WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Vivendi v. 宫宁 (gongning)

Case No. D2020-0740

1. The Parties

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

The Respondent is 宫宁 (gongning), China.

2. The Domain Names and Registrars

The disputed domain name <vivendi.shop> is registered with Alibaba Cloud Computing Limited. The disputed domain names <vivendi.tech> and <vivendi.wang> are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn). Alibaba Cloud Computing Limited and Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) are hereinafter referred to as the “Registrars”.

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2020. On March 27, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On March 30, 2020, the Registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details. On March 30, 2020, several emails were received from a person claiming that he was the first to register the disputed domain names.

On March 30, 2020, the Center sent an email communication to the Parties, in both English and Chinese, regarding the language of the proceeding. The Complainant submitted a request that English be the language of the proceeding on March 30, 2020, to which the Respondent has not replied.

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 April 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 26, 2020. On April 27, 2020, the Center informed the Parties that it would proceed with panel appointment.

The Center appointed Douglas Clark as the sole panelist in this matter on May 7, 2020. 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 mass media conglomerate headquartered in Paris. It has activities in music, television, film, video games, telecommunications, tickets and video hosting service. The Complainant has 44,142 employees in 78 countries, and its total revenues amounted to EUR 13,932 million worldwide in 2018.

The Complainant is the owner of various VIVENDI trademarks in the world, including the International trademark No. 687855 with the country of origin being France and inter alia, designating China, registered on February 23, 1998 in classes 9, 35, 36, 37, 38, 39, 40, 41 and 42 and International trademark No. 930935 with the country of origin being France and inter alia, designating China, registered on September 22, 2006 in classes 9,16, 28, 35, 36, 38, 41 and 42.

The Complainant is the owner of numerous domain names, such as <vivendi.com> registered on November 12, 1997.

The Respondent is an individual based in China.

The disputed domain names were registered on March 20, 2020 and do not at the date of this decision resolve to any active webpages. At the time of filing of the Complaint, the disputed domain names did not resolve to any active webpages either.

5. Parties’ Contentions

A. Complainant

Identical or confusingly similar

The Complainant contends that the disputed domain names are identical to its trademark as they incorporate the trademark VIVENDI in its entirety.

The Complainant asserts that the addition of the new generic Top-Level Domain (“gTLD”) suffixes “.shop”, “.tech” and “.wang” does not prevent the likelihood of confusion between the disputed domain names and the Complainant, its trademark VIVENDI and its domain names associated.

No rights or legitimate interests

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

The Complainant claims that once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain names. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.

The Complainant asserts that the Respondent is not identified in the Whols database as the disputed domain names, but as “gongning”, and contends that the Respondent is not commonly known by the disputed domain names.

The Complainant contends that the Respondent is not affiliated with nor authorized by the Complainant in any way. The Complainant does not carry out any activity for, nor has any business with the Respondent. Neither license nor authorization has been granted to the Respondent to make any use of the Complainant’s trademarks, or apply for registration of the disputed domain names by the Complainant.

The disputed domain names resolve to an error page, and the Complainant contends that the Respondent did not make any use of disputed domain names since their registrations, and it confirms that the Respondent has no demonstrable plan to use the disputed domain names. The Respondent therefore does not have rights or legitimate interests in respect of the disputed domain names.

Registered and used in bad faith

The Complainant contends that the Respondent has registered the disputed domain names and is using them in bad faith.

Based on the notoriety of the Complainant and of its trademark (including in China, where the Respondent is based), the fact that the disputed domain names are identical to the VIVENDI trademark, the lack of any substantiated credible explanation from the Respondent and the passive use of the disputed domain names, the Complainants asserts that the Respondent has registered the disputed domain names in bad faith.

The disputed domain names redirect to an error page, and the Complainant contends that the Respondent has not demonstrated any activity in respect of the disputed domain names, and it is not possible to conceive of any plausible, actual or contemplated active use of the disputed domain names by the Respondent that would not be illegitimate.

B. Respondent

As noted in the Procedural History section, several emails were received on March 30, 2020 from an individual with a different name to the Respondent but from and email address the number of which matched the registered mobile telephone number of the Respondent. The emails stated that the sender was the first one who registered the disputed domain names and attached screenshots showing the registration dates of the disputed domain names. The Panel shall treat these emails as having been sent by the Respondent and asserting a prior registration right.

6. Discussion and Findings

6.1 Language of the Proceeding

The Language of the Registration Agreement is Chinese.

The Complainant requested the language of the proceeding be in English on the grounds that (i) the choice of language is related to the combined fact that the English language is the language most widely used in international relations and is one of the working languages of the Center; (ii) the disputed domain names are formed by words in Roman characters (ASCII) and not in Chinese; (iii) the disputed domain names are confusingly similar to the Complainant’s trademark; and (iv) 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 which must be deemed significant in view of the low cost of these proceedings.

The Respondent did not comment on the language of the proceeding or otherwise respond to the request.

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 Center made a preliminary determination to:

1) accept the Complaint as filed in English;

2) accept a Response in either English or Chinese;

3) appoint a Panel familiar with both languages mentioned above, if available.

The final determination of the language of the proceeding lies with this Panel.

The Respondent did not respond to the Center’s preliminary determination.

This Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.

As set out below, the Panel considers the merits of the case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delays and expense. These factors lead the Panel to determine to follow the Center’s preliminary determination. Accordingly, the Panel will render its decision in English.

6.2 Substantive Issues

A. Identical or Confusingly Similar

The Panel finds the disputed domain names are confusingly similar to the Complainant’s trademark because the disputed domain names incorporate the Complainant’s trademark VIVENDI in full. The Complainant’s trademark is clearly recognizable in the disputed domain names. The gTLDs “.shop”, “.tech” and “.wang” should be disregarded under the first element confusing similarity test. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0), section 1.11.1.

The first element of paragraph 4(a) of the Policy is therefore satisfied.

B. Rights or Legitimate Interests

The Respondent has not formally responded to the Complaint to assert any rights or legitimate interests. However, as noted, the Panel will treat the Respondent as having claimed to have registered the disputed domain names first.

Section 2.1 of the WIPO Overview 3.0 provides:

“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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.”

The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names.

The Respondent claims that he was the first one who registered the disputed domain names and attached screenshots showing the registration dates of the disputed domain names. Yet, the Respondent failed to present any evidence to establish his rights or legitimate interests. None of the circumstances in paragraph 4(c) of the Policy are present in this case.

Considering the evidence provided by the Complainant and the Respondent’s email communications, the Panel finds that the Respondent has no business or any kind of relationships (i.e., licensor, distributor) with the Complainant. Further, the Respondent is not commonly known by the disputed domain names. The absence of substantive response and evidence by the Respondent to the Complainant’s contentions and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant’s trademark, lead the Panel to find the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain names.

Moreover, the nature of the disputed domain names carry a high risk of implied association with the Complainant (WIPO Overview 3.0, section 2.5.1).

The second element of paragraph 4(a) of the Policy is therefore satisfied.

C. Registered and Used in Bad Faith

Based on the evidence, the Panel has no hesitation in finding that the disputed domain names were registered in bad faith and are being used in bad faith.

The Complainant’s trademark VIVENDI was registered worldwide before the registration of the disputed domain names. The disputed domain names were registered more than 20 years after the Complainant has registered its trademark and the domain name <vivendi.com>. The Panel finds that the Respondent could not have chosen and registered the disputed domain names in good faith without having been aware of the Complainant especially given its reputation and extensive presence worldwide in the mass media industry.

The fact that the disputed domain names do not resolve to active pages does not preclude a finding that they have been used in bad faith. It is well established that passive use or non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding. (WIPO Overview 3.0, section 3.3). See also Telstra Corporative Limited v. Nuclear Marshmallow, WIPO Case No. D2000-0003.

Under all the circumstances of this case as described above, the Panel is satisfied that the Respondent registered the disputed domain names with the Complainant’s VIVENDI trademark in mind and has used the disputed domain names in bad faith.

For the above reasons, the third part of the paragraph 4(a) of the Policy is therefore satisfied.

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 names <vivendi.shop>, <vivendi.tech> and <vivendi.wang> be transferred to the Complainant.

Douglas Clark
Sole Panelist
Date: May 21, 2020