Complainant is Vente-Privee.Com, France, represented by Cabinet Degret, France.
Respondent is Super Privacy Service LTD c/o Dynadot, United States of America / song lan, China. 2. The Domain Name and Registrar
The Disputed Domain Name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2021. On January 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 30, 2021, 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 Complainant on February 1, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on February 2, 2021. 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 Respondent of the Complaint, and the proceedings commenced on February 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 24, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 25, 2021. The Center appointed Richard W. Page as the sole panelist in this matter on March 5, 2021. 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 Complainant is a joint stock company with a board of directors organized under the laws of France with a share capital of EUR 670,590.77 incorporated before the Trade and Companies registry of Bobigny (France) under No. 434 317 293, since January 30, 2001, and having it headquarters at La Plaine Sant-Denis, France. Complainant’s activities consist notably in the selling of all kinds of goods and services through “e-commerce tools”. Complainant runs the Vente-privee website, a shopping club that has been operated for 20 years in connection with the organization of event sales of all kinds of discounted products and services, including well-known trademarks (e.g., fashion articles, beauty products, food, travels, shows and discount coupons to be used in the purchase of good and services). At the beginning of 2019, Complainant initiated a process of group rebranding to unify all its trademarks under one and only one new denomination, this is to say VEEPEE (the “VEEPEE Mark”). The rebranding has been highly advertised internationally. Given this recent transition, Complainant cannot provide a large amount of documentary evidence about its VEEPEE Mark between 2001 and 2019. However, the VEEPEE Mark enjoys the same reputation as that of its predecessor Vente-privee trademarks. Complainant is the original creator, and also worldwide leader, of the event sale on the Internet. Complainant has quickly grown to become one of the most significant e-commerce websites, first in and France and afterwards, in all the countries where it has been implemented. With its rebranding and all its previous acquisitions, Complainant counted 72 million members in 2019. Complainant’s activities generate huge Internet traffic – in 2018 more than 3 million unique visitors per day. In the 2nd trimester of 2019, according to a press release of the FEVAD (the French federation of e-commerce), the VEEPEE website was the 3rd most visited e-merchant in France, after Cdiscount and the giant Amazon. The general public has been in constant touch with the Complainant’s trademarks during the last 18 years. Complainant provided voluminous press review articles published in the French, German, Spanish and Italian media, which show Complainant’s international reputation. Complainant’s revenues reached one billion EUR in 2011 and 3.7 billion EUR in 2018 and 4.0 billion EUR in 2019 after the rebranding, much of it outside of France. The “rebranding” of the Complainant’s trademarks group under the VEEPEE Mark, as well as its performance in the course of 2019 under the new name, gave continuity to the reputation that Complainant had acquired over more than 10 years and has remained intact to this day. Besides, it is specified in the displacement of the reputation for Complainant’s trademarks to the VEEPEE Mark has been recognized by previous UDRP panels, while the reputation of the VEEPEE marks has already been admitted on several occasion by UDRP panels and the experts of the registry of the country code Top-Level Domain (“ccTLD”) “.fr”. The VEEPEE Mark has been registered, including but not limited to: European Union trademark filed on November 8, 2017, registered under number 17.442.245, on March 26, 2018, and International trademark registered on November 8, 2017, under number 1.409.721 and designating Norway, Mexico and Switzerland. The Disputed Domain Name was registered on December 31, 2020. 5. Parties’ Contentions A. Complainant Complainant contends that it is the owner of registrations for the VEEPEE Mark and that the Disputed Domain Name is confusingly similar to the VEEPEE Mark, pursuant to paragraph 4(a)(i) of the Policy. Complainant further contends that the Disputed Domain Name is a merely typo squat of the VEEPEE Mark since it differs from the VEEPEE Mark only by a displacement of the “E” letters from VEE/PEE v. VE/PEEE. Complainant further contends that this difference between the denominations at hand is hardly noticeable and cannot lead to the conclusion that they should be regarded as different. Complainant alleges that Respondent has no rights of legitimate interests in respect of the Disputed Domain Name, pursuant to paragraph 4(a)(ii) of the Policy. Complainant further alleges that Respondent is in no way related with the VEEPEE Marks, or with its owner i.e. Complainant (all domain names which are registered on behalf of Complainant are registered in the name Vente-privee,com or in the name of its subsidiaries). Complainant has not authorized Respondent to register and to use the Disputed Domain Name (whether through a license agreement or through any other kind of agreement). Respondent has never been granted authorization, license, or any right whatsoever to use Complainant’s VEEPEE Mark, in the Disputed Domain Name or on any the support and in any capacity whatsoever. Complainant avers that Respondent is not commonly or commercially known by the Disputed Domain Name. Complainant asserts that Respondent has not offered any bona fide goods or services or engaged in any legitimate activity using the Disputed Domain Name. Complainant further asserts that Respondent has attempted to redirect Internet users to pages with malware and spyware. Complainant further asserts that the Disputed Domain Name is used to redirect randomly towards illegitimate websites, including a malware/spyware page; a counterfeit article allegedly from the French newspaper Le Journal du Dimanche; and an advertisement, unduly using the image of French celebrities, designed to convince the readers to invest their money in bitcoins which is a scam. Complainant alleges that all its trademarks were registered before the Disputed Domain Name in the following services: advertising; and sales promotion and in retail services of goods and services (of every kind), notably in the field of fashion, leisure, travel, beauty and entertainment. Complainant further alleges that Respondent had actual and constructive knowledge that it was infringing Complainant’s marks, including the VEEPEE Mark. Complainant contends that while trying to access the website toward which the Disputed Domain Name redirects, Complainant has been redirected toward warning messages notably indicting that viruses had been detected. Complainant notes that the dissemination of malware through a domain name is not a bona fide offer of products or services since it randomly redirects toward pages with malware or spyware or toward counterfeit websites which consist of advertising scams of bitcoin investments. Complainant alleges that the predecessor trademarks to the VEEPEE Mark and the VEEPEE Mark were internationally known prior to Respondent registering the Disputed Domain Name. Respondent had actual knowledge that it was infringing Complainant’s rights. The Disputed Domain Name was registered on December 31, 2020, well after the rebranding of Complainant, in January 2019. Complainant further alleges that bad faith is aggravated when the Disputed Domain Name is close to prior rights which are actively defended involving Complainant’s trademarks or similar to a well-known trademark in order to steal consumer information for commercial gain as evidence of bad faith by such means as a viral scam. Complainant notes that Respondent squatted on the RYANAIR Mark previously which shows a pattern for purposes of bad faith. B. Respondent Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.” Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Paragraph 4(a) of the Policy directs that Complainant must prove each of the following: i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the VEEPEE Mark; and, ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and, iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Section 1.2.1 of the WIPO Overview 3.0 states that registration of a trademark is prima facie evidence of Complainant having enforceable rights in the VEEPEE Mark. The VEEPEE Mark has been registered, including but not limited to: European Union trademark filed on November 8, 2017 registered under number 17.442., on March 26, 2018, and International trademark registered on November 8, 2017, under number 1.409.721 and designating Norway, Mexico and Switzerland. Respondent has not contested these registrations. Therefore, Complainant has enforceable trademark rights in the VEEPEE Mark for purposes of this proceeding. Complainant contends that the Disputed Domain Name is identical with and confusingly similar to the VEEPEE Mark pursuant to paragraph 4(a)(i) of the Policy. Section 1.0 of the WIPO Overview 3.0 which says that a domain name which consists of a common, obvious or intentional misspelling of a trademark is considered by UDRP panels to be confusingly similar to the relevant mark for purposes of the first element. Section 1.11.1 of the WIPO Overview 3.0 instructs that generic Top-Level Domain (“gTLD”) such as “.net” may be disregarded for purposes of assessing confusing similarity. The Panel notes that the Disputed Domain Name is merely an obvious misspelling of the VEEPEE Mark and that the gTLD “.com” is to be ignored. Therefore, the Panel finds that Complainant has met the elements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy. Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name: (i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed 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 Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Complainant further alleges that Respondent is in no way related with the VEEPEE Marks, or with its owner i.e. Complainant (all domain names which are registered on behalf of Complainant are registered in the name Vente-privee.com or in the name of its subsidiaries). Complainant has not authorized Respondent to register and to use the Disputed Domain Name (whether through a license agreement or through any other kind of agreement). Respondent has never been granted authorization, license, or any right whatsoever to use Complainant’s VEEPEE Mark, in the Disputed Domain Name or on any the support and in any capacity whatsoever. Complainant avers that Respondent is not commonly or commercially known by the Disputed Domain Name. Complainant asserts that Respondent has not offered any bona fide goods or services or engaged in any legitimate activity using the Disputed Domain Name. Complainant further asserts that Respondent has attempted to redirect Internet users to pages with malware and spyware. Complainant further asserts that the Disputed Domain Name is used to redirect randomly towards illegitimate websites, including a malware/spyware page; a counterfeit article allegedly from the French newspaper Le Journal du Dimanche; and an advertisement, unduly using the image of French celebrities, designed to convince the readers to invest their money in bitcoins which is a scam. The Panel finds that Complainant has made a prima facie showing and that the Respondent has not contested any of these allegations. Therefore, the Panel finds that Complainant as satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy. Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name: (i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or (ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the VEEPEE Mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the VEEPEE Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product. The four criteria set forth in paragraph 4(b) of the Policy are nonexclusive. See, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith. Complainant asserts that Respondent has attempted to redirect Internet users to websites with malware and spyware. Respondent has not contested these allegations. Complainant further asserts that the Disputed Domain Name is used to redirect randomly towards illegitimate websites, including a counterfeit article allegedly from the French newspaper Le Journal du Dimanche; and an advertisement, unduly using the image of French celebrities, designed to convince the readers to invest their money in bitcoins which is a scam. Respondent has not contested these allegations. The use of malware or spyware to damage Internet users or to “phish” for their contact information and attempts to direct Internet users into counterfeit articles or bitcoin scams are a sufficient indication of bad faith to satisfy the elements of paragraph 4(b) of the Policy. Therefore, Complainant has met 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 Richard W. Page
Sole Panelist
Date: March 15, 2021
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