WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Laboratoires Vivacy v. Noorinet
Case No. D2020-0972
1. The Parties
The Complainant is Laboratoires Vivacy, France, represented by Inlex IP Expertise, France.
The Respondent is Noorinet, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <vivacy.com> is registered with Megazone Corp., dba HOSTING.KR (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2020. On April 21, 2020, the Center transmitted to the Registrar a request for registrar verification in connection with the disputed domain name. On April 22, 2020, the Registrar transmitted to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On April 27, 2020, the Center, in both English and Korean, notified the Parties that the Complaint was submitted in English, and that according to the Registrar, the language of the registration agreement for the disputed domain name is Korean. In the same notification, the Center requested the Complainant to provide, by April 30, 2020:
“1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or
2) … the Complaint translated into Korean; or
3) … a request for English to be the language of the administrative proceedings.”
To the Respondent, the Center stated that “if the Respondent is intending to participate in these proceedings, and/or has any comments on the Complainant’s submission replying to this notification, the Respondent is requested to submit these to the Center by May 2, 2020.” The Center also advised the Respondent:
“Specifically in the case of the Complainant submitting (or indicating that it will submit) a request for the language of proceedings to be English, and the Respondent objects to such request, the Respondent is invited to indicate that objection for the record, and to submit any arguments/supporting materials … as to why the proceedings should not be conducted in English.
Please note that if we do not hear from you by [May 2, 2020], we will proceed on the basis that you have no objection to the Complainant’s request that English be the language of proceedings.”
On April 27, 2020, the Complainant informed the Center of its request that English be the language of the proceeding. The Respondent did not submit any material regarding the language of the proceeding.
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, again both in English and Korean, formally notified the Respondent of the Complaint, and the proceeding commenced on May 4, 2020. In accordance with the Rules, paragraph 5, the due date for the Response was May 24, 2020. The Respondent did not submit any response. Accordingly, on May 25, 2020, the Center notified the Respondent’s default.
The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on June 4, 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
The Complainant describes itself as “a French manufacturer specialising in the development, production and distribution of injectable hyaluronic acid-based medical devices for Aesthetic and Anti-ageing Medicine.” The Complainant has obtained registrations of marks containing “VIVACY” in multiple jurisdictions, including the European Union (registration no. 005998191 for VY VIVACY LABORATOIRES, registered on May 22, 2008) and France (registration no. 4387905 for V VIVACY PARIS, registered on September 7, 2018).
The Respondent registered the disputed domain name <vivacy.com> on March 30, 2011. The disputed domain name resolves to a webpage displaying pay-per-click links.
5. Parties’ Contentions
The Complainant contends principally that: (i) the disputed domain name is identical or confusingly similar to a 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. In addition, the Complaint states, inter alia:
“‘VIVACY’ is highly distinctive as it has no meaning in French or English language.”
“[T]he public will believe that the dispute[d] domain name is just a declination of the Complainant website for different services provided by the Complainant.”
“The Respondent has not been authorized by the Complainant to use the name ‘VIVACY’. Moreover, there is no business relationship, or any link of any nature, existing between the Complainant and the Respondent.”
“[T]he Respondent sought to take unfair advantage from the well-known Complainant’s trademarks and business by diverting consumers from the Complainant’s websites to the parked website http://vivacy.com/, associated to the disputed domain name, where the Respondent was benefiting from the confusion and diversion by receiving pay-per-click commissions.”
“The Complainant tried to find an amicable settlement in this matter …. These attempts failed due to the … lack of response of the Respondent and obvious bad faith of the Respondent.”
The Respondent did not reply to the Complainant’s contentions. Under paragraphs 5(f) and 14(a) of the Rules, the Panel may decide the dispute based on the Complaint. Paragraph 14(b) allows the Panel to draw appropriate inferences from the Respondent’s default.
6. Discussion and Findings
Initially, the Panel must address the language of the proceeding.
Paragraph 11(a) of the Rules provides that the language of the registration agreement is the language of the administrative proceeding, unless otherwise agreed by the parties or specified in the registration agreement. This paragraph also states that the determination of the language is “subject to the authority of the Panel …, having regard to the circumstances of the administrative proceeding.” Here, the language of the registration agreement is Korean; nevertheless, the Complainant requests that English be the language of the proceeding.
After receiving the Complaint submitted in English, the Center notified the Parties, in both English and Korean, of the Center’s procedural rules regarding the language of the proceeding. The Center informed the Respondent that it may object timely to a proceeding conducted in English. The Respondent did not respond to the Center’s notification, and has defaulted. The Panel also notes that all of the Center’s communications to the Parties have been sent in both Korean and English. The Panel decides that English is the language of this proceeding.
On the merits, in order to prevail, the Complainant must satisfy each of the three elements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
On the first element, the Panel concludes that the disputed domain name <vivacy.com> is identical or confusingly similar to a mark in which the Complainant has rights (VY VIVACY LABORATOIRES and V VIVACY PARIS). The Complainant has provided ample evidence that it has rights in the VIVACY mark, and “vivacy” appears in full and alone in the disputed domain name, except for the generic Top-Level Domain, “.com”.
The first element is established.
B. Rights or Legitimate Interests
The Complainant states that it has not authorized the Respondent to use the “Vivacy” name, and has met its initial burden of making a prima facie showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The burden shifts to the Respondent to demonstrate any such rights or legitimate interests. Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances that may demonstrate the Respondent’s rights or legitimate interests in the disputed domain names.
The Panel is at a loss to explain how the Respondent could have properly settled on the “Vivacy” term for its domain name. The Respondent’s default does not assist in this task. Ultimately, the Panel is unable to ascertain any evidence that would demonstrate the Respondent’s rights or legitimate interests in the disputed domain name, as described in the Policy, or otherwise.
The second element is also satisfied.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must show that the disputed domain name “has been registered and is being used in bad faith.” Paragraph 4(b) provides a non-exhaustive list of circumstances that are “evidence of the registration and use of a domain name in bad faith”.
In this case, the disputed domain name resolves to a site that displays a search portal with various links that further resolve to websites devoted to anti-aging products, precisely the Complainant’s line of business. In short, the Panel determines that the Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website … by creating a likelihood of confusion with the [C]omplainant’s mark,” as set forth in paragraph 4(b)(iv) of the Policy.
The third element is demonstrated.
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name <vivacy.com> be transferred to the Complainant.
Date: June 15, 2020