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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Vivendi v. My Domain Provider / Elske Donkersloot

Case No. D2021-0631

1. The Parties

The Complainant is Vivendi, France, represented by Nameshield, France.

The Respondent is My Domain Provider, the Netherlands / Elske Donkersloot, the Netherlands.

2. The Domain Names and Registrar

The disputed domain names <vi-vendi.com>, <vi-vendi.online>, and <vi-vendi.site> are registered with Realtime Register B.V. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2021. On March 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 4, 2021, 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 the Complainant on March 5, 2021, 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 March 5, 2021.

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 March 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 30, 2021. On March 10 and 11, 2021, the Center received email communications from the Respondent.

Further to the Complainant’s request for suspension, the Center suspended the proceeding on March 11, 2021. Further to the Complainant’s request for reinstitution, this proceeding was reinstituted on April 13, 2021. The new Response due date was May 2, 2021. The Center received no further communications from the Respondent.

The Center appointed Theda König Horowicz as the sole panelist in this matter on May 17, 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 is a French multinational mass media conglomerate headquartered in Paris. The Complainant has activities in music, television, film, video games, telecommunications, tickets, and video hosting services.

The Complainant is the owner of several international trademark registrations for VIVENDI including:

- International Trademark Registration No. 687855, in international classes 09, 35, 36, 37, 38, 39, 40, 41, and 42, registered on February 23, 1998;
- International Trademark Registration No. 930935, in international classes 09, 16, 28, 35, 36, 38, 41, and 42, registered on September 22, 2006.

The Complainant also owns several domain names comprising VIVENDI, notably <vivendi.com>, registered on November 12, 1997. The latter is linked to the Complainant’s official website.

The disputed domain names were registered on February 28, 2021, and resolved respectively to a webpage operated by the Registrar in Dutch language stating that the disputed domain names are not available for registration.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain names are confusingly similar to the VIVENDI mark. The addition of a hyphen in the disputed domain names creates a minor misspelling that would be easy for an Internet user to overlook. The addition of Top-Level Domains such as “.com” and “.online” do not change the overall impression of the designation as being connected to the VIVENDI mark.

The Complainant further considers that the Respondent lack rights or legitimate interests in respect of the disputed domain names for the following reasons:

- the Respondent is not known as the disputed domain names;
- the Respondent is not affiliated with the Complainant nor authorized by the Complainant to use the VIVENDI mark;
- the Complainant does not carry out any activity for, nor has any business with the Respondent;
- the Respondent did not make any use of the disputed domain names since their registration, which confirms that the Respondent has no demonstrable plan to use the disputed domain names.

The Complainant finally contends that its VIVENDI mark is distinctive and acquired a reputation from which it infers that the Respondent has registered the disputed domain names with full knowledge of the Complainant’s mark. Furthermore, the Complainant invokes passive holding and concludes that the disputed domain names have been registered and used in bad faith.

B. Respondent

The Respondent alleged to have cancelled the disputed domain names and to have released these.

6. Discussion and Findings

Under the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:

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

(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and

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

A. Identical or Confusingly Similar

The Complainant showed that it has trademark rights in VIVENDI through several registrations designating many countries notably within the European Union. Accordingly, the Panel finds that the Complainant has demonstrated its rights in the VIVENDI mark.

According to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.

The disputed domain names contain VIVENDI in its entirety with the difference that the disputed domain names include a hyphen between “vi” and “vendi”, that is “vi-vendi”. However, the Complainant’s trademark remains clearly recognizable.

The Panel also notes that it is well-established that the addition of Top-Level Domains may be disregarded for the purpose of comparison under the first element.

Under these circumstances, the Panel concludes that the disputed domain names are confusingly similar to the Complainant’s mark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:

(i) the use of the domain name in connection with a bona fide offering of goods or services;

(ii) being commonly known by the domain name; or

(iii) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.

Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden of production shifts to the Respondent to rebut it. See WIPO Overview 3.0, section 2.1.

The Complainant makes several statements showing that it never allowed the Respondent to register or use the trademark VIVENDI by any means whatsoever and that the Respondent would not have any rights in the name and mark VIVENDI or would be known by it.

Based on the above, the Panel considers that the Complainant has made a prima facie case and the burden of production shifts to the Respondent.

The Respondent has replied that it cancelled the disputed domain names and that it would have released these. The Respondent does not allege to have any legitimate interests in the disputed domain names. As a matter of fact, the Panel notes there is no indication in the case file that the Respondent would have had at one point a legitimate interest in registering and using the disputed domain names.

Consequently, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant has shown that its VIVENDI trademarks are registered and are used notably through the official website “www.vivendi.com”.

It is well-established and not disputed by the Respondent that the VIVENDI trademark is distinctive and notorious, specifically within the European Union.

Consequently, the Panel agrees with the Complainant that the Respondent most likely knew about the Complainant’s trademark and deliberately registered the confusingly similar disputed domain names.

The non-use of the disputed domain names (passive holding) which are redirected to a webpage of the Registrar indicating that they are already registered, is in the present case an indication of bad faith considering: (i) the reputation of the complainant’s mark, (ii) the Respondent’s statement according to which it would have released the disputed domain names although this seems not to be the case, and (iii) the Respondent’s concealing of its identity when registering the disputed domain names (see Wipo Overview 3.0, section 3.3.).

In light of the above, the Panel finds that the Respondent has registered and used the disputed domain names in bad faith and that the Complainant has established its case under 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, <vi-vendi.com>, <vi-vendi.online>, and <vi-vendi.site> be transferred to the Complainant.

Theda König Horowicz
Sole Panelist
Date: June 1, 2021

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