WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vente-privee.com, Vente-privee.com IP S.à.r.l. v. Domain Administrator, See PrivacyGuardian.org / Mikko Kauttonen
Case No. D2017-2023
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, Grand-Duché de Luxembourg, represented by Cabinet Degret, France.
The Respondent is Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States of America / Mikko Kauttonen of Helsinki, Finland, self-represented.
2. The Domain Name and Registrar
The disputed domain name <vente-prvee.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2017. On October 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 19, 2017, 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 November 7, 2017, 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 amendment to the Complaint on November 10, 2017. On November 7, 2017, the Center sent an email communication notifying the Parties in both English and French that the language of the Registration Agreement for the disputed domain name was English. On November 8, 2017, the Respondent sent an email communication to the Center requesting for English to be the language of the proceeding. On November 10, 2017, the Complainant sent an email communication attaching a request for French to be the language of the proceeding. On November 16, 2017, the Respondent sent an email communication to the Center in which he indicated that he “will agree to cancel” the disputed domain name.
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 November 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 4, 2017. The Respondent did not submit a response. The Center notified the Parties of the commencement of Panel appointment process on December 7, 2017.
The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on December 26, 2017. 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. Language of the Proceeding
Pursuant to paragraph 11(a) of the Rules, 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. Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding.
The Registrar has confirmed that the language of the registration agreement is in English. The Complaint was filed in French and the Complainant has requested French to be the language of the proceeding on the grounds that;
- The Complainants are “francophone”;
- The disputed domain name is a misspelled French term;
- The disputed domain name is redirected to pages having French language.
In the view of the above, the Complainants contend that the Respondent must necessarily be familiar with the French language. However, the disputed domain name not always redirected to web pages in French.
Moreover, the Respondent in different email communications expressed himself in English and has also requested that the administrative proceeding be conducted in English. However, the Respondent did not explain as to why the language of the proceedings should be English.
Noting that paragraph 10 of the Rules vests the panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated equality and each party is given a fair opportunity to present its case.
Meanwhile, the Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. The Panel considers the fact the Respondent has consented to cancel the disputed domain name is a further relevant consideration in support of the fact that there is no need to translate the Complaint and its annexes into English which would lead to undue burdens being placed on the parties and undue delay to the proceeding which are supposed to be an inexpensive and expeditious avenue for resolving domain name disputes.
Having considered all the matters above, the Panel determines under paragraph 11 of the Rules that the language of the proceeding shall be English.
5. Factual Background
The Complainants are the provider of online retail services by way of operating a very well-known website “www.vente-privee.com”. The Complainants’ website was launched in 2001 in France, and today provides services with EUR 1.7 billion of turnover with more than 80 million products sold in 2014.
The Complainants obtained a French trademark registration VENTE-PRIVEE.COM on October 14, 2004, and the registration indicates first use of the mark in 2004. The Complainants own trademark registrations in several countries for VENTE-PRIVEE.COM trademark, inter alia:
- EU Trademark Registration No. 005413018, VENTE-PRIVEE.COM, registered on December 20, 2007;
- US Trademark Registration No. 4263242, VENTE-PRIVEE.COM, registered on December 25, 2012.
The Complainants’ VENTE-PRIVEE.COM trademark has been recognized as a well-known trademark in previous UDRP decisions and has been ranked as 51th most visited website in France and 1003th in the world.
The disputed domain name <vente-prvee.com> was registered on June 10, 2017.
The Respondent at the time of filing the Complaint used the disputed domain name to point to different websites having pornographic character and which appear to be spreading malicious software.
6. Parties’ Contentions
The Complainants request the transfer of the disputed domain name.
The Complainants assert that the disputed domain name is identical to the Complainants’ trademark VENTE-PRIVEE.COM
The Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain name. It is not commonly known by the domain name. Moreover, the Respondent has not been authorized or licensed by the Complainants to use the VENTE-PRIVEE.COM trademark. The Complainants claim that the Respondent cannot assert that it has made or is currently making a legitimate noncommercial or fair use of the Disputed Domain Name.
The Complainants contend that the Respondent has registered and is using the disputed domain name in bad faith. The Complainants claim that the Respondent must have known the Complainants’ trademark when registering the disputed domain name and that the Respondent is using the disputed domain name for redirecting it to other online sites with the aim to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainants’ trademark and for the purpose of disrupting the Complainants’ business.
The Respondent did not reply to the Complainant’s contentions.
However, the Respondent agreed to cancel the disputed domain name.
7. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
The Panel finds that the Complainants satisfy this element by virtue of their registrations in France, before European Union Intellectual Property Office and in several other countries for the trademark VENTE-PRIVEE.COM.
The Panel further finds that the disputed domain name is almost identical to VENTE-PRIVEE.COM trademark insofar as only the letter “i” is missing in the disputed domain name. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The onus is on the Complainants to make out at least a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and it is then for the Respondent to rebut this case.
The Panel accepts the Complainants’ submissions that the Respondent does not appear to be known by the disputed domain name, has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, is not making a legitimate noncommercial or fair use of the disputed domain name, and has no consent from the Complainants to use its trademark.
The Respondent has not filed a Response.
The Complainants have made out its prima facie case under this element of the Policy and the Respondent has failed to rebut it. Accordingly, the Complainants succeed in relation to the second element of the Policy.
C. Registered and Used in Bad Faith
At the time of registration of the disputed domain name which occurred in 2017 according to the claim of the Complainants, the Complainants’ trademark VENTE-PRIVE.COM was a well-known trademark for a very long time. As the Complainants submit, it is inconceivable beyond any doubt that the Respondent would not have known of the Complainants’ trademark. The Respondent did not oppose such arguments.
The incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith (Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation, WIPO Case No. D2000-1568).
It appears from the screenshots – to which the Respondent did not oppose or provide any plausible explanation – submitted within the Complaint (in Annex 5) that the disputed domain name randomly redirect to several different websites having pornographic character and which appear to be spreading malicious software.
Lastly, that fact the Respondent’s proposal to cancel the disputed domain name reinforces in the view of the overall circumstances, ill-manner approach of the Respondent.
The Panel is persuaded that the Respondent’s registration and use of the disputed domain name for redirecting Internet users to other online locations, constitutes bad faith registration and use of the disputed domain name. The only reason for the registration of the disputed domain name must have been with bad faith intent. More precisely and as mentioned above, the Respondent used the disputed domain name to exploit, for commercial gain, the Complainants’ reputation. See, Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004.
Therefore, in the view of cumulative circumstances, the Panel finds that the requirement of registration and use in bad faith is satisfied, according to the Policy, paragraph 4(a)(iii).
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-prvee.com> be transferred to the Complainant Vente-privee.com.
Emre Kerim Yardimci
Date: January 22, 2018