Complainant is Valeo, France, represented by Tmark Conseils, France.
Respondent is Pouya Habibi, Tosee Tejarat Pooya, Iran (Islamic Republic of).
The disputed domain names <phc-valeo.info>, <phcvaleo.info>, <phcvaleo.net>, <phc-valeo.org>, <phcvaleo.org>, <valeokorea.com>, and <valeokorea.org> (the “Domain Names”) are registered with CSL Computer Service Langenbach GmbH dba Joker.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2019. On October 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 18, 2019, 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 received an informal email communication from Respondent on October 28, 2019.
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 November 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2019. Respondent did not submit any formal response. The Center notified the Parties on November 22, 2019, that it would proceed to panel appointment.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on December 6, 2019. 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.
Complainant is a French company, established in 1955 and operating worldwide in the field of automotive parts. Complainant has operated the Valeo Pyeong Hwa Corporation joint venture in Asia since 1988. Complainant is the proprietor of numerous trademarks incorporating the mark VALEO (the “Mark”), including the following:
- French trademark No. 10701 for VALEO (word mark), registered on April 14, 1966;
- European Union trademark No. 005758412 for VALEO (stylized mark), registered on July 2, 2007;
- International trademark No. 870058 for VALEO (stylized mark), registered on February 28, 2005.
Complainant operates its primary website at “www.valeo.com” and is the proprietor of numerous domain names containing the Mark.
Respondent registered the Domain Names on April 28 and April 29, 2018. They currently resolve as follows:
- <valeokorea.com> resolves to a website offering car parts from various manufacturer;
- <phc-valeo.org> redirects to Respondent’s website at “www.lentkhodro.com” offering car parts from various manufacturers;
- Domain Names <valeokorea.org>, <phc-valeo.info>, <phcvaleo.info>, <phcvaleo.org> and <phcvaleo.net> do not currently resolve to active websites.
The record contains Respondent’s informal email message in reaction to Complaint, but Respondent did not file a formal reply to Complainant’s contentions.
Complainant’s submissions may be summarized as follows:
Under the first element, Complainant alleges that it has rights in the Mark based on longstanding use and registrations in jurisdictions including the Republic of Korea. Complainant’s rights in the Mark significantly predate the registration of the Domain Names. Each of the Domain Names contain the Mark in its entirety, with the addition of non-distinctive and descriptive word elements. The Mark is well-known and the Domain Names are identical and confusingly similar thereto.
Under the second element, Complainant alleges that there is no evidence that Respondent is commonly known under the name “Valeo” or “PHC Valeo”. To Complainant’s knowledge, Respondent has no genuine activity under the name “Valeo”. Some of the Domain Names resolve to websites that, without permission, incorporate Complainant’s Mark. Other Domain Names resolve to inactive websites. Complainant has not authorized the use of the Mark by any third party in this way.
Under the third element, Complainant alleges that the Domain Names have been registered and used by Respondent in bad faith. Given the visibility of Complainant’s business and Mark, there is no chance that the Domain Names were registered by mere coincidence. Respondent is taking advantage of the voluntary confusion created by its fraudulent registrations. A number of factors support a finding of bad faith, namely: the Domain Names are confusingly similar to Complainant’s Mark, the websites contain unauthorized publication of pictures including Complainant’s products and trademarks, some of the Domain Names resolve to inactive websites. Such passive holding can be considered bad faith use of the Domain Names. Complainant’s Mark has a strong reputation and is well-known in the automotive industry. Respondent has failed to present any evidence of good faith use and the evidence indicates that Respondent has registered and uses the Domain Names to mislead Internet users.
Respondent did not submit any formal Response. However, Respondent submitted an informal email stating that “we can introduce these matters to anybody that we are agent of one brand named PHC VALEO. We have their agent certificate. We import their products and distribute in our country. So we register this brand name domain to introduce our country years ago.”
Given the facts in the case file and Respondent’s failure to file a formal Response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) Respondent has registered and is using the Domain Names in bad faith.
Complainant has provided evidence establishing that it has trademark rights in the Mark through use and registrations, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.
In comparing Complainant’s Mark with the Domain Names, the Panel finds that the Domain Names are confusingly similar with the Mark, since each of the Domain Names contains the Mark in its entirety. The addition of the geographic term “Korea” does not prevent a finding of confusing similarity (see WIPO Overview 3.0, section 1.8). Similarly, the addition of the trademark PHC does not prevent a finding of confusing similarity, since the Mark is easily recognizable within those Domain Names and the PHC trademark belongs to Complainant, which has not granted Respondent permission to use it.
It is the well-established view of UDRP panels that the addition of the generic Top-Level Domain (“gTLD”) to the domain name does not prevent the domain name from being confusingly similar to complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.
The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the Domain Names. The Panel finds that there is no evidence that Respondent is commonly known by the Domain Names or is using the Mark with permission of Complainant. Rather, the case materials contain Complainant’s express assertion that such permission does not exist. Complainant’s rights in Mark significantly predate the registration of the Domain Names.
The circumstances and evidence indicate that Respondent has no rights or legitimate interests in the Domain Names. The nature of the Domain Names, each of which contains Complainant’s Mark with the addition of a geographic term or another trademark owned by Complainant, cannot constitute fair use because such actions effectively impersonate or suggest sponsorship or endorsement by Complainant, the trademark owner (see WIPO Overview 3.0, section 2.5.1).
While this Panel notes Respondent’s claim in his email of October 28, 2019, Respondent has not submitted any evidence or arguments demonstrating such rights or legitimate interests. There is no information available that would support a finding of a fair use of the Domain Names.
The Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
The Panel finds that the evidence in the record demonstrates that Respondent chose the Domain Names deliberately for the purpose of impersonating or attempting to create an association with Complainant. Complainant’s rights in the Mark predate the registration of the Domain Names by decades. Complainant’s use of the Mark has been of significant duration and extent. The Domain Names contain Complainant’s Mark in its entirety with the addition of a geographic term or another trademark. In the case of the Domain Names that resolve to online car parts shops, such actions clearly are an attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s Mark. The Panel finds that such a registration creates a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4.
Having established that the Domain Names were registered in bad faith, the Panel next turns to the issue of whether Respondent has engaged in bad faith use of the Domain Names.
In respect of the five Domain Names that do not resolve to active websites (namely, <valeokorea.org>, <phc-valeo.info>, <phcvaleo.info>, <phcvaleo.org>, and <phcvaleo.net>), the Panel considers the issue of whether the passive holding of the Domain Names constitutes bad faith use. Considering the totality of the circumstances, the Panel finds that the test for bad faith set out in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 has been met. In particular, the Panel finds that Complainant’s Mark is distinctive, Respondent has failed to file any Formal Response or provide any evidence of actual or contemplated good-faith use, and it is highly implausible that the Domain Names may be put to any good-faith use by Respondent, particularly considering that Respondent has registered these Domain Names alongside those used for offering automotive products containing Complainant’s Mark.
In respect of the two Domain Names that resolve to active sites (namely, <phc-valeo.org> and <valeokorea.com>), the Panel also finds that the Domain Names have been used in bad faith. In particular, the Panel finds that Complainant’s Mark is distinctive and readily visible within the Domain Names. The websites to which these Domain Names resolve offer automotive products for sale and contain, without authorization, Complainant’s Mark and products alongside those of its competitors. The Domain Name <phc-valeo.org> redirects to Respondent’s site reflecting similar content. The totality of circumstances is sufficiently clear to support a finding of bad faith in the part of Respondent.
In the view of the Panel, such circumstances, taken together, clearly indicate that Respondent registered and used the Domain Names in bad faith. The Panel finds that Complainant has established the third element under paragraph 4(a) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <phc-valeo.info>, <phcvaleo.info>, <phcvaleo.net>, <phc-valeo.org>, <phcvaleo.org>, <valeokorea.com>, and <valeokorea.org> be transferred to Complainant.
Date: December 20, 2019
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