The Complainant is VALLOUREC, France, represented by Casalonga Avocats, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / miri Maza, United Kingdom.
The disputed domain name <vellourec.com> is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2020. On October 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 15, 2020, 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 16, 2020 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 amended Complaint on October 21, 2020.
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 October 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 12, 2020.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on November 18, 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.
The Complainant is one of the world leaders of tubular solutions and pipes for oil and gaz. It owns numerous trademarks consisting in whole or in part of the term <vallourec>, such as:
- Int. word trademark VALLOUREC (n° 212425), registered on August 25, 1958 and duly renewed in classes 1, 2, 3, 4, 5, 6, 7, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33 and 34, whose protection notably extends to Austria, Benelux, Switzerland, Czech Republic, Germany, Egypt, Spain, Hungary, Italy, Morocco, Portugal, Russian Federation.
- Int. word trademark VALLOUREC (n° 1163267), registered on December 3, 2012 in classes 6, 7, 9, 11, 20, 37, 40, 41 and 42, whose protection notably extends to China, Norway, Japan, Israel, Australia, Oman, Philippines, Turkey and the United States of America.
- Int. word trademark VALLOUREC (n° 1504546), registered on June 11, 2019 in classes 6, 9, 20, 35, 37, 38, 39, 40 and 42, whose protection notably extends to India, Japan, Mexico, Norway, United States of America, China, Egypt.
The Complainant also owns numerous domain names, such as:
- <vallourec.com>, registered on January 15, 2000;
- <vallourec.eu>, registered on July 17, 2006;
- <vallourec.org>, registered on March 24, 2009.
The Respondent registered the disputed domain name <vellourec.com> on December 16, 2019. The disputed domain name redirects towards a parking webpage which displays several commercial links.
On December 16, 2019, one of the Complainant’s clients received an email from the Respondent using the email address [...]@vellourec.com of the apparent Sales Assistant Manager of the Complainant. In this email, the Respondent requested the payment of a pro forma invoice issued on the Complainant’s official letterhead.
The Complainant first argues that the disputed domain name is confusingly similar to its VALLOUREC trademark, as it amounts to a typosquatting registration where the “a” has been replaced with an “e”.
The Complainant then argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name <vellourec.com>, as an identity theft as the one displayed in the present case to fraudulently invite third parties to allegedly pay Complainant’s invoices based on pro forma official invoices can obviously not amount to a bona fide offering of goods and services.
Based upon the above and the well-known character of its VALLOUREC trademark, the Complainant finally affirms that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a 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.
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant holds numerous trademarks throughout the world consisting of the term VALLOUREC.
As set out in section 1.9 of the WIPO Overview 3.0, “a domain name which consists of a common, obvious or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.”
Such appears to be the case here. The disputed domain name entirely incorporates and reproduces the VALLOUREC trademark, but for the replacement of an “a” by an “e”.
As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As the panel stated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, demonstrating that the Respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task.” Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion.”
Following that decision, subsequent UDRP panels acknowledged that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, the burden of production shifts to the respondent to come forward with evidence to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., section 2.1 of the WIPO Overview 3.0).
In the present case, the Complainant is the owner of the VALLOUREC trademark that enjoys a significant reputation. The Complainant has no business or other relationship with the Respondent and has never authorized the Respondent to use its VALLOUREC trademark. The Complainant thus has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent did not object to these assertions.
Furthermore, the use of the disputed domain name or a phishing scam does obviously not amount to a bona fide offering of goods or services, to the contrary.
Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
Bad faith requires the respondent to be aware of the complainant’s trademarks. In the present case, the Complainant’s VALLOUREC trademarks enjoy a strong reputation.
Considering the distinctiveness of the VALLOUREC mark and the use by the Respondent of a pro forma invoice on Complainant’s official paper letterhead sent to a Complainant’s client on the same day as the registration of the disputed domain name, i.e. December 16, 2019, there is no doubt that the Respondent was well aware of the Complainant’s trademark when it registered the disputed domain name <vellourec.com>.
Furthermore, it sounds obvious that the registration of a domain name in furtherance of a phishing scam supports a finding of both bad faith registration and use, as ruled by prior panels (BHP Biliton Innovation Pty, Ltd. V. Domains By Proxy LLC / Douglass Johnson, WIPO Case No. D2016-0364).
Consequently, the Panel is of the opinion that the disputed domain name <vellourec.com> has been registered and is being used in bad faith under the paragraph 4(a)(iii) 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 disputed domain name <vellourec.com> be transferred to the Complainant.
Date: November 19, 2020
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