WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Vente-privee.com, Vente-privee.com IP S.à.r.l. v. Zhangwei

Case No. DCO2017-0022

1. The Parties

The Complainants are Vente-privee.com of La Plaine Saint Denis, France and Vente-privee.com IP S.à.r.l. of Grand-Duchy, Luxembourg (the “Complainants”), represented by Cabinet Degret, France.

The Respondent is Zhangwei of Yangzhou, Jiangsu, China.

2. The Domain Name and Registrar

The disputed domain name <vente-privee.co> (the “Disputed Domain Name”) is registered with Ourdomains Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2017. On June 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 4, 2017, 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.

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 of the Complaint, and the proceedings commenced on July 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 26, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 27, 2017.

The Center appointed Lynda M. Braun as the sole panelist in this matter on August 2, 2017. 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.

According to paragraph 11(a) of the Rules, “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement […].” Since the Registration Agreement is in English, the Panel concludes that English is the language of this proceeding.

4. Factual Background

The Complainants belong to the same group of companies. Vente-privee.com IP S.à.r.l is a wholly-owned subsidiary of Vente-privee.com. The Complainants’ business involves purchasing and selling products and services through e-commerce tools, and providing consulting services in the field of e-commerce in numerous jurisdictions around the world, including in China, where the Respondent resides. The Complainants operate a website that consists of event sales of many kinds of discounted products and services bearing well-known trademarks.

The Complainants own a large portfolio of registered trademarks in numerous jurisdictions around the world for both VENTE-PRIVEE and VENTE-PRIVEE.COM. The Complainants’ trademarks include, but are not limited to, VENTE-PRIVEE.COM & Design, French Registration Trademark No. 3318310, filed on October 14, 2004; VENTE-PRIVEE.COM & Design, European Union Trademark No. 5413018, filed on October 24, 2006 and registered on December 20, 2007; and VENTE PRIVEE & Design, International Trademark No. 1116436, registered on February 23, 2012 designating inter alia Algeria, Australia, China, Egypt, Japan, Republic of Korea, Switzerland and Turkey (collectively, the “VENTE-PRIVEE Marks”).

The Complainants have also registered approximately 1,000 domain names that incorporate iterations of the VENTE-PRIVEE Marks in domain names that include generic Top-level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”). The Complainants have an official website at “www.vente-privee.com”.

The Respondent registered the Disputed Domain Name on September 22, 2016. According to a screenshot provided by the Complainants as an annex to the Complaint, the Disputed Domain Name resolved to a website which contained a parking page with pay-per-click sponsored links, including those of the Complainants’ competitors. As of the writing of this decision, the website is no longer available online.

5. Parties’ Contentions

A. Complainants

The following are the Complainants’ contentions:

- The Disputed Domain Name is confusingly similar to the Complainants’ trademarks.

- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

- The Disputed Domain Name was registered and is being used in bad faith.

- The Complainants seek the transfer of the Disputed Domain Name from the Respondent to the Complainants in accordance with paragraph 4(i) of the Policy.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

In order for the Complainants to prevail and have the Disputed Domain Name transferred to the Complainants, the Complainants must prove the following (Policy, paragraph 4(a)):

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) The Disputed Domain Name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

This element consists of two parts: first, do the Complainants have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.

It is uncontroverted that the Complainants have established rights in the VENTE-PRIVEE Marks based on both long and continuous use as well as its numerous trademark registrations in jurisdictions around the world for the VENTE-PRIVEE Marks.

The Disputed Domain Name consists of the VENTE-PRIVEE Marks in their entirety, followed by the ccTLD “.co”. The addition of the country code designation for Colombia, “.co”, does not diminish, but rather adds to the confusing similarity between the Disputed Domain Name and the Complainants’ VENTE-PRIVEE Marks since the only difference between the Disputed Domain Name and the VENTE-PRIVEE.COM trademark is one letter, the letter “m”. Thus, the Disputed Domain Name is confusingly similar to the Complainants’ VENTE-PRIVEE Marks.

Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainants.

B. Rights or Legitimate Interests

Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence to demonstrate rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.

The Complainants have not authorized, licensed, or otherwise permitted the Respondent to use its VENTE-PRIVEE Marks. The Complainants do not have any type of business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Panel finds that the Respondent is improperly using the Disputed Domain Name for commercial gain and thus, has no rights or legitimate interests in the Disputed Domain Name.

Moreover, the Respondent’s unauthorized registration and use of the Disputed Domain Name to create a website containing a parking page with pay-per-click links does not constitute a bonafide offering of goods or services or noncommercial fair use under the Policy.

Finally, where a respondent has registered and is using a domain name in bad faith (see the discussion below), the respondent cannot be reasonably found to have made a bona fide offering of goods or services. In this case, the Panel finds that the Complainants have made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainants’ prima facie case.

Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainants.

C. Registered and Used in Bad Faith

The Panel finds that based on the record, the Complainants have demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.

First, the Respondent attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainants’ VENTE-PRIVEE Marks. The Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith to attract customers to its website by using a domain name that is confusingly similar to the Complainants’ VENTE-PRIVEE Marks.

Second, bad faith may be found where the Respondent knew or should have known of the Complainants’ VENTE-PRIVEE Marks prior to registering the Disputed Domain Name. See Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Name long after the Complainants first used the VENTE-PRIVEE Marks.

The continuous and public use of the VENTE-PRIVEE Marks would make it disingenuous for the Respondent to claim that it was unaware that the registration of the Disputed Domain Name would interfere with the Complainants’ rights. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant’s trademarks). Thus, the timing of the Respondent’s registration and use of the Disputed Domain Name indicates that it was made in bad faith.

Moreover, the registration of a domain name that is confusingly similar to a well-known registered trademark by an entity that has no relationship to that mark may be an indication of bad faith registration and use. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith). Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to create a likelihood of confusion with the VENTE-PRIVEE Marks.

Finally, the Respondent has been involved in a pattern of abusive domain name registrations. Besides the Disputed Domain name, the Respondent has been a party to several previous UDRP proceedings in which the domain names at issue were transferred to the complainant. See Klarna AB v. Zhangwei, WIPO Case No. DCO2017-0006; Pierre Balmain S.A. v. Zhang Wei, WIPO Case No. D2016-1815; M.F. H. Fejlesztõ Korlátolt Felelõsségú Társaság v. zhangwei, WIPO Case No. D2016-0573; and Swarovski Aktiengesellschaft v. zhangwei, WIPO Case No. D2013-2184. The fact that a respondent displays a pattern of registering well-known trademarks as domain names is an indication of bad faith. See Starwood Hotels & Resorts Worldwide Inc., The Sheraton LLC, Sheraton International IP, LLC v. Name Supply, WIPO Case No. D2014-1054.

Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainants.

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 <vente-privee.co> be transferred to the Complainants.

Lynda M. Braun
Sole Panelist
Date: August 4, 2017