A. The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights
Complainant has demonstrated that it is the owner of the International trademark VIVENDI No. 687855 registered and duly renewed since February 23, 1998 in classes 09, 35 36, 37, 38, 39, 40, 41, and 42.
Complainant has also shown that it is the owner of the International trademark VIVENDI No. 706637 registered and duly renewed since December 2, 1998 in classes 01, 06, 09, 11, 17, 19, 35, 36, 37, 38, 39, 40, 41, and 42.
Both trademarks are protected in the United Kingdom, country of Respondent, among other territories. Furthermore, they both predate the registration of disputed domain name by more than twenty years.
Complainant has also proven that it owns the domain name <vivendi.com> registered on November 11, 1997.
The disputed domain name fully reproduces Complainant’s trademark VIVENDI.
The addition of a generic Top-Level Domain (gTLD) in a domain name, such as “club”, is a technical requirement. Therefore, such an element must be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (see Philipp Plein v. Leno Trade Company, CAC case No. 102184).
Consequently, the Panel finds that the disputed domain name is identical to Complainant’s trademarks “VIVENDI” and that Complainant has met its burden of showing that the disputed domain name is confusingly similar or identical to the marks on which Complainant has valid rights, within the meaning of paragraph 4(a)(i) of the Policy.
B. Respondent has no Rights or Legitimate Interests
It is sufficient that Complainant establishes a prima facie case that Respondent lacks legitimate rights or legitimate interests in the disputed domain name in order to shift the burden of proof to Respondent (see e.g. Otokar Otomotiv ve Savunma Sanavi A.S. v. Gbenga Osoba, ADR Case No. 07202).
Complainant claims that Respondent has no rights or legitimate interests in the disputed domain name. Complainant further asserts that Respondent does not carry out any activity for Complainant, nor does it have any business with Complainant. Complainant claims that no license or authorization were granted to Respondent to make any use of Complainant’s trademarks VIVENDI, nor to apply for registration of the disputed domain name.
In addition, the disputed domain name redirects to a parking page featuring several pay-per-click links. Complainant states that such use of the disputed domain name does not constitute a bona fide offering of goods and services nor is it a legitimate non-commercial or fair use of the disputed domain name. The Panel agrees.
Therefore, the Panel finds that Complainant has shown a prima face case that the Respondent lacks rights or legitimate interests in the disputed domain name.
For this reason, the burden of proof shifts from Complainant to Respondent, who has not answered the complaint. In this respect, it should be noted that “Lack of any response is another element against Respondent’s legitimate use or interest in the disputed domain name” (See e.g. Loro Piana S.p.A. v. Robert Remy, CAC Case No. 101595).
Complainant has shown to the satisfaction of the Panel that the Respondent has no rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.
C. Respondent registered and used the domain name in bad faith
The disputed domain name reproduces the “VIVENDI” trademark, which has been recognized as well-known by previous Panels: “The Panel is convinced that the Trademarks [VIVENDI] are highly distinctive and well-established” (see CAC Case No.101875, VIVENDI v. Phoenix Global Organization Incorporated).
Besides, the evidence on record shows that the disputed domain name redirects to a parking page with commercial links. Respondent’s use of the disputed domain name for a parking page is in itself sufficient to support a finding of bad faith use as Respondent is intentionally attempting to attract Internet users to its website for commercial gain, and is thus creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website, in accordance with paragraph 4(b)(iv) of the Policy.
Previous Panels have considered that such use of a domain name demonstrates “some knowledge and an attempt to leverage the reputation of the trademark” (CAC Case No. 102233, Geox S.p.a. v. Jeongyong Cho).
Therefore, in view of the above, the Panel finds that Respondent registered the disputed domain name with Complainant’s rights in mind and that it did so with the intention of taking advantage of such rights, as shown by the subsequent use of the disputed domain name.
The Panel concludes that the Complainant has established all three elements required under paragraph 4(a) of the Policy.
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