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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Vente-privee.com v. Contact Privacy Inc. Customer 0161635071 / Mandy Hertzog, ENSIAS

Case No. D2021-1693

1. The Parties

The Complainant is Vente-privee.com, France, represented by Cabinet Degret, France.

The Respondent is Contact Privacy Inc. Customer 0161635071, Canada / Mandy Hertzog, ENSIAS, Germany.

2. The Domain Name and Registrar

The disputed domain name <veepeeshop.store> (the “Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2021. On May 31, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 1, 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 3, 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 on June 8, 2021.

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 June 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 29, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2021.

The Center appointed Gabriela Kennedy as the sole panelist in this matter on July 16, 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 online retail company which sells various products through online flash sales. The Complainant is the owner of the domain name <veepee.com> (previously <vente-privee.com> until it was changed in 2019). The Complainant’s website has more than 70 million members and has become a well-known e-commerce website across the world.

The Complainant is the owner of several trade mark registrations for the VEEPEE mark in various jurisdictions, including, inter alia, the VEEPEE trade mark (Reg. No. 17442245) registered in the European Union on March 29, 2018 and the International VEEPEE trade mark (Reg. No. 1409721) registered on November 8, 2017.

The Disputed Domain Name was registered by the Respondent on May 11, 2021. The Disputed Domain Name redirects visitors to an online store under the name of VeepeeShop operating through Etsy, a popular marketplace platform.

5. Parties’ Contentions

A. Complainant

The Complainant’s primary contentions can be summarised as follows:

(a) The Disputed Domain Name incorporates the Complainant’s VEEPEE trade mark in its entirety with the addition of the generic term “shop”, which does not sufficiently distinguish the Disputed Domain Name from the Complainant’s VEEPEE trade mark;

(b) The Respondent does not have any registered or unregistered trade mark rights to the term “VEEPEE” or any other terms used in the Disputed Domain Name. The Disputed Domain Name was only registered after the major rebranding carried out by the Complainant in early 2019. The Complainant has never authorised or given permission to the Respondent, who is not associated with the Complainant in any way, to use its VEEPEE trade mark;

(c) The Complainant’s earliest registration for the VEEPEE trade mark predates the registration date of the Disputed Domain Name, therefore the Respondent must have been aware of the Complainant’s rights in its VEEPEE trade mark when registering the Disputed Domain Name. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website (to which the Disputed Domain Name relates) by adopting the Disputed Domain Name which creates a likelihood of confusion with the Complainant’s VEEPEE trade mark. The Respondent also chose to hide his or her identity when registering the Disputed Domain Name and failed to respond to the Complainant’s cease and desist letter. Therefore, these factors support a finding of bad faith registration and use.

B. Respondent

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

The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favour of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complainant as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in the VEEPEE trade mark, based on its various trade mark registrations such as the VEEPEE trade mark (Reg. No. 17442245) registered in the European Union on March 29, 2018 and the International VEEPEE trade mark (Reg. No. 1409721) registered on November 8, 2017.

It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the Top-Level Domain extension (“.store” in this case) may be disregarded. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Disputed Domain Name incorporates the Complainant’s VEEPEE trade mark in its entirety with the addition of the term “shop”. UDRP panels have consistently found that where the mark is sufficiently recognizable in the domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question. See section 1.8 of the WIPO Overview 3.0.

The mere addition of the suffix “shop” does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s VEEPEE trade mark. In fact, given that the Complainant operates an online retail store, the Panel finds that the inclusion of the suffix “shop” would tend to create a false impression that the Disputed Domain Name is associated with and/or endorsed by the Complainant or an affiliate company under the Complainant’s corporate group.

As such, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s VEEPEE trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.

The Panel finds that the Complainant has not authorised the Respondent to use the VEEPEE trade mark, and there is no relationship between the Complainant and the Respondent which would otherwise entitle the Respondent to use the VEEPEE trade mark. Accordingly, the Panel is of the view that a prima facie case has been established by the Complainant and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:

(i) before any notice to him 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 was in connection with a bona fide offering of goods or services;

(ii) the Respondent has been commonly known by the Disputed Domain Name, even if he has acquired no trade mark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

There is no evidence to suggest that the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services. The Respondent’s use of the Disputed Domain Name cannot be regarded as legitimate noncommercial or fair use as the Disputed Domain Name resolves to an online store named “VeepeeShop” on Etsy, which appears to be in direct competition with the Complainant’s business. Such use of the Disputed Domain Name gives a false impression that the Disputed Domain Name is associated with and/or endorsed by the Complainant and is capable of misleading and diverting visitors, and tarnishing the Complainant’s VEEPEE trade mark.

In addition, there is no evidence to prove that the Respondent has trade mark rights corresponding to the Disputed Domain Name, or that he has become known by the Disputed Domain Name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar to a widely-known trade mark by an unaffiliated entity (particularly domain names which incorporate a mark plus a descriptive term) can already by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.

The Complainant’s VEEPEE trade mark appears to be fairly well-known. A quick Internet search shows that the top search results returned for “VEEPEE” are the Complainant’s official website and social media sites, and several third party websites merely making references to the Complainant’s products and services. Given that the Disputed Domain Name was registered by the Respondent after the Complainant had registered its VEEPEE trade mark, the Respondent must have been aware of the Complainant and its rights in the VEEPEE trade mark when registering the Disputed Domain Name. The fact that the Disputed Domain Name incorporates the Complainant’s VEEPEE trade mark in its entirety also creates a presumption of bad faith.

In addition, the Panel finds that the following factors further support a finding that the Disputed Domain Name was registered and is being used by the Respondent in bad faith:

(i) The Respondent failed to respond to the Complainant’s cease and desist letter and the Respondent has provided no evidence of any actual or contemplated good faith use by it of the Disputed Domain Name;

(ii) The Respondent registered the Disputed Domain Name using a privacy shield to conceal its identity (see Primonial v. Domain Administrator, PrivacyGuardian.org / Parla Turkmenoglu, WIPO Case No. D2019-0193); and

(iii) It is difficult to conceive of any plausible use of the Disputed Domain Name that would amount to good faith use, given that the Disputed Domain Name is almost identical to the Complainant’s VEEPEE trade mark and resolves to an online store named “VeepeeShop” on Esty, a global online marketplace, which is in direct competition with the online retail store operated by the Complainant. Such use of the Disputed Domain Name would likely mislead Internet users into believing the Disputed Domain Name is associated with and/or endorsed by the Complainant, thereby causing harm to the Complainant’s legitimate rights.

In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.

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 <veepeeshop.store> be transferred to the Complainant.

Gabriela Kennedy
Sole Panelist
Date: July 30, 2021

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