The Complainant is Valeo of Paris, France, represented by Tmark Conseils, France.
The Respondent is Privacy Protect, LLC (PrivacyP) of Burlington, United States of America (“United States”) / Li Mq of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2018. On November 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 16, 2018, 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 November 16, 2018 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 November 16, 2018.
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 November 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 11, 2018.
The Center appointed William R. Towns as the sole panelist in this matter on December 27, 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. 4. Factual Background
The Complainant is a global automotive supplier headquartered in Paris, France. Incorporated in 1955, the Complainant supplies wide range of products to automakers and the aftermarket with operations in some 33 countries. In 2017, the Complainant realized sales of EUR 18.6 billion.
The Complainant is the owner of numerous valid and subsisting trademark registrations for its VALEO mark in countries around the world, the earliest of which applied for and registered in France in 1966. Among others, the Complainant also has secured registrations for its VALEO mark in the United Kingdom, the European Union, and China (such as China registration number 874279, registered on September 28, 1996). The Complainant registered the domain name in 1997, which the Complainant uses with its “www.” website.
The Respondent registered the disputed domain name on May 25, 2018, according to the Register’s WhoIs records. The disputed domain name does not currently resolve to an active website, and does not appear to have been used with an active website since its registration. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s VALEO mark. The Complainant explains that the disputed domain name incorporates the Complainant’s VALEO trademark, which the Complainant asserts is a famous mark. According to the Complainant, the addition of the words “auto” and “pro” do not serve to dispel the confusing similarity of the disputed domain name with the Complainant’s mark, and call attention to the Complainant’s mark. The Complainant further maintains that the generic Top-Level-Domain (“gTLD”) does not serve to distinguish the disputed domain name from the Complainant’s mark.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant asserts rights in the VALEO mark, which the Complainant submits has been used on a world-wide basis long before the Respondent registered the disputed domain name. The Complainant maintains that the Respondent has not been licensed or otherwise authorized to use the disputed domain name, and has not been commonly known by the disputed domain name. According to the Complainant, the Respondent has neither used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and further has made no legitimate noncommercial or other fair use of the disputed domain name.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits given the world-wide use of its distinctive and well-known VALEO mark that the Respondent must have been aware of the Complainant’s mark when registering the disputed domain name. According to the Complainant, the Respondent’s passive holding of the disputed domain name does not preclude a finding of bad faith registration and use in the circumstances of this case. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id., at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the VALEO mark, in which the Complainant has demonstrated rights through registration and use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the Complainant’s trademark and the disputed domain name.
The Complainant’s VALEO mark is clearly recognizable in the disputed domain name. 2 The inclusion of the words “auto” and “pro” in the disputed domain name does not serve to dispel the confusing similarity of the disputed domain name with the Complainant’s mark. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.3 The Complainant is a global provider of automotive products, and the disputed domain name appears calculated to play off the confusing similarity with the Complainant’s VALEO mark. Top-Level‑ Domains generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy.4
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s VALEO mark. Regardless, the Respondent registered the disputed domain name, which is confusingly similar to the Complainant’s VALEO mark, and has since passively held the disputed domain name.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
The Panel concludes that the Respondent in all likelihood was aware of the Complainant and the Complainant’s VALEO mark when registering the disputed domain name. Internet users could expect that the disputed domain name would be linked to the Complainant’s website or another website that is affiliated with, or has the endorsement or sponsorship of, the Complainant. See Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774. The Respondent, however, has passively held the disputed domain name since its registration. The Respondent’s non-use of the disputed domain name in the circumstances of this case underscores the Respondent’s lack of rights or legitimate interests in the disputed domain name. See “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. G, Inc.,WIPO Case No. D2017-0246.
Having regard to the foregoing, the Panel accordingly finds the Respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Further, the Respondent is not making a legitimate noncommercial or other fair use of the disputed domain name, has not been commonly known by the disputed domain name, and as noted above has not been authorized to use the Complainant’s mark. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use within the meaning of paragraph 4(a)(iii) of the Policy. The Respondent’s passive holding of the disputed domain name does not preclude a finding of bad faith in the attendant circumstances of this case. As set forth in Telstra Corporation Limited v. Nuclear Marshmallows, supra, “the relevant issue is not whether the Respondent is taking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. […] [I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.” See also Red Bull GmbH v. Kevin Franke,WIPO Case No. D2012-1531.
The Panel considers the following circumstances to be indicative of the Respondent’s bad faith under Telstra Corporation Limited v. Nuclear Marshmallows, supra. The Complainant’s VALEO mark is distinctive and well-known in the Complainant’s trade, and the Panel concludes the Respondent in all likelihood was aware of the Complainant and the Complainant’s mark when registering the disputed domain name. In the attendant circumstances of this case, and absent any explanation from the Respondent, the Panel cannot conceive of any plausible good faith use of the disputed domain name that could be made by the Respondent.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: January 7, 2019
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7 .
2 Id. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy.
3 See WIPO Overview 3.0, section 1.8 and cases cited therein.
4 See WIPO Overview 3.0, section 1.11 and cases cited therein.
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