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. / Tracy Spears

Case No. D2020-0256

1. The Parties

Complainants are the companies Vente-Privee.com and Vente-Privee.com IP S.à.r.l., France and Luxembourg (respectively), represented by Cabinet Degret, France.

Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Tracy Spears, United States of America (“United States”).

2. The Domain Names and Registrar

The disputed domain names <priveevente.club>, <priveevente.pro>, <vente-privee.icu>, and <vente-privee.live> are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2020. On February 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 3, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 4, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Center received email communications from Respondent on February 5 and 6, 2020. Complainant filed an amendment to the Complaint on February 6, 2020.

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 Respondent of the Complaint, and the proceedings commenced on February 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 27, 2020. The Center received another email communication from Respondent on February 7, 2020. On February 28, 2020, pursuant to paragraph 6 of the Rules, the Center notified the Parties that it would proceed with panel appointment.

The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on March 9, 2020. 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

Complainants are Vente-privee.com and Vente-privee.com IP S.à.r.l. Complainants belong to the same group of companies, the company Venteprivee.com IP S.à.r.l is a wholly owned subsidiary of the company Vente-privee.com.

Complainants’ activities consist of the purchasing and selling of all kinds of goods and services through e-commerce tools. Complainants run the “Vente-privee.com” website, which is a shopping club that has been operated for more than 15 years selling all kind of discounted products and services, including well‐known trademarks (e.g. fashion articles, food, travels, shows, etc.).

Complainants state that they are one of the most significant e-commerce websites not only in France, but in all the other countries where the website is available. Aiming to demonstrate their position and reputation, Complainants showed that in 2018 only, 54,000 event sales were organized on the website “vente-privee.com” and the company has delivered 116,000 parcels.

In addition, Complainants mention that in twelve years the Vente-privee.com group has grown from 35 to 2,000 employees, with 624 recruitments in 2013 alone. It is also said that in 2011, Vente-privee.com was the European most-valued start-up with an estimated value of USD 3 billion. At last, Complainants mention that in the first semester of 2018, the website “vente-privee.com” was visited on average by 3.5 million visitors per day, which reinforces the success and international reputation of the company.

Complainants registered multiple trademarks comprising the marks VENTE-PRIVEE and VENTE-PRIVEE.COM, such as: VENTE-PRIVEE.COM (French trademark, Serial No. 3318310, filed on October 14, 2004); VENTE-PRIVEE.COM (European Union trademark, Reg. No. 005413018, filed on October 24, 2006, and registered on December 20, 2007); and, VENTE-PRIVEE (International trademark designating Australia, Switzerland, Algeria, Egypt, China, Japan, Republic of Korea, and Turkey, Reg. No. 1116436, registered on February 23, 2012).

Complainants also own many domain names that reproduce the said trademarks, such as: <venteprivee.club> (registered on May 16, 2014); <vente-privee.club> (registered on February 13, 2014); <vente-privee.com> (registered on March 30, 2000); and, <vente-privee.pro> (registered on July 21, 2008).

The disputed domain names <vente-privee.live>, <vente-privee.icu>, <priveevente.pro>, and <priveevente.club> were registered, respectively, on May 5, June 15, July 24, and July 27, 2019.

5. Parties’ Contentions

A. Complainant

Complainants submit that the disputed domain names <vente-privee.live>, <vente-privee.icu>, <priveevente.pro>, and <priveevente.club> are confusingly similar to their trademark VENTE-PRIVEE. Complainants affirm that the disputed domain names <vente-privee.live> and <vente-privee.icu> fully incorporate Complainants’ trademarks, while the domains <priveevente.pro> and <priveevente.club> are highly similar to Complainants’ trademarks. In those last cases, Complainants argue that the fact that the terms “vente” and “privee” – incorporated by the disputed domain names <priveevente.pro> and <priveevente.club> – are reversed, does not mean that the term “priveevente” is not confusingly similar to Complainants’ trademarks.

Complainants plead that Respondent does not have any rights or legitimate interests in respect of the disputed domain names. In this regard, Complainants inform that (i) Respondent does not own any trademark constituted in whole or in part by the terms “vente-privee” in the United States nor in Europe, according to the United States Patent and Trademark Office’s and the European Union Intellectual Property Office’s trademarks databases and (ii) Respondent does not run any company in Florida, United States named “vente-privee”, according to “sunbiz.org” database, which shows that Respondent does not have a legitimate interest to own and use the disputed domain names.

Complainants claim that Respondent never operated the disputed domain names in connection with a bona fide offering of goods or services. This is because the disputed domain names were redirecting the user towards a suspicious website containing a research tool before resuming to an error page. In summary, no information was given on the services that the websites were likely to offer.

Complainants also affirm that they have never granted any authorization, license or any right to Respondent to use its VENTE-PRIVEE trademarks in the disputed domain names or in any other channel.

Moreover, Complainants claim that Respondent knew of Complainants’ rights before registering the disputed domain names, since (i) the VENTE-PRIVEE and VENTE-PRIVEE.COM trademarks are well-known at an international level, meaning that a basic search conducted before the registration of the disputed domain names would have immediately detected Complainants’ prior rights; (ii) Respondent has hidden his identity when registered the disputed domain names; (iii) Respondent has been recently condemned by the Czech Arbitration Court to transfer the domain name <blablacar.vip> to its rightful owner, the French company Comuto; and, (iv) Complainants sent cease and desist letters to Respondent requesting the transfer of the disputed domain names, but Respondent never answered.

At last, Complainants contend that if Respondent had legitimate interests towards the disputed domain names it would had immediately proposed to transfer it to Complainants as per Respondent’s emails to the Center on February 6, 2020.

In view of the above, Complainants request that the disputed domain names <vente-privee.live>, <vente-privee.icu>, <priveevente.pro>, and <priveevente.club> to be transferred to Complainant Vente‐privee.com.

B. Respondent

Respondent replied to the Complaint with three short emails, on February 5, 6, and 7, 2020, affirming that it had no knowledge that the disputed domain names were protected by trademark rights and that it would agree on transferring the disputed domain names to Complainants.

6. Discussion and Findings

To succeed, Complainants must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as following:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainants have rights; and

(ii) 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.

The burden of proving these elements is on Complainants.

A. Identical or Confusingly Similar

Complainants have duly proven the first element under paragraph 4(a) of the Policy, by evidencing that the Complainants own several trademark registrations over the marks VENTE-PRIVEE and VENTE-PRIVEE.COM in many jurisdictions, such as in the United States and in the European Union. In addition, it is true that the trademark VENTE-PRIVEE is contained in its entirety in the disputed domain names <vente-privee.live> and <vente-privee.icu>. In relation to the disputed domain names <priveevente.pro> and <priveevente.club> in particular, it is important to highlight that the fact that the terms “vente” and “privee” are reversed is not sufficient to prevent a finding that the disputed domain names are confusingly similar to Complainants’ trademarks. In this sense, the Panel refers to the UDRP decision in Philipp Plein v. Charlo Charly/Whoisguard Protected, Whoisguard, Inc., WIPO Case No. D2015-0668 (<pleinphilipp.com>), as can be verified below:

“The disputed domain name incorporates Complainant’s full name, with the two names reversed so that the last name appears first. Such reversal of names does not add any distinguishing element. Also, the mere addition of the generic Top-Level Domain (gtld) ‘.com’ does not add any distinguishing element.”

In addition, the WIPO Overview of WIPO Panel View on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, explains that “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.

Thus, the Panel finds that the disputed domain names <vente-privee.live>, <vente-privee.icu>, <priveevente.pro>, and <priveevente.club> are identical or confusingly similar to Complainants’ trademarks.

Therefore, the Panel considers the requirements of the first element of paragraph 4(a) of the Policy satisfied.

B. Rights or Legitimate Interests

Respondent had twenty days to submit a response according to paragraph 5(a) of the Rules. Respondent submitted three separate email communications in due time but has failed to demonstrate its rights or legitimate interests in the domain name.

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0 as follows: “[W]here a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

The disputed domain names <vente-privee.live>, <vente-privee.icu>, <priveevente.pro>, and <priveevente.club> were registered, respectively, on May 5, June 15, July 24, and July 27, 2019, that is, several years after the filing of Complainants’ first trademark VENTE-PRIVEE.COM in France, filed on October 14, 2004 (Serial No. 3318310). The Panel further notes the composition of the disputed domain names and finds that it is not legitimate to use registered trademarks to compose domain names, even if the terms that compose the trademark are reversed, without the consent of the owner of the said trademark, since it may cause consumers’ confusion (see section 2.5.1 of the WIPO Overview 3.0).

The Panel considers that the fact that (i) Respondent does not own any know trademark registration for the sign “vente-privee” and (ii) Respondent does not run any know company named “vente-privee” also shows the lack of interests of Respondent to own and to use the disputed domain names.

At last, the Panel finds that Complainants have never entered into any agreement with Respondent nor granted any authorization or license to Respondent regarding the use of Complainants’ trademarks, nor is Respondent affiliated with Complainants’ activities.

Accordingly, Complainants established a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain names. Since Respondent has not presented any evidence or elements to justify any rights or legitimate interests in connection with the disputed domain names, the Panel has found no indication that any of the circumstances described in paragraph 4(c)(i)-(iii) of the Policy could apply to the present matter.

Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names (Policy, paragraph 4(a)(ii)).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists several circumstances that, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include: “(iv) using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location”.

The Panel finds it is highly unlikely that Respondent had no knowledge of the VENTE-PRIVEE marks at the time of registration of the disputed domain names. On the contrary, the evidence shows that Respondent must have been aware of the VENTE-PRIVEE marks at the time of registration, given that (i) Complainants’ trademark is widely known, especially in France; (ii) Respondent has been recently condemned in another UDRP proceeding to transfer the domain name <blablacar.vip> to its rightful owner, which shows that it may be usual practice by the Respondent to register domain names containing widely-known brands for purposes of selling them afterwards; (iii) Respondent has registered four disputed domain names that are identical or confusingly similar to the VENTE-PRIVEE marks; and, (iv) Complainants had sent, in the past a cease and desist letter to Respondent concerning this matter. Thus, Respondent was aware of the infringement upon Complainants’ prior rights.

The Panel also see as an indication of bad faith the fact that Respondent had hidden its identity in a way that it could not be properly reached by third parties. For instance, Respondent has anonymized its name by using a WhoIs privacy service and the websites shown through the disputed domain names display untruthful information regarding the company and the contact channels.

At last, given the lack of bona fide offering of goods or services, noting that three out of four of the disputed domain names were redirecting towards suspicious websites presented like a sort of search engine, it is assumed that the registration of the disputed domain names by Respondent was solely with the intention to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainants’ widely known trademark.

Considering that “Vente-privee.com” is an internationally well-known online shopping club, the Panel is of the opinion that such use of the disputed domain name is further evidence of bad faith.

The fact that currently the four disputed domain names do not resolve to an active website does not prevent a finding of bad faith.

Thus, the Panel concludes that Respondent acts in bad faith for the following reasons:

(i) the widespread reputation of “Vente-privee.com” makes it highly unlikely that Respondent had no prior knowledge of Complainants’ trademark rights at the moment of the disputed domain names registration;

(ii) Respondent has no rights or legitimate interests in the disputed domain names and the use of the disputed domain names was not a bona fide use;

(iii) Respondent’s disputed domain names fully reproduces Complainants’ VENTE-PRIVEE trademark; and,

(iv) Respondent had hidden its identity in a way that it could not be properly reached by third parties.

Accordingly, the Panel concludes that the disputed domain names were registered and are being used in bad faith under paragraph 4(b)(iv) of the Policy.

As such, the Panel finds that Complainants have satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

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-privee.live>, <vente-privee.icu>, <priveevente.pro>, and <priveevente.club> to be transferred to Complainant Vente-privee.com.

Gabriel F. Leonardos
Sole Panelist
Date: March 23, 2020