WIPO Domain Name Decision D2021-2170 for valeotechassist.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION VALEO and VALEO Service v. Domain Admin, HugeDomains.com Case No. D2021-2170 1. The Parties

Complainants are VALEO and VALEO Service, France, represented by Tmark Conseils, France.

Respondent is Domain Admin, HugeDomains.com, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name (the “Domain Name) is registered with DropCatch.com LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2021. On July 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 12, 2021, 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 July 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2021. On August 6, 2021 Respondent requested an extension in which to file the response, which was granted and the Response was duly filed with the Center on August 30, 2021.

The Center appointed Clive L. Elliott Q.C., as the sole panelist in this matter on September 14, 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

Valeo, (“First Complainant”) is a French company established in 1955 and operating as a worldwide automotive supplier. It also designs innovation solutions with a particular focus on intuitive driving and reducing CO2 emissions. Valeo Service, (“Second Complainant”) was registered in 1987 and is a subsidiary of First Complainant, specializing in the automotive aftermarket (jointly referred to as “Complainants”).

Complainants are the registered owners of numerous trade marks, as follows (“Complainants’ Marks”):

Jurisdiction

Registration No.

Registration Date

First Complainant (Valeo):

VALEO

France

1336045

December 23, 1985

VALEO

France

1624041

October 29, 1990

VALEO

European

005758412

July 2, 2007

VALEO

European

187542

October 20, 1999

VALEO

European

2847630

November 23, 2004

VALEO

International

870058

February 28, 2005

VALEO

International

1196127

August 9, 2013

International

1391210A

June 2, 2017

France

3075355

January 8, 2001

Second Complainant (Valeo Service):

International

1391210

June 2, 2017

Complainants are also the registered owners of the following domain names:

- created on March 25, 1997;
- created on November 3, 2009;
- created on March 11, 2009;
- created on June 30, 2021; and
- created on March 11, 2009.

First Complainant operates its primary website at “www.valeo.com”.

According to the publicly available WhoIs the Domain Name was registered on May 30, 2021. The Domain Name redirects towards a website offering the Domain Name for sale.

5. Parties’ Contentions A. Complainants

Complainants contend that Complainants’ Marks have been used in connection with cars and parts thereof since 1980. They allege that they are key players in this market, promoting their products, services and related activities directly or via partners and authorized distributors. Complainants contend that they have registered trade marks, company names and domain names in numerous countries worldwide, with the oldest registered trade mark for VALEO dating back to 1966 in France. Therefore, Complainants argue that their prior rights pre-date registration of the Domain Name.

Complainants state that the Domain Name is confusingly similar to Complainants’ Marks as it is comprised of the reproduction of Complainants’ Marks entirely, and the word element of Second Complainant’s trade mark. The addition of the descriptive names “tech” and “assist” are used in the Domain Name as descriptive elements of the activity of the goods and services proposed by Respondent. Complainants submit that Respondent’s use of the descriptive words does not serve to distinguish the Domain Name from Complainants’ Marks but rather increases the likelihood of confusion and association with Complainants’ business.

Complainants further state that the Domain Name imitates Complainants’ domain names by exactly reproducing the word elements “Valeo”, “tech” and “assist”.

Complainants submit that consumers looking for Valeo products or services who find Respondent’s website will believe that the Domain Name belongs to First Complainant or its affiliates, while there is no such connection, thereby causing confusion.

Complainants assert that Respondent has no rights, no authorized offering of genuine goods or services, nor legitimate use of the Domain Name, which is corroborated by the fact that the Domain Name redirects towards a website offering the Domain Name for sale. Complainants contend that this is evidence of Respondent’s fraudulent and bad faith registration.

Complainant further asserts that there is a high risk that Respondent has or is intending to engage in a phishing scheme, as it has been noted that email servers have been configured on the Domain Name.

B. Respondent

Respondent agrees with Complainants’ request in this matter and asks WIPO and the Panel to transfer the Domain Name to Complainants. Respondent consents to remedy.

6. Discussion and Findings

In the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.10, where the respondent has given its consent on the record to the transfer remedy sought by the complainant, panels have routinely ordered the requested remedy solely on the basis of such consent.

In the present case, Respondent not only agrees with Complainants’ request to transfer the Domain Name to Complainants but expressly consents to the remedy sought by Complainants. That is, to transfer the Domain Name to Complainants.

In light of Respondent’s clear election and its consent to the transfer of the Domain Name to Complainants, and putting to one side Respondent’s overt offer to sell the Domain Name, in the absence of any clear evidence that Respondent has engaged in any egregious conduct, the Panel is minded to order the transfer of the Domain Name.

In the circumstances, the Panel does not consider it necessary to issue a decision on the merits.

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 Name be transferred to the First Complainant Valeo.

Clive L. Elliott
Sole Panelist
Date: September 28, 2021

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