WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Valeo v. Domain Administrator, Domain Administrator, Conrad Design Ltd

Case No. D2019-0236

1. The Parties

The Complainant is Valeo of Paris, France, represented by Tmark Conseils, France.

The Respondent is Domain Administrator, Conrad Design Ltd of Worcestershire, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <valeocompressor.com> is registered with Register.IT SPA (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2019. On January 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 31, 2019, 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 February 1, 2019 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 on February 1, 2019.

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 of the Complaint, and the proceedings commenced on February 8, 2019. The same day, the Center was copied on an email from “Compressortech” addressed to the Complainant, in reply to the Center’s notification email. On February 9, 2019, the Center was copied on an email response from Dakeyne Emms Gilmore Liberson Limited, solicitors, to Compressortech. On February 13, 2019, the Complainant emailed the Center. (See further details of the above correspondence in section 4 below).

In accordance with the Rules, paragraph 5, the due date for Response was February 28, 2019. No formal Response was filed with the Center. Accordingly, the Center notified the Respondent’s default on March 4, 2019.

The Center appointed Adam Taylor as the sole panelist in this matter on March 18, 2019. 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 part of a automotive group which has traded worldwide under the name “Valeo” since 1980. In 2017, its turnover was some EUR 18.6 billion.

The Complainant owns many trade marks for VALEO including European Union Trade Mark No. 187542 for the stylised term “Valeo”, filed on April 1, 1996, registered on October 20, 1999, in classes 6, 7, 9, 11, 12, 16, 17, 18, 25, 35, and 38.

The Complainant’s group operates various websites including at “www.valeo.com” and “valeocompressors.com”.

The disputed domain name was registered on July 14, 2010.

The Respondent has used the disputed domain name for a website branded “Compressortech”, offering remanufactured automotive compressors.

Following service of the Complaint on February 8, 2019, an email was sent by “Compressortech” to the Complainant, copied to the Center. (The Panel assumes that Compressortech, the operator of the website to which the disputed domain name resolves, is the ultimate controller of the disputed domain name and, accordingly, the Panel treats the entity as interchangeable with the Respondent.) In that email, the Respondent said that it was a distributor of the Complainant’s products. It criticized the Complainant’s “heavy-handed” approach but offered to transfer the disputed domain name to the Complainant.

On February 13, 2019, the Complainant emailed the Center pointing out that the Complainant had not authorised the Respondent to register the disputed domain name and asking the Center to continue with this proceeding.

5. Parties’ Contentions

A. Complainant

The following is a summary of the Complainant’s contentions.

The disputed domain name is confusingly similar to the Complainant’s famous and distinctive trade mark, which it wholly incorporates. The addition of the descriptive term “compressor”, common in the Complainant’s industry, does not alter the overall similarity.

The Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has no legitimate reason to incorporate the Complainant’s well-known mark in the disputed domain name.

The Complainant has not authorised the Respondent to use its mark.

There is no evidence that the Respondent is commonly known by the name “Valeo”.

The Respondent is not using the disputed domain name for “genuine” activity. The website at the disputed domain name is the same as that used by the Respondent on its own website at “www.compressortech.co.uk”. The Respondent seeks to take commercial advantage of the Complainant’s prior and well-known rights.

The disputed domain name was registered and is being used in bad faith.

The Respondent was clearly aware of the Complainant’s prior rights when it registered the disputed domain name. The Respondent operates in the same specialist field as the Complainant, which also remanufactures compressors. Also, the Complainant itself uses the very similar domain name <valeocompressors.com>.

The Respondent registered and used the disputed domain name to divert traffic from the Complainant’s website to the Respondent’s website, which offers compressor products in direct competition with those of the Complainant. The Respondent has intentionally attempted to create a likelihood of confusion with the Complainant’s mark. The Respondent has also infringed the Complainant’s rights.

The Respondent also owns at least five other domain names which consist of a third party trade mark plus the term “compressor” and which redirect to same website which appears at the disputed domain name. This pattern of conduct is further evidence of bad faith.

B. Respondent

The Respondent did not file a formal Response in reply to the Complainant’s contentions.

6. Discussion and Findings

Under the Policy, the Complainant is required to prove on the balance of probabilities that:

(i) the disputed domain name is identical or confusingly similar to a trade mark in which the complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.

A. Consent to Remedy

The Respondent has indicated in an email sent after receipt of the Complaint that it consents to transfer of the disputed domain name to the Complainant without the need for a decision by the Panel.

Section 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) observes that many panels will order transfer solely on the basis of a consent to transfer by the respondent on the record but that panels may still find it appropriate to proceed to a substantive decision on the merits, for example: (i) where the panel finds a broader interest in recording a substantive decision on the merits – e.g., so that other future UDRP can take the matter into account when considering whether there is a pattern of bad faith conduct under 4(b) of the Policy; (ii) where while consenting to the requested remedy the respondent has expressly disclaimed any bad faith; (iii) where the complainant has not agreed to accept such consent and has expressed a preference for a recorded decision; (iv) where there is ambiguity as to the scope of the respondent’s consent; or (v) where the panel wishes to be certain that the complainant has shown that it possesses relevant trade mark rights.

The Panel has decided to proceed to a substantive determination on the basis of factor (iii) above, namely that the Complainant has not agreed to accept the Respondent’s consent and apparently prefers a recorded decision.

B. Identical or Confusingly Similar

The Complainant has established rights in the mark “VALEO” by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive and worldwide use of that name.

Section 1.8 of the WIPO Overview 3.0 makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive or otherwise, would not prevent a finding of confusing similarity under the first element.

Here, the Complainant’s distinctive trade mark is readily recognisable within the domain name and, accordingly, the addition of the descriptive term “compressor” is insufficient to avert a finding of confusing similarity.

For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.

The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

C. Rights or Legitimate Interests

As explained in section 2.1 of WIPO Overview 3.0 , the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.

Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.

As to paragraph 4(c)(i) of the Policy, the Respondent appears to be selling “remanufactured” versions of the Complainant’s own goods. In the Panel’s view, it is appropriate to approach this as a reseller case. The consensus view of UDRP panels – as expressed in section 2.8 of WIPO Overview 3.0 – is that to establish a bona fide offering of goods or services in such circumstances, the respondent must comply with certain requirements (known as the “Oki Data test”):

1. the actual offering of goods and services at issue;
2. use of the site to sell only the trademarked goods or services;
3. the site’s accurately and prominently disclosing the Respondent’s relationship with the trade mark holder; and
4. the respondent not trying to “corner the market” in domain names that reflect the trade mark.

So far as the Panel can tell from the screenshots produced to the Panel, the Respondent has used the website at the disputed domain name to promote the Respondent’s remanufactured compressors generally, not just those originally produced by the Complainant. Certainly, the Respondent has not filed a Response to argue otherwise. Accordingly, in the Panel’s view, the Respondent has failed to satisfy the second condition of the Oki Data test.

Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.

The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.

D. Registered and Used in Bad Faith

The Panel notes the following:

1. The disputed domain name consists of the Complainant’s trade mark plus a descriptive term reflecting the kind of goods sold by the Complainant. There is nothing in the disputed domain name to signal to users that it leads to a reseller website rather than to an official website of the Complainant.

2. The disputed domain name is strikingly similar to <valeocompressors.com> used by the Complainant’s group, merely substituting “compressor” for “compressors”.

3. The Panel has found in section 6.D. above that the Respondent has used the website at the disputed domain name to promote goods which compete with those of the Complainant.

4. The Respondent has not filed a Response and has consented to transfer, indicating that it does not consider that it has any real defence to the Complainant’s claims.

The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.

The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.

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 name, <valeocompressor.com> be transferred to the Complainant.

Adam Taylor
Sole Panelist
Date: April 1, 2019