WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

VALEO and VALEO SERVICE v. Jiang Yong (蒋勇)

Case No. D2021-2541

1. The Parties

The Complainants are VALEO (“First Complainant”), France, and VALEO SERVICE (“Second Complainant”), France, represented by Tmark Conseils, France.

The Respondent is Jiang Yong (蒋勇), China.

2. The Domain Name and Registrar

The disputed domain name <valeotechassist.net> is registered with Global Domain Name Trading Center Ltd (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2021. On August 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the following day, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On August 22, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On August 23, 2021, the Complainants confirmed their 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 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 August 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 6, 2021.

The Center appointed Matthew Kennedy as the sole panelist in this matter on October 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 First Complainant is an automotive supplier. The Second Complainant is its wholly owned subsidiary that specializes in the automotive aftermarket, providing both original equipment spares to auto manufacturers as well as replacement parts and accessories in the independent aftermarket. The First Complainant holds multiple trademark registrations, including the following:

- French trademark registration number 1336045 for VALEO, registered on December 23, 1985; and

- International trademark registration number 870058 for VALEO and device, registered on February 28, 2005, designating multiple jurisdictions, including China.

The above registrations all specify goods and services in multiple classes and all remain current. In 1990, the First Complainant successfully opposed an application by a third party to register VALEO as a trademark in China; in its opposition decision the China Trademark Office found that the Complainant’s VALEO mark had already acquired a certain reputation in China through longstanding use and promotion in relevant sectors. See (2010) 商标异字第19870号.

The Second Complainant also holds multiple trademark registrations, including international trademark registration number 1391210 for VALEO SERVICE WE CARE 4 YOU and device, registered on June 2, 2017, designating multiple jurisdictions, including China, and specifying goods and services in multiple classes. That registration remains current. The Second Complainant offers a web-based application named “Valeo TechAssist” to provide technical assistance to repair workshops, automotive spare parts distributors, and technical trainers. The Second Complainant has also registered various domain names, including <valeo-techassist.fr>, registered on November 3, 2009, and currently inactive.

The Respondent is an individual resident in China, based on the available WhoIs information.

The disputed domain name was registered on May 31, 2021. It resolves to a website for a company that provides biological diagnostic technology, such as Covid-19 kits (when entered in a browser on a computer), and a webpage offering a sports application for download and displaying advertising (when entered in a browser on a mobile device).

5. Parties’ Contentions

A. Complainants

The disputed domain name is confusingly similar to the Complainants’ prior rights in its trademarks, company name, and domain names.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. “Valeo” and “Valeo Tech Assist” are not generic terms but registered trademarks. There is no evidence that the Respondent is commonly known by the disputed domain name in relation with the Complainants’ business. The Complainants have never licensed or otherwise authorized in any way the Respondent to use VALEO as a domain name or as an element of a domain name or for any other kind of purpose.

The disputed domain name was registered and is being used in bad faith. Given its protection and constant use by the Complainants, there is no chance that the Respondent registered VALEO in the disputed domain name by coincidence. The disputed domain name variously resolves to the website of a company specialized in molecular and cell biology and a website displaying sport and adult content, which shows that the Respondent does not wish to make a bona fide offering of products.

The Complainants request the transfer of the disputed domain name to the First Complainant.

B. Respondent

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

6. Discussion and Findings

6.1. Preliminary Issues

A. Consolidation: Multiple Complainants

The Complaint was filed by two complainants. The Second Complainant is a wholly owned subsidiary of the First Complainant and both own trademarks that consist of or comprise VALEO. The Panel finds that the Complainants have a common grievance against the Respondent and that it is efficient to permit the consolidation of their complaints. Therefore, the Complainants are referred to below collectively as “the Complainant” except as otherwise indicated.

B. Language of the Proceeding

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, 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”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are that the disputed domain name is composed of Latin characters and the English terms “tech” and “assist” and the associated website displays written guidance in English, which directly demonstrates that the Respondent is able to understand and use the English language.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that in this proceeding the Complaint was filed in English. Despite the Center having sent an email regarding the language of the proceeding and a notice of the Complaint in both Chinese and English, the Respondent did not comment on the issue of language or express any interest in participating otherwise in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay whereas accepting it in English does not create unfairness to either Party.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response filed in Chinese, but none was filed.

6.2. Substantive Issues

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:

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

(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.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the VALEO mark.

The disputed domain name wholly incorporates the VALEO mark as its initial element. It adds the truncated word “tech” followed by the complete word “assist”. Given that the mark remains clearly recognizable in the disputed domain name, the addition of these elements does not prevent a finding of confusing similarity with the Complainant’s mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

The disputed domain name also includes a generic Top‑Level Domain (“gTLD”) suffix (“.net”). As a mere technical requirement of registration, this element is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy. See WIPO Overview 3.0, section 1.11.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the Respondent] 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 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 [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or

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

As regards the first and third circumstances set out above, the disputed domain name variously resolves to a website for a company that provides biological diagnostic technology and to a webpage offering a sports application for download and displaying advertising. Nothing at either online location has any apparent connection to the Complainant or its products. The disputed domain name wholly incorporates the VALEO mark as its initial element, combined with terms that make it identical to the Complainant’s web-based application named “Valeo TechAssist”, thus carrying a risk of implied affiliation to the Complainant. The Complainant submits that it has never licensed or otherwise authorized in any way the Respondent to use VALEO as a domain name or as an element of a domain name or for any other kind of purpose. The use of the disputed domain name is evidently for the commercial gain of the Respondent, if he is paid to direct traffic to the webpage, or the operator of the webpage, or both. In the Panel’s view, this evidence constitutes a prima facie case that the disputed domain name is not being used in connection with a bona fide offering of goods or services and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

As regards the second circumstance, the Respondent’s name is listed in the Registrar’s WhoIs database as “Jiang Yong (蒋勇)”, not the disputed domain name. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he did not respond to the Complaint.

Therefore, based on the record of this proceeding, the Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”

With respect to registration, the disputed domain name was registered in 2021, many years after the registration of the Complainant’s VALEO mark. The mark appears to be a coined word with no meaning other than as a reference to the Complainant and its products. The disputed domain name incorporates the VALEO mark followed by “tech” and “assist”, which indicates an awareness of the Complainant’s “Valeo TechAssist” web-based application. This all gives the Panel reason to find that the Respondent knew of the Complainant’s VALEO mark at the time at which he registered the disputed domain name.

With respect to use, the Respondent uses the disputed domain name to resolve variously to a website for a biological diagnostic technology company and to a webpage offering a sports application for download and displaying advertising. Nothing at either of these online locations has any connection to the Complainant or its products. This use is evidently for the commercial gain of the Respondent, if he is paid to direct traffic to the webpage, or the operator of the webpage, or both. In view of these circumstances, the Panel considers that the disputed domain name is intended to attract Internet users by creating a likelihood of confusion with the Complainant’s VALEO trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website within the terms of paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 <valeotechassist.net> be transferred to the First Complainant, VALEO.

Matthew Kennedy
Sole Panelist
Date: October 31, 2021