WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vivendi v. 王化德 (wang hua de)
Case No. D2021-3925
1. The Parties
The Complainant is Vivendi, France, represented by Nameshield, France.
The Respondent is 王化德 (wang hua de), China.
2. The Domain Names and Registrars
The disputed domain names <vivendibenefit.com>, <vivendibenfits.com> and <vivendibenifits.com> (the “Domain Names”) are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2021. On November 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 26, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 26, 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 in English on November 26, 2021.
On November 26, 2021, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on November 26, 2021. The Respondent did not comment on the language of the proceeding.
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 in English and Chinese of the Complaint, and the proceedings commenced on December 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 23, 2021.
The Center appointed Karen Fong as the sole panelist in this matter on January 4, 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 French multinational media conglomerate headquartered in Paris. The company has activities in music, television, film, video games, telecommunications, tickets and video hosting service. The Complainant has total revenues of about EUR 8.7 billion worldwide in 2020.
The Complainant provides its services under the name Vivendi. The Complainant owns several International trade mark registrations for VIVENDI including International Registration Number 687855 registered since February 23, 1998 and International Registration Number 930935 registered since September 22, 2006, both designating several jurisdictions, including China (the “Trade Mark”).
The Complainant also owns and communicates online through domain names which comprise the Trade Mark including <vivendi.com>, registered on November 12, 1997.
The Domain Names were registered by the Respondent, who is based in China, on November 19, 2021. The Domain Names resolve to web pages with pay-per-click links to commercial sites (the “Websites”).
5. Parties’ Contentions
The Complainant contends that the Domain Names are confusingly similar to the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and are being used in bad faith. The Complainant requests transfer of the Domain Names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to trade marks or service marks in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and are being used in bad faith.
B. Language of the Proceeding
The Rules, paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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. According to the information received from the Registrar, the language of the Registration Agreements for the Domain Names is Chinese.
The Complainant submits that the language of the proceeding should be English for the following reasons:
- English is the most widely used language in international relations and is one of the working languages of the Center;
- The Domain Names are formed by words in Roman characters (ASCII) and not in Chinese script;
- In order to proceed in Chinese, the Complainant would have had to retain specialized translation services at a cost very likely to be higher than the overall cost of these proceedings. The use of Chinese in this case would therefore impose a burden on the Complainant; and
- The Complaint is written in English but the Center informed the Respondent in Chinese as well and afforded the Respondent the opportunity to do all of the above in Chinese.
In exercising its discretion to use a language other than that of the Registration Agreements, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel notes the Complainant’s submissions regarding the language of the proceeding, the composition of the Domain Names, and other circumstances of this case (for example, the Domain Names resolve to web pages in English). Although the Respondent has been notified in English and Chinese of the language of the proceeding and the Complaint, the Respondent has not challenged the Complainant’s language request and in fact has failed to file a Response. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. In all the circumstances, the Panel determines that English be the language of the proceeding.
C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.
The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.
In this case, the Domain Names consist of the Complainant’s Trade Mark in its entirety combined with the word “benefit” in the singular for the Domain Name <vivendibenefit.com>, and misspellings of the word “benefit” in the plural for the Domain Names <vivendibenfits.com> and <vivendibenifits.com>. The Trade Mark is clearly recognizable in all three Domain Names. For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case is “.com”. It is viewed as a standard registration requirement (section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel finds that the Domain Names are confusingly similar to the Trade Mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
D. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0 that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some relevant evidence of rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends that the Respondent is not commonly known by the Domain Names. It has not authorised, licensed or otherwise permitted the Respondent to use the Trade Mark in the Domain Names or for any other purpose. Further, the display of pay-per-click links in this manner does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use of the Domain Names.
The Panel finds that the Complainant has made out a prima facie case, a case calling for a reply from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
E. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Names have been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Trade Mark when it registered the Domain Names given that the reputation of the Trade Mark, the fact that it was registered prior to the Domain Names and the fact that all three Domain Names consist of the Trade Mark in its entirety.
In the WIPO Overview 3.0, section 3.2.2 states as follows:
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that there is a clear absence of rights or legitimate interests nor any explanation for the Respondent’s choice of the Domain Names are also significant factors to consider (as stated in section 3.2.1 of the WIPO Overview 3.0). In light of the above, the Panel finds that the Respondent deliberately registered the Domain Names in bad faith.
The Panel also finds that the actual use of the Domain Names is in bad faith. The Websites are pay-per-click sites which have been set up for the commercial benefit of the Respondent. It is highly likely that web users when typing the Domain Names into their browsers, or finding them through a search engine would have been looking for a site operated by the Complainant rather than the Respondent. The Domain Names are likely to confuse Internet users trying to find the Complainant’s official websites. Such confusion will inevitably result due to the incorporation of the entirety of the Trade Mark in the Domain Names.
The Respondent employs the fame of the Trade Mark to mislead users into visiting the Websites instead of the Complainant’s. From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s Websites are those of or authorised or endorsed by the Complainant. The Panel therefore also concludes that the Domain Names were registered and are being used in bad faith under paragraph 4(b)(iv) of the Policy.
The Panel therefore concludes that the Domain Names were registered and are being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <vivendibenefit.com>, <vivendibenfits.com> and <vivendibenifits.com>, be transferred to the Complainant.
Date: January 21, 2022