WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vivendi v. 廖林波 (Lin Bo Liao)
Case No. D2020-0185
1. The Parties
The Complainant is Vivendi, France, represented by Nameshield, France.
The Respondent is 廖林波 (Lin Bo Liao), China.
2. The Domain Name and Registrar
The disputed domain name <vivendiwater.icu> is registered with West263 International Limited (the “Registrar”).
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2020. On January 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 1, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On February 3, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on February 4, 2020. The Respondent did not comment on the language of the proceeding.
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 the Respondent in English and Chinese of the Complaint, and the proceedings commenced on February 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 3, 2020.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on March 13, 2020. 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
The Complainant is a French company active in the media and communications industry, with its headquarter in Paris. The Complainant provides evidence that in financial year 2018, it had 44,142 employees in 78 countries, and it achieved a global revenue of about EUR 13,932 million. The Panel notes that the Complainant originates from a water supply company, Compagnie Générale des Eaux, which later diversified into numerous businessesIn 1998, Compagnie Générale des Eaux changed its name to Vivendi, and its water division was renamed as Vivendi Water, and now Veolia Water.
The Complainant owns several trademarks for VIVENDI, including, for example, the international trademark registration number 687855, registered on February 23, 1998 and number 930935, registered on September 22, 2006. Moreover, the Complainant also owns various domain names, including, for instance, <vivendi.com>, registered on November 12, 1997. The disputed domain name was created on January 20, 2020. The Complainant submits evidence that the disputed domain name directed to an error page. However, on the date of this decision, the disputed domain name leads to an active webpage, which is used to promote links to some pornographic websites.
5. Parties’ Contentions
A. Complainant
The Complainant essentially contends that the disputed domain name is confusingly similar to its trademarks for VIVENDI, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.
The Complainant claims that its trademarks are highly distinctive and submits an UDRP decision which has recognized that the Complainant’s trademarks for VIVENDI are highly distinctive and well-established. The Complainant particularly submits that there are no justifications for the use of its trademarks in the disputed domain name, and contends that such use does not confer any rights or legitimate interests in respect of the disputed domain name and constitutes registration and use in bad faith. Moreover, the Complainant claims the disputed domain name refers to its business in relation to water solutions, which more likely leads to the consumers’ likelihood of confusion.
The Complainant requests the transfer of the disputed domain name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Issue: Language of the Administrative Proceeding
Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The language of the Registration Agreement is Chinese, and the Complaint is filed in English. On February 3, 2020, the Center notified the Complainant that the language of the Registration Agreement is Chinese. The Complainant confirmed its request that the language of the proceeding be English on February 4, 2020. The Respondent did not make any comments on the language of the proceeding and did not submit any arguments on the merits.
The Panel has carefully considered all elements of this case, in particular, the Complainant’s request that the language of the proceeding be English; the fact that all communications from the Center have been sent in English and Chinese to the Parties, and the Respondent did not comment on the language of the proceeding and did not submit arguments on the merits (while it had the right to do so in Chinese or English); and the fact that Chinese as the language of the proceeding could lead to unwarranted delay and costs for the Complainant. Further, the postal address provided by the Respondent in the WhoIs database was also invalid so that the Written Notice could not be delivered by courier. In view of all these elements, the Panel rules that the language of the proceeding shall be English.
6.2. Discussion and Findings on the Merits
The Policy requires the Complainant to prove three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has 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.
Based on the evidence and arguments submitted, the Panel’s findings are as follows:
A. Identical or Confusingly Similar
The Panel finds that the Complainant has shown that it has valid rights in the mark VIVENDI based on its intensive use and registration of the same as a trademark globally.
Moreover, as to confusing similarity, the disputed domain name consists of the Complainant’s registered trademark VIVENDI, followed by the descriptive word “water”. The applicable Top-Level Domains (“.icu” in this case) is viewed as a standard registration requirement, and may as such be disregarded by the Panel. See in this regard the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), section 1.11.1. Moreover, the WIPO Overview 3.0, section 1.7, states: “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing” (see also Wal-Mart Stores, Inc. v. Richard McLeod d/b/a For Sale,WIPO Case No. D2000-0662).
The Panel concludes that the disputed domain name contains the entirety of the Complainant’s trademark, as its only distinctive feature. It is the Panel’s views that the addition of the merely descriptive component “water” after the Complainant’s trademark does not avert the confusing similarity between the disputed domain name and the Complainant’s trademark. Moreover, the Panel notes that the added word “water” is related to the Complainant’s business interest. Accordingly, the Panel rules that the disputed domain name is confusingly similar to the Complainant’s registered trademark, and that the Complainant has satisfied the requirements of the first element under the Policy.
B. Rights or Legitimate Interests
On the basis of the evidence and arguments submitted, the Panel holds that the Complainant makes out a prima facie case that that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, and is not making legitimate noncommercial use or fair use of the Complainant’s trademarks. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent in reply. Moreover, the Panel notes that the disputed domain name resolved to an inactive website at the time of filing of the Complaint, but now directs to a webpage that promotes links to some pornographic websites. This shows the Respondent’s intention to divert consumers for commercial gain to its website linked to the disputed domain name, by taking unfair advantage of the goodwill and reputation of the Complainant’s famous trademarks for VIVENDI.
Furthermore, the Panel notes that the nature of the disputed domain name, being confusingly similar to the Complainant’s trademarks, carries a risk of implied affiliation with the Complainant (see also WIPO Overview 3.0, section 2.5.1), and that the Respondent is not commonly known by the disputed domain name.
On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.
C. Registered and Used in Bad Faith
The Panel holds that, as “Vivendi Water” (now renamed as Veolia Water) was an affiliated company of the Complainant’s group, the registration of the disputed domain name was clearly intended to take unfair advantage of the Complainant’s trademarks, by using such trademarks to mislead and divert consumers to the disputed domain name. Given the distinctiveness and fame of the Complainant’s trademarks, including in the Respondent’s home jurisdiction China, the Panel holds that the registration of the disputed domain name, clearly targeting the Complainant’s well-known trademarks, was obtained in bad faith.
Moreover, even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned registered trademarks in VIVENDI and used these extensively. In the Panel’s view, the preceding elements clearly establish the bad faith of the Respondent in registering the disputed domain name.
As to use of the disputed domain name in bad faith, the disputed domain name used to resolve to an inactive website. UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. See WIPO Overview 3.0, section 3.3. The Panel finds so under the circumstances of this case.
The disputed domain name currently links to a webpage that promotes links to some pornographic websites for commercial gain which indicates the intention to use the Complainant’s trademarks and reputation to attract Internet users for the Respondent’s commercial gain.
The Panel has reviewed all elements of this case, and in particular: the confusing similarity of the disputed domain name to the Complainant’s trademarks, the high degree of distinctiveness and fame of the Complainant’s trademarks, and the fact that the Respondent changed the use of the disputed domain name from passive holding to a webpage that promotes links to some pornograhpic websites, for commercial gain. On the basis of the foregoing elements, the Panel rules that it has been demonstrated that the Respondent has used, and is using the disputed domain name in bad faith.
Finally, the Respondent failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under 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 <vivendiwater.icu> be transferred to the Complainant.
Deanna Wong Wai Man
Sole Panelist
Date: March 28, 2020
