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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Vente-Privee.Com v. Mau Lio

Case No. D2021-0440

1. The Parties

Complainant is Vente-Privee.Com, France, represented by Cabinet Degret, France.

Respondent is Mau Lio, China.

2. The Domain Name and Registrar

The disputed domain name <veepeegreen.com> is registered with TurnCommerce, Inc. DBA NameBright.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2021. On February 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 12, 2021, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2021. Respondent did not submit any response. The Center received Respondent’s communication by email on March 17, 2021. On April 9, 2021, the Center informed the Parties that it would proceed to panel appointment.

The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on April 19, 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

Complainant is a French e-commerce company that has been selling a wide range of products and services under the VENTE-PRIVEE trademark since 2001 through its primary website located at the <vente-privee.com> domain name. Complainant was the 4th most visited e-commerce merchant in France in 2018, generating a revenue of EUR 3.7 billion that year. Previous UDRP panels have recognized that Complainant’s VENTE-PRIVEE mark is well-known around Europe. See Vente-privee.com and Vente-privee.com IP S.à.r.l. v. WhoisGuard Protected, WhoisGuard, Inc. / Robert Jurek, WIPO Case No. D2018-0189 (“Respondent has registered a domain name prominently and clearly incorporating well-recognized and distinctive trademark particularly relevant to Internet commerce”); Vente-privee.com, Vente-privee.com IP S.à.rl against Contact Privacy Inc. Customer 0154235930 / Gerard Loic, VentePriveeFrance, WIPO Case No. D2019-1185, (“[Complainant] has become one of the main e-commerce sites in France and in other countries, has a very important activity and enjoys a reputation in Europe”); Vente-privee.com and Vente-privee.com IP S.à.r.l. v. Super Privacy Service c/o Dynadot, WIPO Case No. D2018-0192, (“[T]here 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.”)

In 2019, Complainant advertised internationally that it would be rebranding its business and adopting the VEEPEE trademark (“VEEPEE Mark” or “Complainant’s Mark”) as its main trademark. Complainant obtained various trademark registrations for its VEEPEE mark, including International registration number 1409721 (registered on November 8, 2017), and European Union Trade Mark registration number 017442245 (registered on March 29, 2018). After Complainant’s rebranding in 2019, Complainant’s revenue grew to EUR 4 billion, and its primary website, which is now located at <veepee.com> domain name, became the third most visited e-commerce platform in France.

Respondent registered the disputed domain name <veepeegreen.com> on February 3, 2021, nearly three weeks after Complainant’s trademark application in France for the VEEPEE GREEN mark (French registration number 4715564) was published on January 15, 2021, and well after Complainant had obtained other registrations for the VEEPEE mark as noted above. The disputed domain name currently resolves to a parked page displaying the message “veepeegreen.com is coming soon.” Respondent has been ordered to transfer various domain names corresponding to third-party trademarks in prior UDRP proceedings. See Pfizer Inc v. Mau Lio, WIPO Case No. D2017-0242; Otsuka Pharmaceutical Co. Ltd. v. Mau Lio, WIPO Case No. D2018-0687; Emeis Cosmetics Pty. Ltd. v. Mau Lio WIPO Case No. D2020-0561.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is identical or otherwise confusingly similar to Complainant’s VEEPEE trademark because it fully incorporates the VEEPEE Mark and merely includes the generic or descriptive term “green.” Complainant argues that the addition of this term in the disputed domain name does nothing to prevent a finding of confusing similarity under paragraph 4(a)(i) of the Policy. Furthermore, Complainant argues that the disputed domain name is identical to the VEEPEE GREEN mark it is currently prosecuting in France.

Complainant also alleges that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed Respondent the right to use Complainant’s Mark, and Respondent is not otherwise authorized to act on Complainant’s behalf. Complainant also alleges that there is no evidence that Respondent is commonly known by the disputed domain name nor making legitimate noncommercial or fair use of it. Furthermore, Complainant contends that there is no evidence that Respondent ever intended to use or engage in demonstrable preparations to use the disputed domain name in connection with bona fide offerings of goods and services.

Complainant also contends that the disputed domain name was registered and used in bad faith. Complainant argues that Respondent must have had actual knowledge of Complainant’s rights in the VEEPEE Mark given the well-known reputation of Complainant’s VENTE-PRIVEE and VEEPEE trademarks internationally. Complainant further argues that Respondent has engaged in a pattern of registering domain names identical to newly filed trademarks. According to Complainant, the fact that Respondent registered the disputed domain name shortly after Complainant’s trademark application for VEEPEE GREEN was published in France shows that Respondent is targeting Complainant’s VEEPEE and VEEPEE GREEN marks and continuing a pattern of bad faith behavior of registering domain names incorporating marks he or she is not authorized to use.

B. Respondent

Respondent did not substantively reply to Complainant’s contentions. Respondent merely sent an email to the Center stating that he or she was willing to transfer the disputed domain name for USD 800 to avoid a “costly and long dispute.” However, there is no evidence on record showing that any negotiations ensued between the parties.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

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

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

Furthermore, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:

“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?

Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.

A. Identical or Confusingly Similar

Ownership of a nationally or internationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the VEEPEE Mark through its national and international registrations.

With Complainant’s rights in the VEEPEE Mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain (“gTLD”) in which the disputed domain name is registered) is identical or confusingly similar to Complainant’s Mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “[…] reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. It is furthermore well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive word or suffix. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795. As stated in section 1.8 of the WIPO Overview 3.0, “[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”. See Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923.

Here, Complainant’s VEEPEE Mark is fully and identically incorporated in the disputed domain name. The inclusion of the term “green” does nothing to prevent a finding of confusing similarity under the first element. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to Complainant’s VEEPEE Mark.

B. Rights or Legitimate Interests

Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of production of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.

Paragraph 4(c) of the Policy lists the ways that a respondent may demonstrate rights or legitimate interests in the disputed domain name:

(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the 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 domain name, even if it has acquired no trademark or service mark rights; or

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

Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that it has never authorized, licensed or permitted Respondent to use the VEEPEE or VEEPEE GREEN marks in any way. Furthermore, there is no evidence that Respondent is using the disputed domain name in connection with any bona fide offering of goods or services, nor making a legitimate noncommercial or fair use of the disputed domain name because it merely resolves to a parked page that is allegedly under construction.

Therefore, the Panel concludes that Respondent does not have rights or a legitimate interests in the disputed domain name within the meaning of Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b)(ii) of the Policy indicates that bad faith use and registration can be found if a respondent is shown to have registered the domain in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct.

Furthermore, from the very inception of the UDRP, panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. Factors considered relevant in applying the passive holding doctrine include the degree of distinctiveness or reputation of the complainant’s mark, the failure of the respondent to submit any evidence of actual or contemplated good-faith use and the implausibility of any good faith use to which the domain name may be put. WIPO Overview 3.0, section 3.3; see also Altria Group Distribution Company Altria Group, Inc. v. sb ani, WIPO Case No. D2019-0407 (“Bad faith can be found in a situation involving a passive holding of the domain name registration.”); Philip Morris USA Inc. v. Dante Credaro, Two2face Corp., WIPO Case No. D2016-01627 (“The disputed domain name is not linked to an active website. However this inactivity does not prevent a finding of bad faith use.”)

In this case, bad faith can be found in the registration and use of the disputed domain name. Complainant provided ample evidence to show the widespread use and numerous registrations of the VEEPEE mark that long predates Respondent’s registration of the disputed domain name. Therefore, Respondent was likely aware of the VEEPEE trademark when he or she registered the disputed domain name, or knew or should have known that it was identical or confusingly similar to Complainant’s Mark. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.

Furthermore, Respondent has also engaged in a pattern of registering and using domain names that are variations of known third-party trademarks, as found in prior UDRP proceedings against Respondent, which is further evidence of bad faith use and registration of the disputed domain name under Policy, paragraph 4(b)(ii). UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration. WIPO Overview 3.0, section 3.1.2. This may include a scenario where a respondent, on separate occasions, has registered trademark-abusive domain names. Id. Complainant here cited at least three other proceedings where Respondent was found to have been engaging in bad faith conduct targeting trademarks.

Further, the passive holding doctrine applies in this case given the distinctiveness and reputation of Complainant’s Mark, and the implausibility of any conceivable good faith basis to which the disputed domain name could be put by Respondent. The Panel finds it more likely that Respondent selected the disputed domain name with the intention to take advantage of Complainant’s reputation by registering a domain name fully containing Complainant’s Mark with the intent to ultimately use the domain name for illegitimate purposes. Respondent’s registration of the disputed domain name soon after the publication of Complainant’s application to register the VEEPEE GREEN mark in France is indicative of Respondent’s opportunistic bad faith, particularly when viewed against the other evidence of Respondent’s pattern of bad faith registration and use of domain names as discussed above.

Finally, although not alleged by Complainant in its Complaint given the timing, the Panel also notes that Respondent’s offer to sell the disputed domain name following the filing of the Complaint is additional evidence that Respondent’s primary purpose in registering the disputed domain name was to profit from its opportunistic registration by selling it to Complainant for an amount well in excess of Respondent’s out-of-pocket registration costs. This is additional evidence of bad faith registration and use under Policy paragraph 4(b)(i).

For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name was in bad faith, pursuant to paragraphs 4(b)(i) and 4(b)(ii) 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 <veepeegreen.com> be transferred to Complainant.

Brian J. Winterfeldt
Sole Panelist
Date: April 26, 2021

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