WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Vente-privee.com v. 郑碧莲 (Zheng Bi Lian)

Case No. DCN2021-0004

1. The Parties

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

The Respondent is 郑碧莲 (Zheng Bi Lian), China.

2. The Domain Name and Registrar

The disputed domain name <veepee.cn> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2021. On February 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 20, 2021, 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.

The Center verified that the Complaint satisfied the formal requirements of the China ccTLD Dispute Resolution Policy (the “Policy”), the China ccTLD Dispute Resolution Policy Rules (the “Rules”), and the WIPO Supplemental Rules for China ccTLD Dispute Resolution Policy and China ccTLD Dispute Resolution Policy Rules (the “WIPO Supplemental Rules”).

In accordance with the Rules, Articles 5 and 6, and Articles 14 to 16, and the WIPO Supplemental Rules, Paragraph 4(d), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 23, 2021. In accordance with the Rules, Article 17 and 49, the due date for Response was March 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 17, 2021.

The Center appointed Douglas Clark as the sole panelist in this matter on March 23, 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, Article 29.

4. Factual Background

The Complainant runs the Vente-privee website, a shopping club that has been operating for 20 years in connection with the organization of event sales of all kind of discounted products and services, including well‐known trademarks (e.g. fashion articles, beauty products, food, travels, shows and discount coupons to be used in the purchase of goods and services).

At the beginning of 2019, the Vente-privee website commenced a process of group rebranding to unify all its trademarks under one and only new denomination: VEEPEE. This rebranding was widely advertised internationally.

The Complainant is the registered owner of European Union Trade Mark for VEEPEE filed on November 8, 2017 and registered on March 29, 2018 under number 017442245 and International trademark for VEEPEE registered on November 8, 2017 under number 1409721, and designating Mexico, Monaco, Norway, and Switzerland.

It also owns numerous domain names such as: <veepee.com>, <veepee.nl>, <veepee.lu>, <veepee.es>, <veepee.it>, <veepee.de>, <veepee.be>, and <veepee.at>.

The VEEPEE trademarks are registered and used in connection with retail services of all kind of goods and services for instance, clothing, beauty products, cleaning products, high-tech goods, jewellery, fashion articles, travel services, leisure services.

The Respondent is an individual based in China.

The disputed domain name was registered on February 20, 2018 and redirects to a website where the disputed domain name is offered for sale in English.

5. Parties’ Contentions

A. Complainant

The Complainant contends the disputed domain name reproduces identically the VEEPEE trademarks of the Complainant while the extension “.cn” should be disregarded when comparing the disputed domain name and the prior trademarks because it has a simple technical purpose. The Complainant contends that for “.cn” domain name disputes it is not necessary to have registered trademark rights in China and that the fact the website under the disputed domain name is accessible worldwide is sufficient. In fact, the website under the disputed domain name is offering the disputed domain name for sale in multiple languages.

The Complainant contends the Respondent has no rights and legitimate interests in the disputed domain name on the basis (i) the Respondent is not commonly known under the name VEEPEE; (ii) the Respondent is not making a bona fide use of the disputed domain name by offering it for sale; (iii) the Respondent has not objected to the Complainant registering VEEPEE marks; (iv) the Respondent is in no way related to the Complainant; (v) the Complainant has not authorised the Respondent to use the disputed domain name.

The Complainant further contends the disputed domain name was registered and used in bad faith on the basis (i) the Respondent must have known of the Complainant as a simple Internet search would find it and its business; (ii) the Respondent does not use the disputed domain name as part of a bona fide offering of goods or services; (iii) “veepee” is an invented term so it is obvious it was registered so as to be sold; (iv) the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting its trademarks in the corresponding domain name; (v) the Respondent has not responded to offers to amicably settle the matter; (vi) the Respondent is a recidivist cybersquatter and (vii) bad faith is aggravated when the disputed domain name is close to prior rights which are actively defended.

B. Respondent

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

6. Discussion and Findings

6.1 Language of Proceeding

According to Article 6 of the Policy and Article 8 of the Rules, the language of the domain name dispute resolution proceedings shall be Chinese, unless otherwise agreed by the parties or determined by the Panel. While the language of the proceedings is in the Chinese language, in accordance with the Policy and Rules, the Panel has the authority to determine the language of the proceedings based on the circumstances of the case.

Based on the given evidence, there is no agreement between the Complainant and the Respondent regarding the language of the proceeding. The Complainant has filed its Complaint in English and has requested that English be the language for the proceeding principally on the following grounds:

(a) The Complainant and its attorneys are established in France and have no knowledge of Chinese language, whereas they are able to communicate in English.

(b) Translating all the documents related to the prior trademarks’ reputation would unfairly disadvantage the Complainant as it would be extremely expensive and time consuming.

(c) The disputed domain name is exclusively constituted of letters issued from the Latin alphabet. Plus, its radical VEEPEE presents the physiognomy of an English word with its double “ee” letters, which are commonly encountered in English words.

(d) It is likely the Respondent understands English based on the Respondent’s involvement in numerous previous domain name cases involving English words and that the disputed domain name is for sale on a website in English.

Having reviewed the Complainant’s submission and that the Respondent has chosen not to respond to the Complainant’s request for the proceedings to be conducted in English, in accordance with Article 31 of the Rules, the Panel hereby determines that the language of the proceeding shall be English.

6.2 Substantive Issues

Article 8 of the Policy provides that a complaint against a registered domain name shall be supported if the following conditions are fulfilled:

i. The disputed domain name is identical with or confusingly similar to the Complainant's name or mark in which the Complainant has civil rights or interests;

ii. The disputed domain name holder has no right or legitimate interests in respect of the disputed domain name or major part of the disputed domain name;

iii. The disputed domain name holder has registered or has been using the disputed domain name in bad faith.

Article 7 of the Policy states that the complainant and the respondent shall bear the burden of proof for their own claims.

A. Identical or Confusingly Similar to the Complainant’s name or mark in which the Complainant has civil rights or interests

The Panel finds that the disputed domain name is identical to the Complainant’s trademark. The Complainant has established its right to the VEEPEE trademark by submitting evidence of its registration in in a number of countries. The disputed domain name is made up of the Complainant’s VEEPEE trademark in full and the country code Top-Level Domain (“ccTLD”) “.cn”, which is the country code for China. Generally the ccTLD is disregarded under the first element confusing similarity test.

The Panel notes that the Policy does not require the relevant trademark to be registered in a particular jurisdiction for the Policy to be applied. As set out above, Article 8(a) of the Policy provides that the disputed domain name should be identical with or confusingly similar to the Complainant’s name or mark in which the Complainant has civil rights or interests. Article 8(a) does not limit the mark relied upon to be a mark registered in China. A number of panels have found that a complainant can rely upon marks registered outside China (see, for example, Boursorama SA 诉 王连凤, WIPO Case No. DCN2020-0018, 章节四公司（CHAPTER 4 CORP.） 诉 北京世纪汇达科技有限公司, HKIAC DCN-1900891). The first did so without considering whether the Policy applied to foreign trademarks. The second relied on section 1.1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and referenced the international nature of domain names. While the Panel agrees that decisions under the UDRP and the WIPO Overview 3.0 can be of referential guidance when deciding ccTLD cases the provisions of the actual policy in issue must be the main basis for the decision.

Section 1.1.2 of the WIPO Overview 3.0 when dealing with the definition of “trademark or service mark in which the complainant has rights” provides:

“Noting in particular the global nature of the Internet and Domain Name System, the jurisdiction(s) where the trademark is valid is not considered relevant to panel assessment under the first element. […]. [This factor] may however bear on a panel’s further substantive determination under the second and third elements.”

In this case, the use complained of is of VEEPEE which has no meaning in Chinese and the disputed domain name is re-directed to a “.com” domain name where the disputed domain name is offered for sale. In the circumstances of this case, the Panel considers the Complainant can rely on its non-Chinese trade marks under Article 8 of the Policy.

The Complainant has therefore satisfied the first element under Article 8 of the Policy.

B. Rights or Legitimate Interests

The Respondent has not asserted any rights or legitimate interests in relation to the disputed domain name.

The Complainant has asserted that the Respondent has no business with and is in no way affiliated with the Complainant. The Respondent is not authorised nor licensed to use the Complainant’s VEEPEE trademark or to apply for registration of the disputed domain name.

The Respondent has not responded to any of the Complainant’s contentions. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, which has not been rebutted by the Respondent. Accordingly, the Respondent has no rights or legitimate interests in regard to the disputed domain name.

The Complainant has therefore satisfied the second element under Article 8 of the Policy.

C. Registered or Used in Bad Faith

Based on the given evidence, the disputed domain name was registered and is being used in bad faith.

Article 9 of the Policy states that any of the following circumstances may be the evidence of the registration and use of a domain name in bad faith:

(a) The purpose for registering or acquiring the domain name is to sell, rent or otherwise transfer the domain name registration to the complainant who is the owner of the name or mark or to a competitor of that complainant, and to obtain unjustified benefits;

(b) The disputed domain name holder, on many occasions, registers domain names in order to prevent owners of the names or marks from reflecting the names or the marks in corresponding domain names;

(c) The disputed domain name holder has registered or acquired the domain name for the purpose of damaging the Complainant's reputation, disrupting the Complainant's normal business or creating confusion with the Complainant’s name or mark so as to mislead the public;

(d) Other circumstances which may prove the bad faith.

The Panel is satisfied that the Respondent was aware of the Complainant and its VEEPEE trademark when he or she registered the disputed domain name.

VEEPEE is an invented word with no specific meaning in Chinese or English. The disputed domain name has not been used but has been put up for sale on a website accessible worldwide and written in English.

For the above reasons, the Panel finds that the disputed domain name was both registered and has been used in bad faith.

The Complainant has therefore satisfied the third element under Article 8 of the Policy.

7. Decision

For the foregoing reasons, in accordance with Articles 14 of the Policy and 40 of the Rules, the Panel orders that the disputed domain name <veepee.cn> be transferred to the Complainant.

Douglas Clark
Sole Panelist
Date: April 10, 2021