WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vente-privee.com and Vente-privee.com IP S.à.r.l. v. WhoisGuard Protected, WhoisGuard, Inc. / Robert Jurek
Case No. D2018-0189
1. The Parties
The Complainant is Vente-privee.com of La Plaine Saint Denis, France and Vente-privee.com IP S.à.r.l. of Luxembourg, represented by Cabinet Degret, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Robert Jurek of Eagan, Minnesota, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <vente-privee-officiel.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2018. On January 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 31, 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 January 31, 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 amendment to the Complaint on February 2, 2018.
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 February 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 4, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 5, 2018.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on March 9, 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’s activities consist of purchasing and selling all kinds of goods and services by way of “e-commerce tools”. For more than 15 years it has operated the “www.vente-privee.com” website which is concerned with event sales of all kinds of discounted products and services, including well‐known trademarked goods.
The Complainant is the owner of a substantial number of registered trademarks comprising the words “Vente-Privee” and a figurative element (a stylized butterfly), for example a French trademark registered on October 14, 2004, No. 3318310; a European Union Trade Mark registered on December 20, 2007, No. 5413018; a United States trademark registered on December 25, 2012, No. 4263242; an International trademark registered on February 23, 2012, No. 1116436 and designating Australia, Israel, Switzerland, Algeria, Egypt, China, Japan, the Republic of Korea, Belarus, the Islamic Republic of Iran, Morocco, Monaco, Serbia, Ukraine and Turkey; a New-Zealand trademark registered on August 28, 2012, No. 954484; and a European Union Trade Mark registered on January 3, 2014, No. 11991965.
The Complainant also owns numerous domain names, inter alia <vente-privee.com>, <vente-privee.org> and <vente-privee.asia>.
The disputed domain name was registered on September 8, 2017. The website to which the disputed domain name resolved redirected to malware sites and was suspended by the Registrar upon the request of the Complainant dated September 18, 2017.
5. Parties’ Contentions
The Complainant maintains that it is the original creator of event sales on the Internet and that its website at “www.vente-privee.com” has become one of the most significant e-commerce sites, initially in France and then in many other countries. 14,600 event sales were organized in 2015 on “www.vente-privee.com”. Between 2008 and 2011, “www.vente-privee.com” shipped more than 46 million orders and in 2015, it sold more than 90 million products. In 2013 the Complainant employed 2,000 employees. Moreover, the turnover achieved through the use of the VENTE-PRIVEE(.COM) trademarks has reached nearly USD 3 billion at present. Since 2011, the Complainant has been in the top 14 European e-merchants in terms of turnover. Up to 30 million members are registered at its website.
According to the Complainant, “www.venteprivee.com” was the 1,003rd most visited website in the world in February 2013, a ranking which is said to demonstrate the fame of the VENTE-PRIVEE(.COM) trademarks. The Complainant says that the website that the marks identify enjoys a higher ranking than websites promoting indisputably well-known trademarks.
The Complainant maintains that the “www.vente-privee.com” website is known to 74 percent of French consumers and has a good image that has a positive impact on the perception of the brands it markets.
The Complainant points out that its trademarks and domain names were registered well before the registration of the disputed domain name. It also maintains that its trademarks are highly reputed around the world. The disputed domain name incorporates the terms “Vente-Privee” in their entirety, and the Complainant says that the term “officiel” is not likely to differentiate the disputed domain name from the Complainant’s trademarks. In association with the VENTE PRIVEE trademark, the term “officiel” will convey to Internet users the message that the disputed domain name redirects to the Complainant’s official website, or so the Complainant asserts. The disputed domain name is quasi-identical to the Complainant’s VENTE-PRIVEE trademarks and domain names, and hence the first element of paragraph 4(a) of the Policy is said to be satisfied.
The Complainant also points out that the Respondent has hidden its identity, which is an indication of bad faith. Were the Respondent legitimately known by the disputed domain name, it would have made its personal and/or corporate information freely available so as to be contactable and to comply with legal obligations. The disputed domain name was also registered a long time after the Complainant’s activities began. The Complainant also asserts that it is unaware of the existence of legitimate third parties’ rights
in relation to “vente-privee” or “vente-privee-officiel.com”. The Respondent also never opposed the filing, registration and use of the VENTE-PRIVEE(.COM) trademarks thereby invoking putative prior rights. According to the Complainant, the Respondent is in no way related to the VENTE-PRIVEE(.COM) trademarks and domain names, or to the Complainants, the latter not having authorized the registration or use of the disputed domain name. The Complainant asserts that the Respondent has never been granted authorization, license or any right whatsoever to use the Complainant’s VENTE-PRIVEE trademarks, in the disputed domain name or in any capacity whatsoever.
According to the Complainant, the Respondent’s pre-suspension use of the disputed domain name demonstrates no intent to use it in connection with a bona fide offering of goods or services. The disputed domain name reproduces identically the Complainants trademarks, and misleads Internet users into thinking that it redirects towards their official website. However, as the Complainant asserts, it was in reality redirecting towards malware sites. The disputed domain name was suspended following the Complainant’s request to the Registrar to delete it of September 18, 2017. The previous use of the disputed domain name would have continued to harm the Complainant’s trademark rights and can thus not be qualified as a use in connection with a bona fide offering of goods or services. The Respondent also did not reply to the cease and desist letter from the Complainant or communicate in any way.
According to the Complainant, the Respondent’s choice of domain name cannot have been accidental and must have been influenced by the fame of the Complainants’ trademarks as these are well known at an international level. The association of VENTE PRIVEE with “officiel” is likely to cause Internet users to think that they are being directed towards the Complainant’s official website.
It is apparent, according to the Complainant that the Respondent intended to prey on the Complainant’s rights when registering the disputed domain name. A simple online search would have revealed the extent of those rights. The failure to respond to the cease and desist letter of the Complainant is also said to demonstrate bad faith, as is using a privacy WhoIs service, as it implies knowledge of the infringing nature of its actions and an attempt to hide from the consequences. The Respondent must have been notified of the suspension of the disputed domain name, further indicating knowledge and bad faith.
When accessing the website to which the disputed domain name resolved, the Complainant was redirected to warning messages about malware. According to the Complainant, consistent precedent indicates that the dissemination of malware through a domain name identical or similar to a well-known trademark in order to steal consumer information for commercial gain is evidence of bad faith. In any case, by redirecting Internet users to pages with malware or spyware the Respondent necessarily disrupts the Complainant’s business since it undermines its substantial efforts to develop an excellent reputation and image for its brands. There is also no way the Respondent could use the disputed domain name in a bona fide manner as it incorporates the Complainant’s trademark and would amount to trademark infringement. Finally the Complainant points out that passive holding can in any case be consistent with a finding of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is not identical to the trademark of the Complainant. However, it incorporates the trademark VENTE-PRIVEE in its entirety and in unaltered form. The addition of the word “officiel”, separated by a dash, does nothing to avoid a finding of confusing similarity with the Complainant’s trademark. Being the French word for “official”, the term confusingly suggests that the disputed domain name is under the official control of the Complainant, which is not the case.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant’s trademark VENTE-PRIVEE.
B. Rights or Legitimate Interests
The Respondent is not known by the disputed domain name or as “Vente-Privee”. Further, the Respondent has not been authorized to use the Complainant’s distinctive and well-established trademark in any guise whatsoever, or for any purpose. Before suspension, the disputed domain name was used in relation to a malware website; quite obviously such use gives no rise to any rights or the recognition of legitimate interests on the part of the Respondent. The Respondent has not replied to any communication from the Complainant or in any way made a case for the recognition of any rights or legitimate interests on its behalf.
The Respondent has deliberately adopted a distinctive mark that is widely recognized by web users, as it relates to a long-established and well patronized Internet-based business. There is no evidence of any justification for its conduct, either in terms of the registration itself, in terms of any communication from the Respondent, or in terms of the subsequent use of a connected website.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
As of the date of registration of the disputed domain name, the Respondent must have been aware of the rights of the Complainant in its VENTE-PRIVEE website and marks. The addition of the term “officiel” further suggests that the Respondent knew full well what it was doing when it registered a domain name incorporating another’s mark. In fact, the term (being the French word for “official”) has a tendency to suggest that any website to which the disputed domain name resolves is genuine and under the official control of the Complainant. It reinforces the misleading and confusing message inherent in the disputed domain name. The fact that the Respondent used an anonymizer service is further indication of its bad faith at registration. The subsequent use of the disputed domain name in connection with a malware site is as strong an indication of bad faith as is possible. There is no possibility of any legitimacy attaching to such actions, and they can only be aimed at extorting some unfair advantage from the Complainant.
The Respondent also did not file any Response or reply in any manner to the Complainant’s communications and has therefore offered no justification for its actions, even if it were at all possible to conceive of any such thing.
In any case, the Respondent has registered a domain name prominently and clearly incorporating well-recognized and distinctive trademark particularly relevant to Internet commerce, and that alone is sufficient to establish bad faith to the requisite standard.
Therefore the Panel holds that the disputed domain name was registered and used in bad faith.
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-privee-officiel.com> be transferred to the Complainant
Vente-privee.com, the French company.
William A. Van Caenegem
Date: March 22, 2018