PARTIES' CONTENTIONS:
COMPLAINANT:
The Complainant is a French multinational mass media conglomerate headquartered in Paris. The company has activities in music, television, film, video games, telecommunications, tickets and video hosting service. With 42,526 employees in 82 countries, the Complainant’s total revenues amounted to € 16,090 million worldwide in 2020.
The Complainant owns and communicates on Internet through various domain names, such as the domain name <vivendi.com> registered on November 12, 1997.
The disputed domain name <vivendipm.com> was registered on December 11, 2021 and redirects to a blank page.
The Complainant states that the disputed domain name <vivendipm.com> is confusingly similar to its trademark VIVENDI®, as it incorporates the trademark in its entirety.
The addition of letters “PM” to the trademark VIVENDI® is not sufficient to escape the finding that the domain name is confusingly similar to the trademark and branded goods VIVENDI®. It is well-established that “a domain name that wholly incorporates a Complainant’s registered trademark may be sufficient to establish confusing similarity for purposes of the UDRP”. Please see WIPO Case No. D2003-0888, Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin.
Several UDRP panels confirmed the Complainant’s rights over the term “VIVENDI”, such as:
- WIPO Case No. D2021-0026, Vivendi v. 龚小丽 (Gong Xiao Li) <universal-vivendi.com>;
- CAC Case No. 102885, VIVENDI v. Super Privacy Service LTD c/o Dynadot <vivendiwater.com>;
- CAC Case No. 102736, VIVENDI v. VARUNZ.COM <vivendimediaworks.com>.
According the Complainant, the Respondent does not have any rights or legitimate interest in the disputed domain name
According to the WIPO case No. D2003-0455, Croatia Airlines d. d. v. Modern Empire Internet Ltd., the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a) (ii) of the Policy.
The Complainant asserts that the Respondent is not identified in the Whois as the disputed domain name. Past panels have held that a Respondent was not commonly known by a disputed domain name if the Whois information was not similar to the disputed domain name. Thus, the Respondent is not known as the disputed domain name.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name <vivendipm.com> and that he is not related in any way to the Complainant’s business.
The Complainant contends that the Respondent is not affiliated with him nor authorized by him in any way to use the trademark VIVENDI®. The Complainant does not carry out any activity for, nor has any business with the Respondent.
Moreover, the disputed domain name is not used. The Complainant contends that Respondent did not make any use of disputed domain name since its registration, and it confirms that Respondent has no demonstrable plan to use the disputed domain name. It demonstrates a lack of legitimate interests in respect of the disputed domain name.
The disputed domain name has been registered and is being used in bad faith
The Complainant contends that the disputed domain name <vivendipm.com> is confusingly similar to its distinctive and worldwide known trademarks VIVENDI®. See for instance CAC Case No. 101875, VIVENDI v. Phoenix Global Organization Incorporated (“The Panel is convinced that the Trademarks [VIVENDI] are highly distinctive and well-established.”).
Besides, the Complainant is a diversified content, media and communications group present worldwide, with 42,526 employees in 82 countries and 16,090 million euros in revenues. Therefore, given the distinctiveness of the Complainant's trademarks and reputation, it is reasonable to infer that the Respondent has registered the domain name with full knowledge of the Complainant's trademarks. See for instance WIPO Case No. D2004-0673, Ferrari S.p.A v. American Entertainment Group Inc.
Besides, the disputed domain name resolves to an inactive page. The Complainant contends that the Respondent has not demonstrated any activity in respect of the disputed domain name, and it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.
As prior WIPO UDRP panels have held, the incorporation of a famous mark into a domain name, coupled with an inactive website, may be evidence of bad faith registration and use. See for instance (WIPO Case No. D2000-0003, Telstra Corporation Limited v. Nuclear Marshmallows; or WIPO Case No. D2000-0400, CBS Broadcasting, Inc. v. Dennis Toeppen).
On these bases, the Complainant concludes that the Respondent has registered and is using the disputed domain name in bad faith.
RESPONDENT
The Respondent filed an administratively compliant response in which it states:
“We are in the formality of creating an LLC company named Vivendi Property Management, focused on realtor services and property management services in the state of Florida. Therefore the domain name vivendipm, which was available for purchase.”
Legal Grounds
The disputed domain name is neither identical nor confusingly similar to the protected mark for the following reasons :
The selection of the name was based on its relation with the concept of living, that is directly related to our business mission and needs.
The Respondent has rights and/or legitimate interest in the disputed domain name
Categories of issues involved:
- Use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services
- Use or demonstrable preparations to use
The disputed domain name has not been registered and used in bad faith
Categories of issues involved:
- Meaning of registration
- Acquisition
“The domain in question was purchased in good faith, based on our company name Vivendi Property Management. Our company is focused on realtor and property management services and the name was chosen because of its meaning and had no relation to any other company.”
|