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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jérôme Proust v. Minh Do Van

Case No. D2020-2352

1. The Parties

The Complainant is Jérôme Proust, France, represented by Adrien Aulas, France.

The Respondent is Minh Do Van, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <wedoogift.best> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2020. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 Registrar also confirmed that the language of the Registration Agreement is English. On September 15, 2020, the Center sent an email communication to the Complainant, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Complainant filed an amendment to the Complaint.

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 September 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default October 12, 2020.

The Center appointed Matthew Kennedy as the sole panelist in this matter on October 15, 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 is an individual resident in France. His company, Wedoogift SAS, offers electronic gift vouchers and other services to businesses from a website associated with the domain name <wedoogift.com>. The Complainant, acting on behalf of his company when it was in the process of formation, registered French trademark number 4052404 for WEDOOGIFT on December 5, 2013, in respect of advertising, insurance, and other services in classes 35, 36, and 42. That trademark registration remains in effect.

The Respondent is an individual resident in Viet Nam.

The disputed domain name was registered on April 10, 2020. It formerly resolved to a website that mimicked the Complainant’s website, offering the same services and displaying the Complainant’s address and telephone number but with a different email contact address. Prices were displayed in Euros. At the request of the Complainant and his company, the Paris Court (le Tribunal Judiciaire de Paris) issued a summary order on July 10, 2020 enjoining four Internet service providers to block access to the disputed domain name for a period of up to twelve months. At the date of this Decision, the disputed domain name no longer resolves to any active website; rather, it is passively held.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical to the Complainant’s trademark WEDOOGIFT.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name has only been used to display an infringing website that is a strictly identical copy of the official website of the Complainant’s company.

The disputed domain name was registered and is being used in bad faith. The Respondent has been using the disputed domain name for the sole purposes of (i) hosting an infringing website which is a strictly identical copy of the official website of the Complainant’s company; and (ii) deceiving and diverting the Complainant’s customers by tricking them into connecting to the Respondent’s website and contacting the Respondent to acquire services identical to those offered by the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(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

Based on the evidence submitted, the Panel finds that the Complainant has rights in the WEDOOGIFT mark.

The disputed domain name wholly incorporates the WEDOOGIFT mark as its operative element. The only additional element is a Top-Level Domain (“TLD”) suffix (“.best”). As a technical requirement of domain name registration, the TLD suffix is generally disregarded in the comparison between a domain name and a trademark for the purposes of the Policy.

Therefore, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The disputed domain name formerly resolved to a website that mimicked the Complainant’s website, offering electronic gift vouchers and other services to businesses. It is clear from the Complaint’s allegations of infringement that the Complainant has not authorized the Respondent to register or use its WEDOOGIFT trademark or develop the Respondent’s website. At the time of this Decision, the disputed domain name no longer resolves to an active website. The Panel does not consider either use to be a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.

The Respondent’s name is listed in the Registrar’s WhoIs database as “Minh Do Van”, not “Wedoogift”. There is no evidence that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.

The disputed domain name formerly resolved to a website that offered services in exchange for payment. It no longer resolves to any active website. The Panel does not consider either use to constitute a legitimate noncommercial or fair use of the disputed domain name for the purposes of paragraph 4(c)(iii) of the Policy.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because she did not respond to the Complainant’s contentions.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”

The disputed domain name was registered in 2020, years after the Complainant obtained its trademark registration for WEDOOGIFT. The operative element of the disputed domain name is identical to the Complainant’s WEDOOGIFT trademark. The website formerly associated with the disputed domain name mimicked the Complainant’s website, displaying the Complainant’s trademark, address and telephone number. These facts indicate to the Panel that the Respondent was aware of the Complainant and targeted its WEDOOGIFT trademark at the time that she registered the disputed domain name.

The Respondent formerly used the disputed domain name in connection with a website that was falsely presented as if it were the Complainant’s website, but with a different contact email address. The Respondent’s website offered services identical to those offered by the Complainant in exchange for payment. The disputed domain name is clearly intended to attract Internet users by creating a likelihood of confusion with the Complainant’s domain name <wedoogift.com>, with which it is identical but for the TLD suffix. Accordingly, the Panel finds that these circumstances fall within the terms of paragraph 4(b)(iv) of the Policy.

The Panel notes that the use of the disputed domain name has since changed and that it no longer resolves to an active website. This change of use does not alter the Panel’s conclusion, in fact, it may be a further indication of bad faith.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 name <wedoogift.best> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: October 26, 2020

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