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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Valeo v. Ali Esmaelnejad

Case No. D2020-3034

1. The Parties

The Complainant is Valeo, France, represented by Tmark Conseils, France.

The Respondent is Ali Esmaelnejad, Hungary.

2. The Domain Name and Registrar

The disputed domain name <iranvaleo.com> (the “Domain Name”) is registered with CSL Computer Service Langenbach GmbH dba Joker.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2020. On November 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 16, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 16, 2020, 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 amended Complaint on November 20, 2020.

The Center verified that the Complaint together with the amended 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 December 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2020. The Respondent did not submit any response. The Center received emails from a third party, on November 17 and 18, 2020, claiming that the Respondent is a hosting customer. Accordingly, the Center notified the Commencement of Panel Appointment on December 22, 2020.

The Center appointed Mathias Lilleengen as the sole panelist in this matter on January 6, 2021. 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 designs innovative solutions for smart mobility, with a particular focus on intuitive driving and reducing CO₂ emissions. The Complainant also provides and distributes spare parts for automakers and independent aftermarket operators. The Complainant’s worldwide sales exceeded 19000 million EUR in both 2018 and 2019.

The Complainant has an extensive trademark portfolio and the VALEO trademark is registered in numerous countries in the world such as French trademark registration No. 1624041 registered December 19, 1980.

The Complainant also owns many domain names consisting of or including the Complainant’s trademark, for example <valeo.com>.

According to the Complainant, the Domain Name was registered on April 2, 2020. At the time of drafting the Decision, the Domain Name resolved to a webpage offering automotive products and using the Complainant’s logo without permission.

5. Parties’ Contentions

A. Complainant

The Complainant provides evidence of trademark registrations, and argues that the Domain Name incorporates the Complainant’s trademark, together with the descriptive word “iran”. The Complainant argues this does not distinguish the Domain Name from the Complainant’s trademark, but rather increases the likelihood of confusion and association with the Complainant’s business.

The Complainant asserts that the Respondent is not authorized to use the Complainant’s trademark. The Respondent is not commonly known by the Domain Name. The Respondent cannot establish rights in the Domain Name as it has not made any use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services. On the contrary, on the website the Respondent, without permission, uses the Complainant’s trademark with the addition “Iran”.

The Complainant believes the Respondent knew of the Complainant’s activity and prior trademark rights when the Respondent registered the Domain Name. The Complainant further argues that the fact that the Domain Name resolves to a website with unauthorized use of the Complainant’s logo and offering automotive products, is further evidence of bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established that it has rights in the trademark VALEO. The test for confusing similarity involves the comparison between the trademark and the Domain Name. The Domain Name incorporates the Complainant’s trademark, with the “Iran” added in the front. The addition does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark.

For the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the generic Top-Level Domain (“gTLD”) “.com”; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.

The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register the Domain Name containing the Complainant’s trademark or otherwise make use of the Complainant’s mark. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired unregistered trademark rights. The Respondent cannot establish rights in the Domain Name as it has not made use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering. The Respondent’s unauthorized use of a reproduction of the Complainant’s logo, is not bona fide. Furthermore, the Panel notes that while it is not clear whether the Respondent is offering genuine goods and services for VALEO automotive parts, the website does not disclose in any event the relationship between the Complainant and the Respondent (see section 2.8 of the WIPO Overview 3.0). There is no indication in the case file of evidence of a bona fide use that may point to a legitimate interest for the Respondent within the meaning of the Policy.

In addition, the disputed domain name which is composed of the Complainant’s trademark together with the geographical term “iran” carries a high risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0).

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel agrees with the Complainant that the Respondent most likely was aware of the Complainant when the Respondent registered the Domain Name. It is evident from the Complainant’s fame and the fact that the Respondent’s website refers to automotive products.

Based on the case file, in particular the fact that the Respondent has made unauthorized use of the Complainant’s logo and not replied to the Complainant’s contentions, the Panel finds it more likely than not that the Respondent has registered and used the Domain Name to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark.

For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of 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 Domain Name <iranvaleo.com> be transferred to the Complainant.

Mathias Lilleengen
Sole Panelist
Date: January 13, 2021

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