith.
Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.
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 names <vente-priver.com> and <vent-privee.com> be transferred to the First Complainant.
Date: May 24, 2016