WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
C. C. V. Beaumanoi v. Eddy Rojas
Case No. D2020-1983
1. The Parties
Complainant is C. C. V. Beaumanoi, France, represented by Inlex IP Expertise, France.
Respondent is Eddy Rojas, Costa Rica.
2. The Domain Names and Registrars
The disputed domain names <goodvibs.store> and <thegoodvibs.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2020. On July 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 30, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to Complainant on August 13, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 14, 2020. The Respondent sent an email communication to the Center on August 15, 2020, expressing willingness to settle. The Parties could not reach a settlement. On August 19, 2020, the Complainant sent a request to the Center to proceed with the administrative proceeding.
The Center verified that the Complaint, together with 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 Respondent of the Complaint, and the proceedings commenced on August 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 17, 2020. Respondent did not submit any response.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on September 29, 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
Complainant is a French company specializing in ready-to-wear clothing marketed worldwide under several marks, including “VIB’S,” which is the name under which Complainant operates an online shop for three of its women’s fashion brands. Complainant operates its primary business websites at <vibs.com> and <vibs.fr>, registered in 2001 and 2004, respectively.
Complainant is the proprietor of a number of trademark registrations for the VIB’S (“Complainant’s Mark”), including the following:
- French trademark registration No. 4146629 for VIB’S (word mark), registered on May 25, 2015, for goods and services in classes 3, 9, 14, 18, 25, 35, and 42;
- European Union trademark No. 13923594 for VIB’S (word mark), registered on April 9, 2015, for goods and services in classes 3, 9, 14, 18, 25, 35, and 42;
- International trademark No. 1277286 for VIB’S (word mark), registered on July 6, 2015, for goods and services in classes 3, 9, 14, 18, 25, and 35.
Both disputed domain names were registered by Respondent using identical pseudonyms on July 1, 2020.
The disputed domain name <thegoodvibs.com> resolves to a website that looks like an eshop offering clothing and includes a statement inviting offers to purchase the domain name. The disputed domain name <goodvibs.store> resolves to a website that cannot be accessed due to browser security warnings.
5. Parties’ Contentions
A. Complainant
Complainant requests consolidation of the dispute for the following reasons. The domain names both contain Complainant’s VIB’S Mark. They were registered within minutes of each other using the same registrar and there is reason to believe that Respondent is one and the same.
Under the first element, Complainant states that the disputed domain names comprise Complainant’s VIB’S Mark in its entirety, differing therefrom only by the addition of the terms “the good” and “good”. The VIB’S sign has no meaning and is highly distinctive. The sign “Good Vibs”, which Complainant uses on its website to indicate sale items, also lacks inherent meaning. A Google search for GOOD VIBS returns results pointing to Complainant. Considering the above, it is unlikely that Respondent was unaware of Complainant’s Mark.
Under the second element, Complainant states that Respondent has no rights in the VIB’S Mark. There is no business or legal relationship between Complainant and Respondent. Complainant has not granted Respondent permission to use its marks. The disputed domain name <thegoodvibs.com> resolves to a website that is not a genuine website. Both disputed domain names have been registered in bad faith to mislead the consumer.
Under the third element, Complainant states that the disputed domain names are registered with the aim of taking advantage of Complainant’s Mark, which is well-known in France. Complainant’s website at “www.vibs.com” and its 176 stores feature well-known trademarks. A Google search for VIB’S returns results related to Complainant. Respondent used a privacy service to mask his identity when registering the disputed domain names. Respondent is also using the disputed domain names in bad faith. The disputed domain name <thegoodvibs.com> resolves to an online shop purporting to offer clothing for sale. On closer inspection, the site appears not to be genuine. Only one product is offered and the Instagram account mentioned does not work. The site appears to be designed to divert Internet users from Complainant’s site and to fraudulently obtain personal and bank information from site visitors who make payments. The site is flagged by browsers as a security risk due to possible phishing. The disputed domain name <goodvibs.store> does not resolve to an active website. Under the doctrine of passive holding, bad faith may be found in registering and holding a domain name registration containing the trademark of a third party.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Given the facts in the case file and Respondent’s failure to file a 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 disputed 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 disputed domain names; and
(iii) Respondent has registered and is using the disputed domain names in bad faith.
A. Preliminary Issue: Consolidation of Respondents
Noting the circumstances of the case, the Panel considers Respondent to be a single entity. The disputed domain names clearly appear to be subject to common control, and consolidation would be fair and equitable to all Parties. Accordingly, the Panel accepts the Complainant’s request to consolidate the present proceeding pursuant to the Rules, paragraph 10(e). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2. Furthermore, the Registrar has confirmed that the Respondent is the same for both domain names, therefore in accordance with paragraph 3(c) of the UDRP Rules, the Complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.
B. Identical or Confusingly Similar
Complainant has provided evidence establishing that it has trademark rights in the VIB’S Mark through registrations in jurisdictions including France and the European Union, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview 3.0, section 1.2.1.
In comparing Complainant’s Mark with the disputed domain names, the Panel finds that the disputed domain names are confusingly similar with the Complainant’s Mark. . Both disputed domain names contain the VIB’S Mark in its entirety. The addition of dictionary terms “the good” and “good” does not prevent a finding of confusing similarity with the Complainant’s Mark, which is clearly recognizable within the disputed domain names.
Section 1.7 of WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.”
It is the well-established view of UDRP panels that the addition of the generic Top-Level Domain (“gTLD”) to the disputed domain names “.com” and “.store” does not prevent the disputed domain names 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.
C. Rights or Legitimate Interests
Pursuant 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:
(i) before any notice to it of the dispute, 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) Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The circumstances stated in the Complaint and evidence in support set forth in the Annexes to the Complaint indicate that, at the time that Respondent registered the disputed domain names, Respondent had no rights or legitimate interests in those domain names. The nature of the disputed domain names, which contain Complainant’s Mark together with dictionary terms “the good” and “good”, cannot constitute fair use because Respondent thereby effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner. See WIPO Overview 3.0, section 2.5.1.
The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain names or is using the Complainant’ Mark with the permission of Complainant. Nor is there evidence of legitimate noncommercial or fair use of the disputed domain names, as the disputed domain name <goodvibs.store> did not resolve to an active website and now resolves to a website offering PPC links. The disputed domain name <thegoodvibs.com> previously resolved to a website offering goods for sale that are similar to Complainant’s. Such use cannot confer rights nor legitimate interests.
The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names.
Pursuant to WIPO Overview 3.0., section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.
Respondent, in failing to file a response and in refusing to respond to Complainant’s requests for evidence, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions.
Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the disputed domain names in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel finds bad faith registration under Policy, paragraph 4(b)(iv). Complainant’s rights in the VIB’S Mark predate by a number of years the registration of both disputed domain names. The disputed domain names contain Complainant’s Mark in their entirety, with the addition of the dictionary terms “good” and “the good” which do not diminish the confusing similarity. The Panel finds that such a registration creates a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4, describing the types of evidence that may support a finding of bad faith.
Having established that the disputed 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 disputed domain names. The Panel finds that Respondent has demonstrated bad faith use in establishing and operating a website at “www.goodvibs.store” resolves at the time of this decision to a website featuring pay-per-click links and included a request for offers to purchase the domain name, which is an attempt to gain commercially from Complainant’s VIB’S Mark. This domain name was resolving to an inactive website at the time the complaint was submitted.
The other disputed domain name, <thegoodvibs.com>, previously resolved to a site that purported to offer for sale goods that are similar to those offered by Complainant. At the time of this decision the Panel this domain name could not be accessed due to browser warnings about possible phishing. Such circumstances, taken together, are indicative of bad faith use.
Respondent has failed to file any response or provide any evidence of actual or contemplated good faith use.
The Panel therefore finds that Complainant has established the third element under paragraph 4(a) of 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 names <goodvibs.store> and <thegoodvibs.com> be transferred to Complainant.
Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: October 13, 2020
