WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vente-privee.com v. Hicham El Marzouqi
Case No. D2021-3917
1. The Parties
The Complainant is Vente-privee.com, France, represented by Cabinet Degret, France.
The Respondent is Hicham El Marzouqi, France.
2. The Domain Name and Registrar
The disputed domain name <veepeecbd.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2021. On November 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 23, 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 November 23, 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 November 30, 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 December 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2022. The Center granted two extensions to file a response until January 19, 2022. The Respondent did not submit any formal response. Accordingly, on January 21, 2022, the Center notified the Parties that it would proceed with the Panel appointment process.
The Center appointed Isabelle Leroux as the sole panelist in this matter on February 1, 2022. 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 leading e-commerce company incorporated in France. It operates under the trademarks VENTE-PRIVEE and VEEPEE. The Complainant has operated a shopping platform on <vente-privee.com> for over 20 years.
At the beginning of 2019, the Complainant rebranded under a new denomination: VEEPEE. This rebranding was widely advertised internationally.
For the needs and purposes of its activities, the Complainant is the owner of numerous trademarks such as:
- European Union wordmark VEEPEE no. 17442245 filed on November 8, 2017, in classes 9, 16, 35, 36, 38, 39, 41, 42, 43 and 45;
- International wordmark VEEPEE no. 1409721 filed on November 8, 2017, in classes 9, 16, 35, 36, 38, 39, 41, 42, 43 and 45 and designating Switzerland, Norway, China, Monaco, and Mexico.
Hereafter the “Trademarks” or “Trademark”.
The disputed domain name <veepeecbd.com> was registered on May 25, 2021, and redirects to a Registrar parking page stating that the domain name is available for sale.
5. Parties’ Contentions
The Complainant claims that:
i) The disputed domain name is identical or confusingly similar to Complainant’s Trademarks, since it incorporates the Complainant’s company name and Trademark in its entirety; in addition, the only difference between the Trademark VEEPEE and the disputed domain name is the addition in the domain name of the word “cbd” which is short for “cannabidiol”. This word do not help to distinguish this domain name from the Trademark since the Complainant is well-known to offer for sale a large variety of products and an Internet user would simply believe the disputed domain name redirect to a website operated by the Complainant and dedicated to the sale of this substance;
(ii) the Respondent has no rights or legitimate interests in the disputed domain name since the Complainant is not commercially linked to the Respondent, has never authorized nor given its consent to the Respondent for registering and using the disputed domain name; further, there is no evidence of any use of the disputed domain name by the Respondent in connection to a bona fide offering for goods or services, as the Respondent is not making any use and is only offering the disputed domain name for sale to third parties and to the Complainant;
(iii) the Respondent registered the disputed domain name in bad faith since the Respondent was clearly aware of the Complainant’s rights, as according to a sworn statement issued by the Legal Manager of the Intellectual Property Department of the Complainant (Annex 3 of the Amended Complaint), the Respondent was a member of the Complainant’s website since July 1, 2014.
Finally, the Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent sent email communications to the Center on November 24, 2021, December 1, 2021, December 23, 2021, January 4, 2022, January 11, 2022, and January 17, 2022. The Respondent did not submit a formal Response.
6. Discussion and Findings
A. Identical or Confusingly Similar
First of all, the Panel finds that the Complainant has provided evidence that it has prior rights in the VEEPEE Trademark.
Then, the Panel notices that the disputed domain name is composed of the identical reproduction of the VEEPEE Trademark, to which has been added (i) the term “cbd” which refers to the substance cannabidiol, (ii) as well as the generic Top-Level Domain (gTLD) “.com”.
The addition of the term “cdb” does not avoid a finding of confusing similarity since the Complainant’s Trademark is clearly recognizable in the disputed domain name. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“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”.
Furthermore, the gTLD “.com” does not affect the confusing similarity between the disputed domain name and the Complainant’s earlier Trademarks. See section 1.11 of the WIPO Overview 3.0.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s Trademark. The first element of paragraph 4(a) of the Policy is thus fulfilled.
B. Rights or Legitimate Interests
Numerous UDRP panels have found that, even though the complainant bears the general burden of proof under paragraph 4(a)(ii) of the UDRP, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. Seesection 2.1 of the WIPO Overview 3.0.
In this case, the Complainant brings forward the following elements:
- No license or authorization has been granted by the Complainant to the Respondent;
- The Respondent is not known under the disputed domain name, nor does it have any trademark rights in such name; and
- The Complainant has no professional relationship with the Respondent, the only connection between them being that the Respondent appears to have been a member of the Complainant’s website for several years (Annex 3 of the Amended Complaint).
In addition, there is no indication of any potential rights or legitimate interests that the Respondent may have in the disputed domain name.
Therefore, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.
Given these circumstances, the Panel finds that the second element of paragraph 4(a) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Complainant’s prior Trademark has been recognized as well known by previous UDRP panels. While it went through a rebranding in 2019, the new name of the Complainant benefits from its prior name’s reputation. See WIPO Case No. D2020-0768, VENTE-PRIVEE.COM v. Contact Privacy Inc. Customer 0156253173 / Vee Pee, Veepeeofficia; WIPO Case No. D2019-3186, Vente-Privee.Com v. Skandhan, Skandhan Ben; WIPO Case No. DES2020-0031, Vente-Privee.com v. José González Canalejo.
Accordingly, the Panel considers that the Respondent could not plausibly ignore the existence of the Complainant’s Trademark at the time the disputed domain name was registered. This is especially true since according to the sworn statement provided by the Legal Manager of the Intellectual Property Department of the Complainant (Annex 3 of the Amended Complaint) the Respondent subscribed to the Complainant’s website on July 1, 2014. The Panel finds that the Respondent registered the disputed domain name because of its reference to the Trademarks owned by the Complainant and was therefore made in bad faith.
As to the use of the disputed domain name in bad faith, paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name. It provides that for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
“(i) Circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purposes of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name”
The Panel has evidenced that the disputed domain name has been offered for sale at disproportionate price (first at EUR 41,215 then at EUR 42,544) (Annex 10 of the Complaint). Furthermore, the Respondent contacted the Complainant’s representative on November 24, 2021, in order to offer the disputed domain name at a price of EUR 35,000, which is self-evidently disproportionate compared to the money typically spent to register the disputed domain name (Annex 4 of the Amended Complaint).
The lack of use of the disputed domain name and the Respondent’s failure to formally reply to the Complainant’s contentions give no other basis to the Panel to believe that the disputed domain name might conceivably be put to good faith use.
Consequently, the Panel finds that the disputed domain name was registered and offered for sale in bad faith, so that the third and final element of paragraph 4(a) of the Policy is met.
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, <veepeecbd.com> be transferred to the Complainant.
Date: February 15, 2022