WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ZV Holding v. Zhang Wei

Case No. DCO2020-0015

1. The Parties

The Complainant is ZV Holding, France, represented by Nameshield, France.

The Respondent is Zhang Wei, China.

2. The Domain Name and Registrar

The disputed domain name <zadig-et-voltaire.co> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2020. On March 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 10, 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 March 13, 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 March 16, 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 March 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 6, 2020.

The Center appointed William R. Towns as the sole panelist in this matter on April 28, 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 fashion company founded in France in 1997 by Thierry Gillier. The Complainant is the owner of International trademark registration No. 907298 for the word mark ZADIG & VOLTAIRE, registered on September 15, 2006, with designations in numerous countries. The Complainant registered and has used the domain name <zadig-et-voltaire.com> with the Complainant’s official website at “www.zadig-et-voltaire.com” since May 16, 2002.

The Respondent registered the disputed domain name <zadig-et-voltaire.co> on February 26, 2020. The disputed domain name resolves to a parking page with pay-per-click (“PPC”) links related to women’s and men’s fashion, clothing, and jewelry. The disputed domain name also has been listed for sale by the Respondent on the Above.com Marketplace.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name <zadig-et-voltaire.co> is confusingly similar to the Complainant’s ZADIG & VOLTAIRE mark. The Complainant maintains that neither the inclusion of the French word “et” (“and” in English) or omission of the ampersand (“&”) precludes a finding of confusing similarity, further observing that the Complainant’s mark clearly is recognizable in the disputed domain name.

The Complainant contends that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. The Complainant represents that the Respondent has not been licensed or otherwise authorized to use the Complainant’s ZADIG & VOLTAIRE mark, and further maintains that the Respondent has not been commonly known by the disputed domain name. The Complainant submits that the Respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, nor made a legitimate or other noncommercial fair use of the disputed domain name. The Complainant explains that the Respondent has pointed the disputed domain name to a website with PPC commercial links related to the Complainant and its activities, and is seeking to capitalize on the reputation and goodwill of the Complainant’s mark.

The Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that, given the distinctiveness and reputation of the Complainant’s ZADIG & VOLTAIRE mark, it is inconceivable the Respondent could have registered the disputed domain name without actual knowledge of the Complainant’s rights in the mark. The Complainant reiterates that the Respondent is using the disputed domain name to exploit and profit from the Complainant’s rights in the ZADIG & VOLTAIRE mark, generating PPC revenues while seeking to sell the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests with respect to the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain name <zadig-et-voltaire.co> is confusingly similar to the Complainant’s ZADIG & VOLTAIRE mark, in which the Complainant has established rights through registration and use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.¹ The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the Complainant’s trademark and the disputed domain name.

The Complainant’s ZADIG & VOLTAIRE mark is clearly recognizable in the disputed domain name.² The inclusion of hyphens (“-“) and French word “et” (“and”) in the disputed domain name does not serve to dispel the confusing similarity of the disputed domain name to the Complainant’s mark. When the relevant trademark is recognizable in the disputed domain name the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.³ Generic Top-Level Domains (“gTLDs”) generally are disregarded when evaluating the identity or confusing similarity of the Complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD.⁴

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s ZADIG & VOLTAIRE mark. Nonetheless, the Respondent has registered the disputed domain name, appropriating the Complainant’s mark in its entirety, and is using the disputed domain name to generate PPC links related to fashion. In addition, the Respondent is advertising the disputed domain name for sale.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the 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 Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.

It is evident from the record that the Respondent was aware of the Complainant and had the Complainant’s distinctive ZADIG & VOLTAIRE mark in mind when registering the disputed domain name. The record is convincing that the Respondent registered the disputed domain name with the aim of exploiting and profiting from the Complainant’s mark, whether by generating revenue from PPC advertising or offering the disputed domain name for sale.

Having regard to all of the relevant circumstances in this case, and in the absence of any explanation by the Respondent, the Panel concludes that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Further, there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a finding of the Respondent’s rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent registered the 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 the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. As previously noted, the Panel concludes that the Respondent was aware of the Complainant and had the Complainant’s ZADIG & VOLTAIRE mark in mind when registering the disputed domain name. It is clear from the record that the Respondent’s motive in relation to the registration and use of the disputed domain name was to capitalize on the Complainant’s trademark rights by creating a likelihood of confusion with the Complainant’s mark, ultimately with the intent to profit illicitly therefrom. The Respondent registered and is using the disputed domain name in bad faith.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 name <zadig-et-voltaire.co> be transferred to the Complainant.

William R. Towns
Sole Panelist
Date: May 12, 2020

¹ See WIPO Overview 3.0 , section 1.7.

² See WIPO Overview 3.0, sections 1.7 & 1.8, and relevant decisions.

³ See WIPO Overview 3.0, section 1.8.

⁴ See WIPO Overview 3.0, sections 1.11 , 1.12, and relevant decisions.