WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vente-privee.com and Vente-privee.com IP S.à.r.l. v. Super Privacy Service c/o Dynadot
Case No. D2018-0192
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 Super Privacy Service c/o Dynadot of San Mateo, California, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <vente-privee.life> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2018. On January 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 1, 2018, 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.
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, 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 the use 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 March 12, 2017. The website to which the disputed domain name resolves displays sponsored hyperlinks, including some to competitors of the Complainant.
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 VENTE-PRIVEE in its entirety. The Complainant contends that the presence of the “.life” generic Top-Level Domain (“gTLD”) plays only a technical role and need not be taken into account in the comparison of the relevant signs.
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 asserts that it is unaware of the existence of any legitimate third parties’ rights in relation to the “vente-privee” denomination. 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 any authorization, license or right whatsoever to use the Complainant’s VENTE-PRIVEE trademarks, in the disputed domain name or in any capacity whatsoever.
The Complainant also asserts that the Respondent’s actions show no intention to use the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name, which is identical to the Complainant’s trademarks, redirects towards a parking page containing promotional links
advertising the Complainant’s competitors or redirecting to the Complainant’s Twitter and YouTube pages. The Complainant contends that as the Respondent’s exploitation of the disputed domain name harms the Complainant’s trademark rights, it cannot be characterized as use in connection with a bona fide offering of goods or services.
Moreover, the Complainant points out that since the disputed domain name has now been registered for almost one year, assuming a genuine intention to use it in good faith, the Respondent has had enough time to build a website with real content. The Respondent would have answered the cease and desist letter sent by the Complainants via the email address displayed in WhoIs.
It is apparent, according to the Complainant, that the Respondent registered the disputed domain name with the Complainant in mind. A simple online search would have revealed the extent of the Complainant’s rights. The failure to respond to the cease and desist letter of the Complainant is also said to imply knowledge of the illegitimacy of its actions and thus demonstrates bad faith. Using a privacy WhoIs service implies knowledge of the infringing nature of its actions and an attempt to hide from the consequences.
According to the Complainant, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Complainant points out that the disputed domain name is used for a parking page containing links to competitors, and which redirects towards the Complainant’s YouTube and Twitter pages and reproduces the Complainants’ trademarks. The Complainant asserts that the Respondent cannot be ignorant of the rights of the Complainant since the VENTE-PRIVEE(.COM) trademarks are well-known worldwide; the links displayed on the website accessible by way of the disputed domain name promote the Complainant’s competitors, notably in regard to the sale of fashion articles/travel that the Complainant successfully markets; and the Respondent makes a commercial use of the disputed domain name for advertising purposes. The disputed domain name is used in connection with activities comparable to those of the Complainant and protected by the Complainant’s rights. Thus, according to the Complainant, the circumstances of use of the disputed domain name necessarily divert Internet users who were initially interested in visiting the
“www.vente-privee.com” website. All this establishes that the Respondent had complete knowledge of the Complainant.
Finally the Complainant contends that the Respondent knew or should have known that registering
and using the disputed domain name would violate the Complainant’s prior rights. Accordingly there is no plausible explanation for the Respondent’s registration of the disputed domain name other than trying to benefit from the Complainant’s well-known trademarks. The Respondent is said not have any personal relationship to the trademarks. According to the Complainant it is therefore clear that the Respondent intends only to use the disputed domain name to hinder the development of the Complainant’s business and its conduct will harm the Complainant’s activities and tarnish their renowned trademarks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
There is no difference between the disputed domain name and the VENTE-PRIVEE trademarks of the Complainant. The gTLD extension “.life” is not relevant to the comparative exercise.
Therefore the Panel holds that the disputed domain name is identical to the Complainant’s trademarks.
B. Rights or Legitimate Interests
The Respondent has not filed a Response nor has it replied to the cease and desist letter of the Complainant. The Complainant’s relevant trademark is very well established amongst consumers, in particular in the Internet sphere. The Respondent would clearly have been aware of the VENTE-PRIVEE trademark and the rights of the Complainant therein at the time of registration of the disputed domain name. The circumstances are thus not conducive or indicative of some competing rights or interests vesting in the Respondent. In fact the Respondent has sought to ride on the coat-tails of the Complainant by way of a parking page and hyperlinks, including those to competitors of the Complainant. These actions are not of a kind to vest any rights or demonstrate any legitimate interests the Respondent might have. To the contrary, they amount to an illegitimate attempt to mislead consumers and draw some commercial or financial advantage from any success in so doing.
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
The Respondent must have been aware of the VENTE-PRIVEE trademarks of the Complainant at the time of registration of the disputed domain name. The Complainant’s business under those marks and via its official website was well established by that time and the number of Internet users making use of its services online was very considerable indeed. In any case the nature or the parking page of the Respondent is testament to an intention to draw advantage from the established reputation of the Complainant by acquiring a domain name incorporating, whole and unadulterated, its highly recognizable trademark. The Respondent’s whole undertaking in registering the disputed domain name and then establishing a parking page is indicative of an illegitimate attempt to derive some ill-gotten gain from the Complainant’s established reputation on the Internet.
Therefore the Panel holds that the disputed domain name was registered and is being 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.life> be transferred to the Complainant
Vente-privee.com, the French company.
William A. Van Caenegem
Date: March 22, 2018