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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Vivendi v. Elske Donkersloot

Case No. DNL2021-0014

1. The Parties

The Complainant is Vivendi, France, represented by Nameshield, France.

The Respondent is Elske Donkersloot, the Netherlands.

2. The Domain Name and Registrar

The disputed domain name <vi-vendi.nl> (the “Domain Name”) is registered with SIDN through Metaregistrar B.V. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2021. On March 2, 2021, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On March 3, 2021, SIDN transmitted by email to the Center its verification response disclosing registrant and providing the contact details that differed from those in the Complaint. In response to a request from the Center to amend the Complaint, the Complainant filed an amended Complaint on March 12, 2021. The Complainant filed a further amended Complaint on March 15, 2021. The Center verified that the Complaint as amended satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).

In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 15, 2021. In accordance with the Regulations, article 7.1, the due date for Response was April 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 8, 2021.

The Center appointed Gregor Vos as the panelist in this matter on May 10, 2021. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.

4. Factual Background

The Complainant is a French multinational mass media conglomerate headquartered in Paris. The Complainant has more than 44,000 employees in 78 countries and its total revenues amounted to EUR 13,932 million worldwide in 2018.

The Complainant owns several trademark registrations for the trademark VIVENDI, inter alia International Trademark Registrations Nos. 687855 (registered on February 23, 1998) and 930935 (registered on September 22, 2006) designating the Benelux.

The Domain Name was first registered on February 28, 2021, by the Respondent, and it resolves to the Registrar’s parking page.

The Complainant is the holder of the domain name <vivendi.com> (registered on November 12, 1997).

5. Parties’ Contentions

A. Complainant

The Complainant requests that the Domain Name be transferred to the Complainant. The Complaint is based on the following factual and legal grounds: the Domain Name is identical or confusingly similar to the trademark VIVENDI of the Complainant, the Respondent has no rights to or legitimate interests in the Domain Name, and the Domain Name has been registered or is being used in bad faith.

Firstly, according to the Complainant, the Domain Name is confusingly similar to its distinctive trademark VIVENDI known worldwide. The trademark VIVENDI is almost identically reproduced in the Domain Name, with the only difference that a hyphen has been inserted between “vi” and “vendi”. This is a minor misspelling that would be easy to overlook for an Internet user. The mere addition of the Top-Level Domain “.nl” is not sufficient to distinguish the Domain Name from the Complainant’s trademark VIVENDI.

Secondly, according to the Complainant, the Respondent has no rights to or legitimate interests in the Domain Name. The Respondent is not commonly known by the Domain Name. The Complainant is not affiliated with the Respondent and has not authorized the Respondent to register or use the Domain Name. Also, the Domain Name points to the Registrar’s parking page. The Respondent has not made any use of the Domain Name since its registration, which confirms that the Respondent has no demonstrable plan to use the Domain Name. This establishes a lack of legitimate interest in respect of the Domain Name on the Respondent’s part.

Finally, according to the Complainant, the Respondent has registered and is using the Domain Name in bad faith. Given the distinctiveness and reputation of the Complainant’s trademark VIVENDI, it is reasonable to infer that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademark VIVENDI. Further, the Respondent has not demonstrated any activity in respect of the Domain Name. It is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would be legitimate and not, for example, an act of passing off, violating consumer protection laws, an infringement of the Complainant’s rights under trademark law, or an attempt to attract, for commercial gain, Internet users to the Respondent’s own website, by creating a likelihood of confusion with the Complainant’s trademark VIVENDI as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.

B. Respondent

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

6. Discussion and Findings

In view of the lack of a response by the Respondent under paragraph 10.3 of the Regulations, this case has proceeded by way of default. Hence, the Panel is directed to decide this administrative proceeding on the basis of the Complainant’s undisputed factual assertions.

For the Complainant to succeed, it must establish, within the meaning of paragraph 2.1 of the Regulations that:

a. the Domain Name is identical or confusingly similar to (I) a trademark, or trade name, protected under Dutch law in which the Complainant has rights or (II) a personal name registered in the General Municipal Register (“gemeentelijke basisadministratie”) of a municipality in the Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in the Netherlands under which the complainant undertakes public activities on a permanent basis; and

b. the Respondent has no rights to or legitimate interests in the Domain Name; and

c. the Domain Name has been registered or is being used in bad faith.

Only if all three elements have been established, the Panel is able to grant the remedy requested by the Complainant. The Panel will deal with each in turn.

A. Identical or Confusingly Similar

With respect to 2.1(a) of the Regulations, it is noted that the Complainant is registered as the owner of two trademarks VIVENDI that are valid in the Benelux, as described in section 4. Consequently, the Panel finds that the Complainant has proven that it has rights in the trademark VIVENDI.

With regard to the assessment of identity or confusing similarity, it is generally accepted that this test involves a reasoned but relatively straightforward comparison between the Complainant’s trademark VIVENDI and the Domain Name (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).1

Furthermore, a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant trademark (WIPO Overview 3.0, section 1.9). UDRP panel decisions have confirmed that the mere addition of a hyphen does not serve to distinguish the relevant disputed domain name from the trademark in question (Worldpay Limited v. pay world / PrivacyProtect.org, WIPO Case No. D2014-0018 (<world-pay.biz>).

In the present case, the Domain Name incorporates the Complainant’s trademark VIVENDI in its entirety, with the mere addition of a hyphen between the elements “vi” and “vendi”. This does not prevent a finding of confusing similarity under the Regulations. The country code Top-Level Domain in a domain name (such as “.nl”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.

Consequently, the Panel finds that the requirement of article 2.1(a) has been satisfied.

B. Rights or Legitimate Interests

The second requirement which the Complainant must meet is that the Respondent has no rights to or legitimate interests in the Domain Name. The onus of establishing this requirement, like each element, falls on the Complainant. Given the difficulty in proving a negative, however, it is usually sufficient for a complainant to make out a prima facie case that a respondent lacks rights or legitimate interests. If a complainant does establish a prima facie case, the burden of production shifts to the respondent (see WIPO Overview 3.0, section 2.1).

Article 3.1 of the Regulations lists three nonlimitative examples of instances in which a respondent may establish rights or legitimate interests in the disputed domain name.

The Complainant has substantiated that none of these circumstances apply in this case. By defaulting, the Respondent has failed to address the prima facie case thus established by the Complainant. Furthermore, based on the record before it, the Panel does not see an indication that any of the circumstances of Article 3.1 of the Regulations is present.

Accordingly, the Panel finds that the Complainant has demonstrated that the Respondent has no rights or legitimate interests in respect of the Domain Name. The requirement of article 2.1(b) of the Regulations has therefore been met.

C. Registered or Used in Bad Faith

Under article 2.1(c) of the Regulations, a complainant must show that the disputed domain name has been registered or is being used in bad faith. Under the Regulations, these requirements are noncumulative and it therefore suffices for a complainant to either show that the disputed domain name has been registered in bad faith or is being used in bad faith. Article 3.2 of the Regulations lists four nonlimitative circumstances which may be considered as evidence of registration or use in bad faith of a domain name.

In the present case, the Complainant’s rights to the trademark VIVENDI predate the Respondent’s registration of the Domain Name. The distinctive and well-known character of the trademark VIVENDI has been confirmed in earlier UDRP panel decisions (e.g., VIVENDI v. vivendi-mena.com Private Registrant/ Mr. Arshad Mohamed, WIPO Case No. D2011-0154). In light of the evidence provided by the Complainant, the Panel agrees that it is reasonable to conclude that the Respondent chose the Domain Name in full knowledge of the trademark VIVENDI under which the Complainant is doing business. This suggests that the Respondent intended to capitalize on confusion resulting from the similarity between the Domain Name and the trademark VIVENDI. This constitutes bad faith registration of the Domain Name.

Accordingly, the Panel finds that the Domain Name has been registered in bad faith and that the third element of article 2.1 of the Regulations has been met.

7. Decision

For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name, <vi-vendi.nl>, be transferred to the Complainant.

Gregor Vos
Panelist
Date: May 24, 2021

1 In view of the fact that the Regulations are to an extent based on the Uniform Domain Name Dispute Resolution Policy (“UDRP”), it is well established that both cases decided under the Regulations and cases decided under the UDRP, and therefore WIPO Overview 3.0, are relevant to this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V., WIPO Case No. DNL2008-0050).

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