The Complainant is Société des Téléphériques de Val d’Isere, France, represented by Nameshield, France.
The Respondent is Andrei Arhipov, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2019. On June 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 10, 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 June 11, 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 in English on June 12, 2019.
On June 11, 2019, the Center transmitted an email in English and Russian to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on June 12, 2019. The Respondent did not comment on the language of the proceeding.
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 in English and Russian of the Complaint, and the proceedings commenced on June 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 14, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 15, 2019.
The Center appointed Assen Alexiev as the sole panelist in this matter on July 24, 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 Société des Téléphériques de Val d’Isere, also known as “S.T.V.I.”, was founded in 1938. It has the exclusive concession to operate the ski lifts in the commune of Val d’Isère in France.
The Complainant is the owner of the French trademark VAL D’ISÈRE P@SS with registration No. 3671382, registered as of August 19, 2009 for goods and services in International Classes 9, 16, 35, 38, 39 and 41 (the “VAL D’ISÈRE P@SS trademark”).
The Complainant is the registrant of the domain name , registered on September 22, 2015.
The disputed domain name was registered on July 24, 2018. It points to a website displaying pornographic content. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s VAL D’ISÈRE P@SS trademark, because this trademark is incorporated in it, while the term “stvi” corresponds to the initials of the name of the Complainant.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name, as it is not known by the disputed domain name and is not affiliated to the Complainant. The Complainant further contends that the Respondent has not been licensed by the Complainant to use the Complainant’s VAL D’ISÈRE P@SS trademark or to apply for registration of the disputed domain name. The website at the disputed domain name displays pornographic content, which tarnishes the VAL D’ISÈRE P@SS trademark.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. It submits that the combination of the elements of the disputed domain name refers to the Complainant and shows that the Respondent was aware of the Complainant and its business when it registered the disputed domain name. According to the Complainant, the use of the disputed domain name for a pornographic website is evidence that the Respondent has registered and is using the disputed domain name in bad faith in an attempt to attract Internet traffic and to commercially benefit from the goodwill of the VAL D’ISÈRE P@SS trademark by creating confusion as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and of its content.
The Complainant also refers to the fact that the Respondent has engaged in a pattern of conduct involving bad faith registration and use of other domain names, as established in the proceedings under the Policy, for example in Valvoline Licensing and Intellectual Property LLC v. Andrei Arhipov,WIPO Case No. D2017-2453. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Procedural issue – Language of the proceedings
In respect of the language of the proceedings, the Panel notes the following. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, 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 Complainant submitted its Complaint in the English language, and requests the proceeding to be held in English. It argues that the translation of the Complaint would burden the Complainant and points out that the content of the website at the disputed domain name is in English.
The Center has sent all its messages to the Respondent in both English and Russian, and has invited the Respondent to express its views on the language of the proceeding. The Respondent has not submitted any comments on the issue and has thus not objected to the Complainant’s request that the proceedings be held in English.
Taking all the above circumstances into account, the Panel accepts that the Respondent would not be disadvantaged if the language of the proceeding is English, and is satisfied that using the English language in this proceeding would be fair and efficient.
Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English. 6.2. Substantive Matters
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service 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 Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …”
In this proceeding, the Respondent has not used the opportunity provided to it under the Rules and has not submitted a substantive Response addressing the contentions of the Complainant and the evidence submitted by it. A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the VAL D’ISÈRE P@SS trademark.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the general Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.
The relevant part of the disputed domain name is therefore the sequence “stvi-valdisere”. It consists of the elements “stvi” and “valdisere”. The “valdisere” element reproduces in a simplified form the letters of the distinctive element of the VAL D’ISÈRE P@SS trademark, which is recognizable in the disputed domain name. The “stvi” element reproduces the initials of the Complainant’s name and supports a finding of confusing similarity.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the VAL D’ISÈRE P@SS trademark in which the Complainant has rights. B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP 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. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not known by the disputed domain name and is not affiliated to the Complainant, that it has not been authorized to use the VAL D’ISÈRE P@SS trademark or to register the disputed domain name, and that the Respondent uses the disputed domain name for a pornographic website that tarnishes the VAL D’ISÈRE P@SS trademark. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not replied to the Complainant’s contentions and has not alleged that is has rights and legitimate interests in the disputed domain name and has not disputed the Complainant’s allegations in this proceeding.
The disputed domain name is confusingly similar to the VAL D’ISÈRE P@SS trademark and includes the initials of the Complainant’s name. Such composition impersonates or suggests sponsorship or endorsement of the Complainant. See section 2.5.1 of the WIPO Overview 3.0. Additionally, the disputed domain name resolves to a pornographic website which as alleged by the Complainant may tarnish the VAL D’ISÈRE P@SS trademark.
In view of the above and in the lack of any denial by the Respondent of the above, the Panel is satisfied that it is more likely than not that the Respondent, being aware of the goodwill of the Complainant’s VAL D’ISÈRE P@SS trademark, has registered and used the disputed domain name in an attempt to exploit the trademark’s goodwill to attract Internet users to the Respondent’s pornographic website. The use of a confusingly similar domain name in connection with pornography generally does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use, and therefore does not give rise to rights and legitimate interests of the Respondent in the disputed domain name.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
As discussed above, the disputed domain name fully incorporates the distinctive element of the VAL D’ISÈRE P@SS trademark in combination with the element “stvi” which reproduces the initials of the Complainant’s name. The Respondent does not deny that the disputed domain name is linked to a pornographic website.
Taking the above into account, the Panel accepts that the Respondent has registered and used the disputed domain name with knowledge of the Complainant and targeting the Complainant. By creating a likelihood of confusion with the Complainant’s VAL D’ISÈRE P@SS trademark, the Respondent has attempted to attract traffic to the disputed domain name by confusing Internet users that they are reaching an online location of the Complainant and then to expose them to pornographic content likely for commercial gain. It is also notable that the Respondent has been found to have acted in a similar way in two other proceedings under the Policy.
Therefore, the Panel finds that the disputed domain name has been registered and used in bad faith. 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.
Assen Alexiev
Sole Panelist
Date: August 1, 2019
Full & Egal Universal Law Academy