WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vente-privee.com and Vente-privee.com IP S.à.r.l. v. Domain Hostmaster, Customer ID: 50322982915843, Whois Privacy Services Pty Ltd / Yeonju Hong, Dzone Inc.
Case No. D2016-0941
1. The Parties
The Complainants are Vente-privee.com of La Plaine Saint Denis, France and Vente-privee.com IP S.à.r.l. of Luxembourg, Luxembourg, represented by Cabinet Degret, France.
The Respondent is Domain Hostmaster, Customer ID: 50322982915843, Whois Privacy Services Pty Ltd of Fortitude Valley, Australia / Yeonju Hong, Dzone Inc. of Gwangju, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <vente-priveecom.com> is registered with Fabulous.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 11, 2016. On May 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 17, 2016, 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 Complainants on May 18, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on May 21, 2016.
The Center verified that the Complaint together with the amendment to 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, and the proceedings commenced on May 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 12, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 13, 2016.
The Center appointed James A. Barker as the sole panelist in this matter on June 20, 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.
4. Factual Background
The Complainants belong to the same group of companies. Vente-privee.com IP S.à.r.l is a wholly owned subsidiary of Vente-privee.com. Unless otherwise indicated, both these companies are for convenience referred to below as "the Complainant".
The Complainant's business involves purchasing and selling products and services through "e-commerce tools", and providing consulting services in the field of e-commerce. The Complainant operates a website in connection with the organization of "event sales" of all kinds of discounted products and services bearing well-known trademarks.
The Complainant has registered trademark rights in VENTE-PRIVEE and VENTE-PRIVEE.COM. For instance, European Union Trademark no. 5413018 VENTE-PRIVEE.COM, was registered on December 20, 2007.
The disputed domain name directs to a website which includes links to competitors of the Complainant. The website also advertises that the disputed domain name is for sale.
The disputed domain name was registered on June 2, 2015.
5. Parties' Contentions
The Complainant says that the disputed domain name is confusingly similar to its mark. The disputed domain name reproduces almost identically the dominant word component of the Complainant's trademarks. Besides, the Complainant points out that previous cases under the Policy, involving very similar disputed domain names, have found in its favor: Vente-privee.com, Vente-privee.com IP S.à.r.l. contre Whois Privacy Services Pty Ltd. / Dzone Inc., Yeonju Hong, WIPO Case No. D2013-0691; Vente-Privee.com, Vente-Privee.com IP S.à.r.l. contre Yin jun, WIPO Case No. DCO2015-0043.
The Complainant also says that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name and sought to conceal its identity using a WhoIs privacy service. The Complainant says that the Respondent (Yeonju Hong, Dzone Inc) has no rights in a mark constituted of VENTE PRIVEECOM. The Complainant has not authorized the Respondent to register and use the disputed domain name. The Respondent otherwise has no legitimate rights in it. Rather, the Respondent is using the disputed domain name to profit by the traffic generated by Internet users who mistakenly type the disputed domain name when trying to reach the Complainant's website.
The adjunction of the "com" element in the disputed domain name, after the "vente-privee" element, is not a mere coincidence, but is evidence that the Respondent is seeking to attract Internet users who are interested in the Complainant's website. The Complainant's mark is distinctive. Thus there is necessarily a likelihood of confusion. The Complainant also says that the Respondent's use of the disputed domain name tarnishes its reputation.
Further, the Complainant says that the Respondent has no intention to use the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name merely redirects to a parking page promoting the Complainant's competitors.
The Complainant says that its business operated via the Internet is extensive. In 2013, the Complainant sold more than 70 million products. Every month, several million unique Internet users coming from various countries visit the Complainant's "vente-privee.com" website. The Complainant's website has consistently been ranked among the most visited e-merchant websites in France and in Europe since 2005. In 2013, the Complainant's website was the 1,003rd most visited website in the world.
In addition to its other marks registered in numerous jurisdictions, the Complainant provides evidence of its mark registered in the Republic of Korea, where the Respondent has its address. This, says the Complainant, demonstrates the Respondent's bad faith. The Respondent has also been the subject of a number of UDRP proceedings since 2010, all of which were decided in favor of the then complainants. This demonstrates that the Respondent has exhibited a pattern of behavior of preventing complainants from reflecting their marks in domain names.
The Complainant further refers to a case under the UDRP in 2013 in which the Respondent was also then a respondent, and which concerned a domain name (<ventepriveecom.com>) almost identical to the one currently in dispute. Vente-privee.com, Vente-privee.com IP S.à.r.l. contre Whois Privacy Services Pty Ltd. / Dzone Inc., Yeonju Hong, supra.
The Respondent has registered the disputed domain name, used it as a pay-per-click website relating to the activity of the Complainant, and offered the disputed domain name for sale. This evidence indicates no doubt that the Respondent is well-aware of the Complainant's marks.
Lastly, the Complainant says that the disputed domain name has been registered and used in bad faith. When the Respondent registered the disputed domain name, it necessarily had the Complainant's trademark in mind. The Complainant's mark is distinctive. The doubling of the generic Top-Level Domain ("gTLD") ".com" element by the Respondent also indicates that the Respondent was seeking to rely on a typing error to mislead Internet users. The links on the Respondent's website, including to fashion articles which are the kind of goods promoted by the Complainant, establish that the Respondent had knowledge of the Complainant. The Respondent's use of a privacy service is also indicative of bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain name is 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 name; and
(iii) the disputed domain name was registered and has been used in bad faith.
In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. These elements are discussed in turn below, immediately after a discussion of a procedural issue regarding the filing of the Complaint by two Complainants.
A. Multiple Complainants
As noted above, the Complaint was filed by two Complainants, which are part of the same corporate group. Neither the Policy nor the Rules explicitly refer to the filing of a complaint by more than one complainant. However, it is well established that a single complaint can be filed in the name of more than one complainant, where both share a common grievance against the Respondent, where there is no unfairness to the Respondent, and where it is otherwise efficient to allow the complaint to proceed in this way. The Panel considers that these criteria are satisfied in this case. A recent case involving the same complainants came to the same conclusion on this point: Vente-Privee.com and Vente-Privee.com IP S.à.r.l. v. Linzongxing, WIPO Case No. D2016-0618.
B. Identical or Confusingly Similar
The Complainant provided extensive evidence of its registered rights for its VENTE-PRIVEE and VENTE-PRIVEE.COM marks. The Panel finds that the disputed domain name is confusingly similar to those marks, for the following reasons.
It is well established that the ".com" extension is to be disregarded for the purpose of comparison. Disregarding that element, the relevant comparison is between the Complainant's marks and the term "vente-priveecom" as incorporated in the disputed domain name. It is also well established that it is usually the dominant textual component of a mark that is relevant for the purpose of comparison, and not figurative of design element of a mark that are not reproducible as such in a domain name. These approaches appear to have been applied in past cases involving the Complainant's mark: see Vente-Privee.com and Vente-Privee.com IP S.à.r.l. v. Linzongxing, supra.
The "vente-priveecom" element of the disputed domain name wholly incorporates the Complainant's VENTE‑PRIVEE and VENTE-PRIVEE.COM marks. It is well-established that this can form a basis for confusing similarity. See e.g. AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758, and the cases cited in that one; Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102.
The only difference with the Complainant's VENTE-PRIVEE mark is that the disputed domain name adds the "com" element. This is a slight addition in itself and appears designed only to create an impression of similarity with the gLTD ".com". In relation to the VENTE-PRIVEE.COM mark, the only relevant difference is the (necessary) omission of the dot which, as noted in the Complaint, is trivial. On top of this, a previous panel has found that an almost identical domain name then in dispute, was confusingly similar to the Complainant's marks (Vente-privee.com, Vente-privee.com IP S.à.r.l. contre Whois Privacy Services Pty Ltd. / Dzone Inc., Yeonju Hong, supra).
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), for this element of the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name.
The Complainant has made a very strong prima facie case against the Respondent and provided a substantial amount of evidence in support of its claims. The Respondent has submitted no Response, nor made any other communication in connection with this case. There is otherwise no evidence in the case file that suggests the Respondent has rights or legitimate interests in the disputed domain name. Further, the Panel does not consider that the Respondent could establish such rights or legitimate interests, in the circumstances of bad faith set out below and having regard to its prior record of registering a similar domain name incorporating the Complainant's mark.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Complainant provided extensive evidence of its reputation. This included evidence of website traffic to its main website, media material and promotional material, industry awards, and brand recognition statistics.
The Complainant also points to a previous case involving the Respondent's registration of a domain name incorporating its mark, which the then panel decided in the Complainant's favor. Vente-privee.com, Vente-privee.com IP S.à.r.l. contre Whois Privacy Services Pty Ltd. / Dzone Inc., Yeonju Hong, supra. The domain name in dispute in that case only differed from the disputed domain name in this case by the inclusion of a hyphen. That is a trivial difference, and the Panel reaches the same ultimate conclusion as the Panel in that case on the issue of bad faith in this case.
The disputed domain name was registered in 2015, according to information in the Complaint and the WhoIs, long after the Complainant registered its trademarks. The disputed domain name wholly incorporates the Complainant's mark, and adds an obvious element which is clearly intended to relate to the ".com" element of the Complainant's mark.
All of this evidence indicates that the Respondent was well-aware of the Complainant's mark. The only reasonable conclusion open to the Panel is that the Respondent registered the dispute domain name deliberately to obtain some unfair advantage from confusion with the Complainant's mark. Relevantly, paragraph 4(b)(iv) of the Policy provides that there is evidence of bad faith in circumstances where the Respondent has 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. The Complainant operates in the commercial marketplace, and the Respondent has previously registered an almost identical domain name in bad faith. There is no evidence in this case that goes against a similar finding.
On top of the evidence outlined above, there are further factors strongly suggestive of bad faith in this case. The Respondent has used a privacy service. The Respondent did not respond to "cease and desist" correspondence from the Complainant. (Although in this case, this may be because it was directed to the privacy service. Nevertheless, the Respondent was ultimately responsible for the contact details it allowed). The disputed domain name was advertised for sale. The Complainant's marks appear to be distinctively associated with the Complainant, and the Panel cannot conceive of any good faith use the Respondent might have made of it, having regard to all the evidence.
For all of these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(iii) 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 name, <vente-priveecom.com>, be transferred to the first Complainant, Vente-privee.com.
James A. Barker
Date: July 11, 2016