WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Vente-Privee.Com v. Contact Privacy Inc. Customer 0159232170 / Adelina Daraban, The Men’s Vip Boutique

Case No. D2020-3209

1. The Parties

Complainant is Vente-Privee.Com, France, represented by Cabinet Degret, France.

Respondent is Contact Privacy Inc. Customer 0159232170, Canada / Adelina Daraban, The Men’s Vip Boutique, Spain.

2. The Domain Name and Registrar

The disputed domain name <shopveepee.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2020. On November 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 30, 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 Complainant on December 1, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on December 7, 2020.

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 Respondent of the Complaint, and the proceedings commenced on December 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 29, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 5, 2021.

The Center appointed Lorelei Ritchie as the sole panelist in this matter on January 19, 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 Background

Complainant, a multinational company based in France, offers e-commerce services to consumers in Europe and globally. In 2019, Complainant initiated a re-branding of its services under the mark VEEPEE. Complainant owns several registrations for its VEEPEE mark, including International Registration No. 1409721 (registered November 8, 2017).

The disputed domain name <shopveepee.com> was registered on September 5, 2020. Respondent has used the URL associated with the disputed domain name to resolve to a website offering competing
e-commerce services.

5. Parties’ Contentions

A. Complainant

Complainant contends that the (i) disputed domain name <shopveepee.com> is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.

In particular, Complainant contends that it has a strong reputation in the field of e-commerce, and that it owns registrations for the VEEPEE mark. Complainant further contends that its re-branded VEEPEE e-commerce services are well known in Europe, including in Spain, where Respondent lists an address of record. In this regard, Complainant asserts that it has 72 million members for its VEEPEE services.

Complainant contends that Respondent has incorporated Complainant’s VEEPEE mark into the disputed domain name, and merely added the generic or descriptive wording “shop,” which is likely to confuse prospective online consumers into thinking that the disputed domain name is affiliated or endorsed by Complainant, and Complainant’s e-commerce services. Complainant contends that Respondent has no affiliation with Complainant. Complainant contends that it has not authorized any activities by Respondent, nor any use of its trademarks thereby. Complainant contends that Respondent has no rights or legitimate interest in the disputed domain name registration or use of the disputed domain name. Rather, Complainant contends that Respondent has registered and used the disputed domain name in bad faith to resolve to a website offering competing e-commerce services.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

This Panel must first determine whether the disputed domain name <shopveepee.com> is identical or confusingly similar to a trademark or service mark, in which Complainants have rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s registered trademark VEEPEE, and merely adds the term “shop,” which is likely to be perceived by consumers as referring to the e-commerce services offered by Complainant.

Numerous UDRP panels have agreed that supplementing or modifying a trademark with dictionary or descriptive words does not prevent a domain name being “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Inter-Ikea Systems B.V. v. Polanski,WIPO Case No. D2000-1614 (transferring <ikeausa.com>); General Electric Company v. Recruiters,WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>); Microsoft Corporation v. Step-Web, WIPO Case No. D2000‑1500 (transferring <microsofthome.com>); CBS Broadcasting, Inc. v. Y2K Concepts Corp.,WIPO Case No. D2000-1065 (transferring <cbsone.com>).

The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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”.

Respondent did not submit a reply to the Complaint, however. Rather, as mentioned in Section 4 of this Panel’s decision, Respondent has set up the URL associated with the disputed domain name to resolve to a website offering competing e-commerce services. Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interest in the disputed domain name, which Respondent has not rebutted.

C. Registered and Used in Bad Faith

There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the 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 the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] website or location”. As noted in Section 4 of this Panel’s decision, Respondent has used the URL associated with the disputed domain name to resolve to a website offering competing e-commerce services.

Respondent is thus trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain. Given the nature of the resolved site and the disputed domain name, which incorporates Complainant’s mark, and noting Complainant’s contention that Respondent “has been a member of the Spanish website Veepee since […] 2019”, which Respondent has not rebutted, the Panel finds sufficient evidence that Respondent registered and used the disputed domain name with knowledge of Complainant’s prior rights, and in particular with regard to Complainant’s e-commerce services offered under the VEEPEE mark.

Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy.

7. Decision

For all 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 <shopveepee.com> be transferred to Complainant.

Lorelei Ritchie
Sole Panelist
Dated: February 2, 2021