The Complainants are Valeo (the “Complainant 1”) and Valeo Service (the “Complainant 2”), France, both represented by Tmark Conseils, France.
The Respondent is PERFECT PRIVACY, LLC, United States of America / Milen Radumilo, Romania.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2021. On July 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 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 the Complainants on July 29, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on August 2, 2021.
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 August 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 6, 2021.
The Center appointed Lorenz Ehrler as the sole panelist in this matter on September 21, 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 BackgroundThe Complainant 1, Valeo, is the parent company of the internationally active Valeo group, which is a supplier for the automotive industry worldwide. The Complainant 2, Valeo Service, is a subsidiary of the Complainant 1, and is active in the automotive aftermarket, e.g., maintenance, service, spare parts etc.
The Complainants have rights in a series of trademarks incorporating the word “valeo” registered in many jurisdictions, with a focus on Europe, the Middle and Far East and North America, for example, the French Trademark No. 1336045, VALEO, registered on December 23, 1985 and the European Union Trade Mark No. 000187542, VALEO, registered on October 20, 1999. The Complainant 2 holds various domain names with the second level domain name “valeo-techassist”, in particular under the Top-Level Domains (“TLDs”) “.fr”, “.info”, “.net” and “.org”.
The disputed domain name
The Complainants contend that the disputed domain name
Furthermore, the Complainants state that the Respondent has not at any time been commonly known by the disputed domain name and that is not making any legitimate use of it. Therefore, the Respondent has no rights or legitimate interests in the disputed domain name.
Lastly, the Complainants contend that the Respondent registered and is using the disputed domain name in bad faith. The disputed domain name
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and FindingsAccording to paragraph 4(a) of the Policy, the Complainants must prove that:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(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.
Before examining whether the conditions of paragraph 4(a) of the Policy are met, the Panel has to determine the language of the proceeding.
A. Language of the ProceedingIn the context of the Registrar verification, the Registrar has confirmed that the language of the Registration Agreement is in the English language, so that the proper language of the proceeding is English pursuant to paragraph 11(a) of the Rules. The Complainants thus rightly filed the Complaint in that language.
B. Identical or Confusingly SimilarThe trademarks put forward by the Complainants demonstrate that the Complainants have rights in relevant trademarks.
Under the UDRP, the requirement under paragraph 4(a) of the Policy requires the disputed domain name to be identical or confusingly similar to the complainant’s trademarks. There is no requirement of similarity of goods and/or services.
The existence of confusing similarity within the meaning of paragraph 4(a) of the Policy is not in doubt in the present case, given that the main element in the disputed domain name, i.e.,“valeo” is identical with the Complainant’s distinctive trademark VALEO. The incorporation of a trademark in its entirety is typically sufficient to establish that a disputed domain name is identical or confusingly similar to a trademark. The other elements of the disputed domain name, i.e.,the descriptive elements “tech” and “assist”, and a hyphen, do not avoid confusing similarity.
As far as the generic TLD “.com” is concerned, this element has a technical function and therefore is typically not taken into account when assessing the issue of identity or confusing similarity.
The Panel thus finds that the disputed domain name is confusingly similar to the Complainants’ trademark VALEO.
C. Rights or Legitimate InterestsThe Complainants contend that the Respondent does not have any rights or legitimate interests in the disputed domain name, in particular that the Respondent has not at any time been commonly known by the disputed domain name and that the Respondent is not making legitimate use of the disputed domain name. The Complainants have contested having granted the Respondent any rights to use their trademarks.
Furthermore, by not submitting any response to the Complaint, the Respondent failed to invoke any circumstance that might demonstrate, pursuant to paragraph 4(c) of the Policy, that it holds any rights or legitimate interests in the disputed domain name (Ahead Software AG v. Leduc Jean,WIPO Case No. D2004-0323; see also, Nintendo of America, Inc., v. Tasc, Inc. and Ken Lewis,WIPO Case No. D2000-1563, finding that the respondent’s default was sufficient to conclude that it had no rights or legitimate interests in the disputed domain name).
Regarding the Respondent’s use of the disputed domain name for a website displaying links to third party websites which are in part competitive to the Complainants’ businesses, it should be noted that such use of the disputed domain name does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the Complainants’ mark (Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267).
The Panel finds that the Complainants have made an unrebutted prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name.
D. Registered and Used in Bad FaithParagraph 4(a)(iii) of the Policy provides that the Complainants must, in addition to the matters set out above, demonstrate that the disputed domain name has been registered and is being used in bad faith.
The undisputed prima facie evidence establishes that the Respondent is not affiliated with the Complainants and has no license or other authorisation to use the Complainants’ trademarks.
The Respondent acquired the disputed domain name well after the VALEO trademark was in use and became known. The Panel finds that the Respondent should have known about the Complainants’ trademarks and businesses when acquiring the disputed domain name. It is highly improbable to the Panel that given the obvious notoriety of the VALEO trademark, the Respondent was unaware of it at the time it became the holder of the disputed domain name. This assessment is confirmed by the fact that the Respondent incorporated the elements “techassist” into the disputed domain name, which elements refer to the Complainant 2’s activity and its domain names which contain the exact same descriptive elements “techassist”.
This Panel further considers that the disputed domain name for itself is a strong indication that the Respondent was aware of the Complainants’ trademark VALEO, as it seems more than unlikely that the Respondent would have created – randomly – a distinctive sign “Valeo”, even more so in combination with “techassist” (cf. Motul v. Contact Privacy Inc. Customer 0138693539 / Konstantin Speranskii,WIPO Case No. D2016-2632), which makes the reference to the Complainants even more obvious. Furthermore, based on the record, the Panel finds that the use to which the disputed domain name has been put to, as discussed under section 6.C, evidences the Respondent’s bad faith.
Moreover, the Panel also notes that the disputed domain name is offered for sale at the price of USD 9,888, and the Respondent has been involved in a large number of UDRP proceedings, in which the Respondent has registered domain names incorporating the trademarks of third parties.
Based on the above, the Panel finds that the Respondent both registered and is using the disputed domain name in bad faith.
7. DecisionFor 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,
Lorenz Ehrler
Sole Panelist
Date: October 1, 2021