The Complainant is Vinted Limited, United Kingdom, represented by Novagraaf France, France.
The Respondent is WhoIs Privacy Service, United States of America / Stephane Barett, France. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2019. On December 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 2020, 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 December 24, 2020 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 amendment to the Complaint on December 26, 2020. The Center verified that the Complaint together with the amendment to 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 of the Complaint, and the proceedings commenced on January 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 30, 2020. The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on February 19, 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. On February 24, 2020 the Panel, noting that due to an administrative oversight the complete underlying registrant details were not disclosed to the Complainant, issued the Administrative Panel Procedural Order No. 01 inviting the Complainant to amend the Complaint accordingly and possibly including further facts or arguments in light of the new registrant information, as well as inviting the Respondent to comment on any submission made by the Complainant. No submission was made by any of the Parties. 4. Factual Background The Complainant exploits an app and website used as a marketplace for second-hand goods. It is the owner, amongst others, of the following trademark registrations (Annexes 4 to 4d to the Complaint): - United States of America Trade Mark Registration No. 4673500 for VINTED, filed on July 15, 2013 and registered on January 20, 2015, in classes 35, 38 and 45; and - European Union Trademark Registration No. 017630146 for VINTED and design, filed on December 22, 2017 and registered on May 31, 2018, in classes 35, 38, 42 and 45. The disputed domain name The Complainant asserts to be one of the top ranked apps available at Apple and Google Play stores relating to Belgium, France, the Netherlands and Spain. The app is used to sell and buy second-hand clothing and accessories, as well as children furniture, home décor and toys, counting with more than 22 million international customers, having the VINTED brand become widely recognized throughout the European Union and exclusively associated with the Complainant. In the Complainant’s view, the disputed domain name incorporates its VINTED trademark and trade name (Annex 4 to the Complaint) entirely, not being the addition of the descriptive denomination “verification” sufficient to exclude a likelihood of confusion with the Complainant and its prior rights. Previous UDRP panels have recognized that when a domain name wholly incorporates a registered mark, that is sufficient to establish identity or confusing similarity under the Policy. According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that: (i) the Respondent has registered the disputed domain name without the Complainant’s consent; and (ii) the Respondent is passively holding the disputed domain name. The Complainant contends that the disputed domain name was registered and used in bad faith and is being passively held what is further corroborated by the lack of reply to the warning letter and subsequent reminder sent prior to this proceeding (Annex 8 to the Complaint). B. Respondent The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant: (i) the disputed 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 in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain name. A. Identical or Confusingly Similar The Complainant has established rights in the VINTED trademark, duly registered. The Panel finds that the disputed domain name The first element of the Policy has therefore been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a non‑exclusive list of circumstances that indicate a respondent’s rights to or legitimate interests in a disputed domain name. These circumstances are: (i) before any notice 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 (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired 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 failed to invoke any of the circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden is still on the Complainant to first make a prima facie case against the Respondent. In that sense, the Complainant indeed indicates not to have given its consent to the registration of the disputed domain name to the Respondent. Also, the absence of any indication that the Respondent has any rights in a term corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with the Panel’s finding of the absence of rights or legitimate interests. Another element to consider is the fact that no active use of the disputed domain name appears to have taken place which makes it even more difficult to conceive which rights or legitimate interests the Respondent would have in a domain name that reproduces in its entirety the Complainants’ trademark. Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of: (i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant who is the owner of a trademark relating to the disputed domain name or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or (ii) the Respondent has registered the disputed 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) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. Past UDRP panels have already dealt with the question of whether the “passive holding” of a domain name could constitute bad faith. Section 3.3 of the already quoted WIPO Overview 3.0 states that “[f]rom the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”. In the present case, the passive holding of the disputed domain name by the Respondent amounts to the Respondent acting in bad faith, given that the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name. In addition to that, and as decided in past cases under the Policy, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law. Three other factors corroborate the finding of the Respondent’s bad faith conduct in this case: the Respondent’s lack of reply to the warning letter and reminders sent (Annex 8 to the Complaint); the use of a false address in the WhoIs data and, consequently, the Center not being able to have the communication delivered to it and the potential use of the disputed domain name in connection with a website hosting fraudulent activities being a warning message displayed alerting Internet users of the risk in accessing it. For the reasons stated above, the Respondent’s conduct amounts, in this Panel’s view, to bad faith registration and use of the disputed domain name. 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, Wilson Pinheiro Jabur
Sole Panelist
Date: March 7, 2020
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