The Complainant is Vente-Privee.Com, France, represented by Cabinet Degret, France.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / sami sar, Morocco.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2021. On October 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 1, 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 Complainant on October 5, 2021 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 October 7, 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 the Respondent of the Complaint, and the proceedings commenced on October 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2021.
The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on December 6, 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 is a leading e-commerce company incorporated in France that for 20 years has operated the Vente-Privee website, a shopping club for all kind of goods and services. At the beginning of 2019, the Complainant started to rebrand itself under the VEEPEE mark with significant international advertising.
The Complainant is the owner of several trademark registrations for VEEPEE and other marks in different jurisdictions worldwide, including:
- European Union Trade Mark Registration No. 11.991.965 VENTE-PRIVEE, registered on January 3, 2014;
- European Union Trade Mark Registration No.17.442.245 VEEPEE, registered on March 29, 2018; and
- International Trademark Registration No.1.409.721 VEEPEE, registered on November 8, 2018.
The Complainant operates its business under the website “www.veepee.com”. The Complainant’s turnover since its rebranding in January 2019 amounts to almost EUR 4 billion.
The Respondent registered the disputed domain name
The Complainant claims that the disputed domain name is confusingly similar to the VEEPEE trademarks mentioned in paragraph 4 above (Factual Background) in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name, which was registered and is being used in bad faith.
The Complaint’s VEEPEE trademarks are well-known at an international level.
The Respondent is not sponsored by or affiliated with the Complainant in any way.
The Complainant has not given the Respondent permission to use the Complainant`s trademarks in any manner, including in domain names.
The Respondent is not commonly known by the disputed domain name, which evidences the lack of rights or legitimate interests.
The disputed domain name has been registered on August 5, 2021, after the rebranding of the Complainant, in January 2019 targeting the Complainant’s trademark VEEPEE.
The disputed domain name has been used to redirect toward a merchant website which competes with Complainant’s activities. Thus, and given the proximity of the denominations “veepee” and “veepeez”, the Complainant considers that the Respondent has deliberately attempted to mislead the Internet users seeking to get to the Complainant’s websites by redirecting them to its own website for commercial gain. Such a use of the disputed domain name is also very harmful for the Complainant since it is likely to damage its brand image.
Finally, the Complainant requests the Panel to issue a decision ordering the transfer of the disputed domain name to the Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsAccording to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
(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 was registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Panel is satisfied that the Complainant has proved that it has rights in the trademark VEEPEE.
As set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the disputed domain name is confusingly similar with the trademark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
The disputed domain name consists of the Complainant’s VEEPEE trademark with the addition of the letter “z” and the generic Top-Level Domain (“gTLD”) “.site”; the Complainant’s mark being the distinctive and prominent element of the disputed domain name. Neither the letter “z”, nor the gTLD “.site” suffice to prevent a finding of confusing similarity between the disputed domain name and the Complainant’s VEEPEE mark.
The Panel therefore finds that the disputed domain name is confusingly similar with the Complainant’s VEEPEE mark and that the conditions of paragraph 4(a)(i) of the Policy have been fulfilled.
B. Rights or Legitimate InterestsPursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following non-exclusive defenses:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
There is no evidence in the file to prove any of the circumstances mentioned in paragraph 4(c) of the Policy, nor any other circumstances to suggest that the Respondent has rights or legitimate interests in the disputed domain name.
As further discussed under section 6.C of this decision, not only the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name, but rather intends to use the disputed domain name to confuse Internet users and thereby deviate them from the Complainant’s website to its own website for the purpose of obtaining unfair monetary benefit.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been fulfilled.
C. Registered and Used in Bad FaithThe Panel is satisfied that the Respondent must have been aware of the Complainant’s trademarks mentioned in section 4 above (Factual Background) when it registered the disputed domain name on August 5, 2021.
The Complainant has submitted evidence to support its claim that the trademark VEEPEE is widely known and enjoys good reputation.
In a previous UDRP case the panel said: “VEEPEE is a widely known trademark and distinctive identifier of Complainant’s products and services”, Vente-Privee.Com v. Tang Tang Shan,WIPO Case No. D2021-1350.
The Respondent when registering the disputed domain name has targeted the Complainant’s trademark by simply adding the letter “z” to VEEPEE, with the intention to confuse Internet users and capitalize on the fame of the Complainant’s trademarks for its own monetary benefit.
The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the disputed domain name is also a significant factor to consider that the disputed domain name was registered in bad faith (as stated in section 3.2.1 of WIPO Overview 3.0).
The Panel finds that the Respondent has registered and uses the disputed domain intentionally to attempt to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s widely used marks as to the source, sponsorship, affiliation, or endorsement. This amounts to bad faith under paragraph 4(b)(iv) of the Policy.
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
Miguel B. O’Farrell
Sole Panelist
Date: December 14, 2021