WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Vente-Privee.Com and Vente-Privee.com IP S.à.r.l. v. 崔郡 (jun cui)

Case No. D2021-1685

1. The Parties

The Complainants are Vente-Privee.Com, France, and Vente-Privee.com IP S.à.r.l., Luxembourg (the “Complainant”), represented by Cabinet Degret, France.

The Respondent is 崔郡 (jun cui), China.

2. The Domain Name and Registrar

The disputed domain name <parrainage-vente-privee.com> is registered with West263 International Limited (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2021. On May 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 31, 2021, 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 Center sent an email communication to the Complainant on June 2, 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 amendment to the Complaint in English on June 3, 2021.

On June 2, 2021, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On June 3, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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 in English and Chinese of the Complaint, and the proceedings commenced on June 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 30, 2021.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on July 7, 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 multinational company headquartered in France and Luxembourg, and operating in the consumer goods and services industry. The Complainant particularly organizes event sales of an array of discounted consumer products and services (including fashion articles, food, travels, shows, discount coupons to be used for the purchase of goods and services). The Complainant claims to be one of the primary e-commerce companies in France and in the other jurisdictions where it operates, with, for example, over 120 million products sold and 116,000 parcels delivered in 2018, and generating on average Internet traffic amounting to 3.5 million unique visitors per day of its websites in the first semester of 2018.

The Complainant provides evidence that it owns a large trademark portfolio for VENTE-PRIVEE (.COM) (both with and without the generic Top-Level Domain (“gTLD”) “.com”), including, but not limited to, European Union trademark number 005413018, registered on December 20, 2007 for VENTE-PRIVEE.COM and international trademark registration number 1116436, registered on February 23, 2012 for VENTE-PRIVEE and notably designating Australia, Switzerland, Algeria, Egypt, and the Respondent’s home jurisdiction, China.

The disputed domain name was registered on October 1, 2020, and is therefore of a later date than the registration of the abovementioned trademarks of the Complainant. The Complainant submits evidence that the disputed domain name directed to a website redirecting Internet users to a website offering betting and gambling services in Chinese. However, the Panel notes that on the date of this decision, the disputed domain name directs to an inactive webpage.

5. Parties’ Contentions

A. Complainant

The Complainant essentially contends that the disputed domain name is confusingly similar to its trademarks for VENTE-PRIVEE, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.

The Complainant claims that its trademarks are distinctive and well-known, and submits company and marketing information as well as a number of prior court judgments and decisions from national courts, intellectual property offices and also from prior UDRP panels which have explicitly recognized that the Complainant’s trademarks for VENTE-PRIVEE are well-known, see for instance Vente-privee.com and Vente-privee.com IP S.à.r.l. v. WhoisGuard Protected, WhoisGuard, Inc. / Tracy Spears, WIPO Case No. D2020-0256 and Vente-Privee.com and Vente-privee.com IP S.à.r.l. v. Dexter Atlan / Webmaster, WIPO Case No. D2018-1221. The Complainant particularly contends that the Respondent is using the disputed domain name to redirect Internet users to a gambling website, that the Respondent is in no way connected to or licensed by the Complainant, that there are no justifications for the use of its trademarks in the disputed domain name, and that the Respondent’s abusive use of the disputed domain name does not confer any rights or legitimate interests on it, and constitutes use in bad faith.

The Complainant requests that the disputed domain name be transferred to it, specifically, Vente-Privee.Com.

B. Respondent

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

6. Discussion and Findings

6.1. Preliminary Issue: Language of the administrative proceeding

Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

In its Complaint, the Complainant states that to the best of its knowledge, the language of the Registration Agreement is Chinese. Nevertheless, the Complainant filed its Complaint and the amendment to its Complaint in English, and confirmed its request that English be the language of the proceeding on June 3, 2021. The Respondent did not comment on the language of the proceeding and did not submit arguments on the merits of this proceeding.

The Panel has carefully considered all elements of this case, and considers the following elements particularly relevant: the Complainant's request that the language of the proceeding be English; the lack of comment on the language of the proceeding and the lack of response on the merits of this proceeding by the Respondent (the Panel notes that the Respondent was invited to present a response and arguments in either English or Chinese and that all the communications sent from the Center to the Respondent were in both Chinese and English); the fact that the disputed domain name contains the Complainant’s trademark in its entirety and that the disputed domain name is written in Latin letters (and in French) and not in Chinese characters; and the fact that Chinese as the language of proceedings could lead to unwarranted delays and costs for the Complainant.

In view of all these elements, the Panel concludes that the language of proceedings shall be English.

6.2. Discussion and Findings on the merits

The Policy requires the Complainant to prove three elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service 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.

Based on the evidence and arguments submitted, the Panel's findings are as follows:

A. Identical or Confusingly Similar

The Panel finds that the Complainant has shown that it has valid rights in the marks VENTE-PRIVEE based on its intensive use and longstanding registration of the same as trademarks.

As to confusing similarity of the disputed domain name with the Complainant’s marks, the Panel considers that the disputed domain name consists of the combination of two elements, namely the term “parrainage” meaning “sponsorship” in French, combined with a hyphen to the Complainant’s VENTE-PRIVEE trademark. The applicable generic Top-Level Domain (“gTLD”) (“.com” in this case) is viewed as a standard registration requirement, and may as such be disregarded by the Panel, see in this regard the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), section 1.11.1. The Panel finds that the hyphen may also be disregarded as it is considered merely a punctuation mark (see also Accor and SoLuxury HMC v. YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service) / Lin Qing Feng, WIPO Case No. D2016-1262).

Furthermore, according to the WIPO Overview 3.0, section 1.7, “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” (see also Wal-Mart Stores, Inc. v. Richard McLeod d/b/a For Sale, WIPO Case No. D2000-0662). The Panel concludes that the disputed domain name contains the entirety of the Complainant’s trademark for VENTE-PRIVEE, which remains easily recognizable as its only distinctive feature. The Panel furthermore agrees with the Complainant that the term “parrainage”, meaning “sponsorship” in French, can be considered a purely descriptive term in this case, which is not capable of sufficiently distinguishing the disputed domain name from the Complainant’s trademarks (this has also been accepted by panels in prior UDRP proceedings, see for instance Association des Centres Distributeurs E. Leclerc - A.C.D Lec v. On behalf of parrainage-leclerc-energies.com owner, Whois Privacy Service / Chimon Sultan, WIPO Case No. D2019-1568).

Accordingly, the Panel finds that the disputed domain name is confusingly to the Complainant’s registered trademark, and that the Complainant has satisfied the requirements of the first element under the Policy.

B. Rights or Legitimate Interests

On the basis of the evidence and arguments submitted, the Panel holds that the Complainant makes out a prima facie case that that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, is not a bona fide provider of goods or services under the disputed domain name and is not making a legitimate noncommercial use or fair use of the Complainant's trademarks. The Panel also notes that the Respondent is not commonly known by the disputed domain name. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent in reply.

Upon review of the facts and evidence provided by the Complainant, the Panel notes that the disputed domain name directed to a website redirecting Internet users to a website offering gambling and betting services, which shows the intention on the part of the Respondent to include the Complainant’s trademarks into the disputed domain name to obtain unlawful commercial gains. However, the Panel notes that on the date of this decision, the disputed domain name directs to an inactive webpage. In this regard, the Panel finds that holding a domain name passively, without making any use of it, also does not confer any rights or legitimate interests in the disputed domain name on the Respondent.

Furthermore, the nature of the disputed domain name, incorporating the Complainant’s trademarks for VENTE-PRIVEE in their entirety and coming very close to an official domain name owned by the Complainant, namely <parrain-venteprivee.com>, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests endorsement by the Complainant (see WIPO Overview 3.0, section 2.5.1).

On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the registration of the disputed domain name was clearly intended to take unfair advantage of the Complainant’s famous trademarks for VENTE-PRIVEE, by using such mark in its entirety in the disputed domain name to mislead and divert consumers to the disputed domain name. Given the distinctiveness and well-established fame of the Complainant’s trademark, the Panel finds that the registration of the disputed domain name clearly targeted such well-known trademark, and that the Respondent knew, or at least should have known, of the existence of the Complainant’s well-known marks. Moreover, even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned registered trademarks in VENTE-PRIVEE and used these extensively. In the Panel’s view, the preceding elements establish the bad faith of the Respondent in registering the disputed domain name.

As to use of the disputed domain name in bad faith, the Complainant provides evidence that the disputed domain name redirected Internet users to a website offering betting and gambling services. The Panel accepts that this showed the intention on the part of the Respondent to obtain unlawful commercial gains from using the Complainant’s famous VENTE-PRIVEE trademark in the disputed domain name, and thereby also tarnishes the Complainant’s trademarks (see also prior UDRP cases accepting tarnishment from use of well-known trademarks to direct Internet users to a website offering gambling services Sodexo v. Li Li, WIPO Case No. D2015-1018). Furthermore, on the date of this decision, the disputed domain name links to an inactive website. In this regard, the WIPO Overview 3.0, section 3.3 provides: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.” The Panel has reviewed all elements of this case, and attributes particular relevance to the fact that the disputed domain name contains the entirety of the Complainant’s trademark, to the high degree of distinctiveness and well-established fame of the Complainant’s trademarks, and to the evidence submitted by the Complainant regarding a prior domain name dispute involving the Respondent concerning the domain name <disneylandevents.com> from which it appears that the Respondent was involved in prior instances of domain name squatting and is therefore engaged in a pattern of bad faith registration and use of domain names. In these circumstances, the Panel considers that the passive holding of the disputed domain name by the Respondent constitutes use of the disputed domain name in bad faith.

On the basis of the foregoing elements, the Panel finds that it has been demonstrated that the Respondent has used, and is using the disputed domain name in bad faith.

Finally, the Respondent failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore finds that the Complainant has satisfied the requirements of the third element under 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 <parrainage-vente-privee.com> be transferred to the Complainant Vente-Privee.Com.

Deanna Wong Wai Man
Sole Panelist
Date: July 20, 2021