Complainant is Vente-P of La Plaine Saint Denis, France and Vente-p IP S.à.r.l., Louvigny, Luxembourg, represented by Cabinet Degret, France.
Respondent is Dexter Atlan / Webmaster of Panama City, Panama, self-represented. 2. The Domain Names and Registrar
The disputed domain names , , , and (the "Domain Names") are registered with Dynadot, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 31, 2018. On May 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 1 and June 6, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 Respondent of the Complaint, and the proceedings commenced on June 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 1, 2018. The Response was filed with the Center on June 26, 2018.
The Center appointed Robert A. Badgley as the sole panelist in this matter on July 6, 2018. 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.
On July 9, 2018, Complainant sent an unsolicited supplemental filing to the Center. The Panel, in its discretion, reviewed the submission but chose to disregard it as irrelevant to the disposition of this case. On July 10, 2018, Respondent sent an unsolicited supplemental filing to the Center. The Panel reviewed it but chose to disregard it because it offered nothing fundamentally new. 4. Factual Background
Complainant (understood to comprise both named Complainants because they are closely affiliated and have identical interests in this proceeding) is an online shopping site. Its business is operated at the website "www.vente-p". The content at this site is in the French language. According to the Complaint, Complainant is "a shopping club that has been operated for more than 15 years in connection with the organization of event sales of all kinds of discounted products and services, including trademarks (e.g. fashion articles, food, travels, shows, discount coupons to be used in the purchase of goods and services, etc.)" Complainant describes itself as "the original creators, and also the worldwide leaders, of the event sales on the Internet."
By 2011, Complainant had organized 5,900 event sales on the Internet, and that figure climbed to 14,600 by 2015. By 2008, Complainant's e-commerce site had received more than one billion visits, and today Complainant's site is among the most visited sites in France. Complainant's annual turnover now reaches nearly three billion euros.
Complainant has annexed to the Complaint various unsolicited media articles about its business, as well as various media and retail awards bestowed upon Complainant's vente-p business.
Complainant holds trademark registrations in various countries for VENTE-PRIVEE.COM (e.g., French mark 04/3 318.310 registered October 14, 2004, and European Union mark 5.413.018 registered October 24, 2006) and VENTE-PRIVEE (e.g., European Union mark 11.991.965 registered July 17, 2013).
Various WIPO UDRP decisions have recognized in prior cases under the Policy that Complainant's VENTE-PRIVEE and VENTE-PRIVEE.COM marks are well-known. For instance, in Vente-p, Vente-p IP S.à.r.l. v. Whois Privacy Services Pty Ltd. / Dzone Inc., Yeonju Hong,WIPO Case No. D2013-0691, the panel found Complainant's VENTE-PRIVEE and VENTE-PRIVEE.COM marks to be "well-known" ("des marques bien connues des requérants"). Similarly, in Vente-p, Vente-p IP S.à.r.l. v. XL Liu,WIPO Case No. D2015-2166, the panel concluded that the respondent was almost certainly aware of the VENTE-PRIVEE and VENTE-PRIVEE.COM marks, because of their "fame" ("compte tenu de leur notoriété"). Further, in Vente-p, Vente-p IP S.à.r.l. v. Contact Privacy Inc. Customer 0145729438 / Milen Radumil,WIPO Case No. D2017-1918, the panel concluded that it was highly improbable that the respondent there was ignorant of Complainant's marks, since they were "famous and widely used for more than a decade" ("notoires et largement utilisées depuis plus d'une décennie").
The Domain Names were registered on various dates between September 10, 2015 and December 26, 2017. Three of the four Domain Names resolve to parking pages (in the French language) which contain a hyperlink to Complainant's main site plus links to the sites of several of Complainant's competitors. The fourth Domain Name, , resolves to a web page (again, in French) which announces that a website offering discounted sales of trademarked goods would soon be online. 5. Parties' Contentions A. Complainant
Complainant asserts that it has established the three elements required under the Policy for a transfer of the Domain Name. B. Respondent
Respondent's main contention appears to be that he should be entitled to retain the Domain Names because the term "vente privée" is a generic term meaning "private sale." As such, Respondent contends, the term should not be recognized as a trademark. Along these lines, Respondent points to numerous third parties who use the term "vente privée" in their marketing, including in the marketing of sale events on the Internet.
Respondent also argues that Complainant's primary market is in France and that Complainant does not ship to the United States of America. Accordingly, Respondent maintains, Complainant has no right to bar the use of "vente privée" in the United States and other places (like Panama, where Respondent claims to reside) where Complainant has no consumer base.
Respondent's lengthy Response is devoted chiefly to these themes, though Respondent raises other issues (such as consumer complaints against Complainant) not relevant to the disposition of this case. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights, through registration and use, in the marks
VENTE-PRIVEE and VENTE-PRIVEE.COM. The Panel further concludes that the Domain Names are confusingly similar to these marks. The VENTE PRIVEE mark is incorporated in its entirety in each of the Domain Names. Two of the Domain Names have no further content other than the generic Top-Level Domain, and the other two merely add the word "top" to the mark. These minor differences – at most, the addition of a laudatory term "top" – do not reduce to any meaningful extent the confusing similarity between Complainant's marks and the Domain Names.
Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
With regard to each Domain Name, pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names. First, in his lengthy Respondent has not explained why he registered the Domain Names, or why he has put them to the uses to which he has put them. His entire Response is focused on Complainant and the purported inability to control the term "vente privée" as a trademark.
Respondent also has not denied that he was aware of Complainant's VENTE-PRIVEE and
VENTE-PRIVEE.COM marks at the time he registered these Domain Names. Nor has Respondent disputed the contention that these marks are well-known. Further, Respondent does not deny the allegation in the Complaint that he is the same person as the commodity broker Dexter Atlan listed in the French Yellow Pages.
Accordingly, the Panel is left to conclude, on this record as developed by the Parties themselves, that Respondent registered the Domain Names with full awareness of Complainant's well-known
VENTE-PRIVEE and VENTE-PRIVEE.COM marks, and chose to set up websites which offered consumers hyperlinks to Complainant's competitors. This is plainly not a legitimate basis for registering and using the Domain Names.
Complainant has established Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
For each Domain Name, Paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation," are evidence of the registration and use of the Domain Name in "bad faith":
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
The Panel concludes, on this record, that Respondent has registered and used the Domain Names in bad faith. The Panel finds it highly probable that Respondent had Complainant's marks in mind when registering the Domain Names. These marks, while also reflecting a generic term meaning "private sale" in French, are registered in multiple jurisdictions and have acquired considerable renown. Respondent does not dispute the alleged fame of the marks, and does not deny that he was aware of them when he registered the Domain Names.
This finding is buttressed by the fact that, although Respondent claims to reside in Panama, there are several indications that he has ties to France (where Complainant's mark can safely be said to be famous). Respondent does not deny the allegation that he is the same Dexter Atlan as is noted as a Parisian in the French Yellow Pages. Further, the websites he set up for the Domain Names are written in French. Also, as Complainant notes, Respondent has registered several other domain names comprised of French terms or trademarks.
Finally, Respondent's websites direct visitors either to Complainant's own site or to the site of several of Complainant's competitors. One of the websites – also in French – announces a forthcoming website offering the same type of sales as Complainant offers via the VENTE PRIVEE mark. Accordingly, the Panel concludes that Respondent targeted Complainant's mark when registering the Domain Names.
With respect to bad faith use, the Panel finds Respondent in bad faith within the meaning of Policy paragraph 4(b)(iv). Three of the four Domain Names resolve to parking pages which contain links to Complainant's competitors. These sites appear to be commercial in nature (and Respondent never claims otherwise). The fourth Domain Name resolves to a website announcing a future, and clearly commercial, business.
In sum, the Panel concludes that Complainant holds valid, and even well-known, trademarks. Respondent's protestations of genericness to the contrary, these marks were duly registered by various authorities and remain valid and in good standing. On this record, it is also clear that Respondent was aware of these marks, and sought to derive commercial gain by attracting Internet users to his sites by virtue of the consumer confusion engendered.
A final comment is in order. Despite the Panel's decision in Complainant's favor, the Panel must rebuke Complainant for what comes across as a misleading representation to the Panel. Among the trademarks that Complainant cites in its Complaint is a United States of America ("United States") trademark (No. 4,263,242 registered on September 2, 2011) for VENTE-PRIVEE. As Respondent points out in his Response, however, Complainant apparently ceased its United States operations at some point, and no longer ships to the United States. Under these circumstances, if what Respondent states is true, Complainant was wrong to cite its United States trademark without also mentioning that Complainant no longer does business there. In a closer case, this lack of candor could have tipped the decisional balance the other way.
Complainant has established Policy paragraph 4(a)(iii). 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 Domain Names , , , and be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Date: July 10, 2018
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