The Complainants are Valeo and Valeo Service, France, represented by Tmark Conseils, France.
The Respondent is Anshuman Vyas, United States of America (“United States”), represented by Cylaw Solutions, India.
The disputed domain name <valoservice.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2021. On July 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 6, 2021, 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 July 7, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on July 8, 2021.
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 July 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2021. The Respondent submitted various informal communications to the Center and the formal Response was filed with the Center on August 8, 2021.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on August 11, 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.
According to the Complaint, the Complainants are, respectively, the parent or holding company of the Valeo group and one of its subsidiaries involved in the design, production and distribution of automotive parts for automobile manufacturers and, in the case of the second Complainant, the aftermarket. The first Complainant, Valeo, appears to have been incorporated in 1955; the second, Valeo Service, in May 1987. From the former’s website at “www.valeo.com/en/our-story” (a link to which is included in the Complaint), however, it appears its corporate name “Valeo” was adopted in 1980.
Together, they have some 59 research centres and some 191 production sites employing some 19,000 engineers and over 111,000 employees in total. Group sales in 2007 were EUR 9,555 million rising to EUR 19,200 million in 2019 and EUR 16,400 in 2020.
A number of the Complainants’ products or innovations have been honoured with technical or business awards. Prior to the registration of the disputed domain name, these awards included Premier Automotive Suppliers’ Contributions to Excellence (PACE) awards awarded by Automotive News magazine in:
- 2018: SCALA® laser scanner and the Valeo R-744 air-conditioning system;
- 2016: electric supercharger and water-cooled condenser;
- 2015: EG high efficiency alternator;
- 2014: back-over protection system;
- 2013: water-charged air cooled air intake module;
- 2012: AquaBlade®/VisioBlade® wiper system;
- 2008: Park4U® park assist system;
- 2007: multi-beam radar (MBR) blind spot detection system;
- 2006: StARS micro-hybrid system; and
- 2005: LaneVue lane departure warning system.
It has also been awarded the CLEPA Innovation Award in 2016 for its Remoted Clean4U Defrosting Function and a BFM Business BFM “Award du stratège digital” in November 2017.
The Complaint includes evidence that the Complainants have numerous registered trademarks around the world including:
(a) France Registered Trademark No. 707918, VALEO, which was registered in August 1966 for a range of goods in International Classes 6, 7, 9, 11 and 12;
(b) France Registered Trademark No. 1336045, VALEO, which was registered in December 1985 for a wide range of goods and services in International Classes 1, 2, 3, 4, 6, 7, 9, 11, 12, 14, 16, 17, 25, 28, 35, 37, 38, 39 and 41;
(c) European Union Trademark (EUTM) No. 000187542, VALEO, which was registered in October 1999 in respect of a wide range of goods and services in International Classes 6, 7, 9, 11, 12, 16, 17, 18, 25, 35 and 38;
(d) European Union Trademark (EUTM) No. 005758412, VALEO and device, which was registered in July 2007 in respect of a wide range of goods and services in International Classes 3, 4, 6, 7, 9, 11, 12, 17 and 37;
(e) China Registered Trademark No. G588286, VALEO, which was registered in January 1992 in respect of goods in International Class 7;
(f) United States Registered Trademark No. 3,550,318, VALEO and device, which was registered in June 2009 in respect of a range of goods in International Class 10.
The Complainants also have a number of registrations for device marks:
such as French Registered Trademark No. 3075355, which was registered in January 2001 in respect of a wide range of goods and services in International Classes 1, 2, 3, 4, 6, 7, 9, 11, 12, 16, 17, 21, 35, 37, 38, 39 and 41. The second Complainant also has registrations for:
including:
(a) European Union Trademark EUTM No. 016127292 which was registered in June 2017 in respect of goods and services in International Classes 6, 7, 9, 11, 12, 35, 37, 38, 39, 41 and 42; and
(b) United States Registered Trademark No. 5,853,731 which was filed on June 2, 2017 and registered on September 10, 2019 in respect of a range of goods in International Classes 7, 9, 11 and 12.
In addition to websites at the domain names <valeo.com> and <valeoservice.com>, the Complainants also have social media accounts including a Facebook account with over 157,000 followers, Twitter with over 34,000 followers, and Instagram with over 13,000 followers.
The disputed domain name was registered on September 4, 2018. The Respondent has provided evidence that he became the registrant in October 2020 through a transaction in the “Dynadot Aftermarket”.
According to the Response, the Respondent is a software engineer employed by Microsoft Corporation in the United States. Amongst other things, he holds a portfolio of many generic, inherently valuable domain names.
It does not appear to be in dispute that, since he became the registrant, the Respondent offers the disputed domain name for sale through Dan.com for an asking price of EUR 2,288.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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 has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
The first element that the Complainants must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainants’ trademark rights.
There are two parts to this inquiry: the Complainants must demonstrate that they (or one of them) have rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainants have proven ownership of the registered trademarks for VALEO, VALEO SERVICE, and VALEO SERVICE WE CARE 4 YOU referred to in section 4 above.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.7.
In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11. It is also usual to disregard the design elements of a trademark under the first element as such elements are generally incapable of representation in a domain name. Where the textual elements have been disclaimed in the registration or cannot fairly be described as an essential or important element of the trademark, however, different considerations may arise. See for example, WIPO Overview 3.0, section 1.10.
Disregarding the “.com” gTLD, the disputed domain name can be seen as “valo” and the ordinary English word “service. The “valo” element is similar to the Complainants’ VALEO trademark / element but has simply dropped the letter “e”.
The Respondent contends that this means that the disputed domain name is not confusingly similar to the Complainants’ trademarks. He says it consists of two descriptive words “valo”, which in Finnish means light or lamp, and “service”. The Respondent further points out that neither trademark searches nor Google searches for “valo” yield any result which is or includes “Valeo”.
The claimed descriptive nature of the disputed domain name as a whole is better considered under the other elements of the Policy. At this stage of the inquiry, the question is whether the disputed domain name is identical with or confusingly similar to the Complainants’ proven trademarks. As already noted that merely requires a simple visual and aural comparison.
In that comparison, the omission of the letter “e” can be seen as a misspelling of the Complainants’ trademark and, given the non-distinctive nature of the ordinary English word “service” is confusingly similar to at least the Complainants’ VALEO and VALEO SERVICES trademarks. WIPO Overview 3.0, section 1.9 and 1.8. As the words “Valeo Service” are a prominent and important part of the Complainants’ VALEO SERVICE WE CARE 4 YOU trademark, a finding of confusing similarity would also follow.
The Respondent contends that the “typosquatting” cases should not apply as “valo” is, according to the Respondent a descriptive term. The Respondent cites Tata Sons Pvt. Ltd. v. Victor TSB WIPO Case No. D2021-1084 (involving <taatas.com> in support of this contention. In that decision, however, the learned panelist found that the domain name was confusingly similar to the trademark TATA. It does not provide any support for the Respondent’s contention.
The Respondent also points out that the United States registration for VALEO SERVICE WE CARE 4 YOU includes a disclaimer “No claim is made to the exclusive right to use “service” apart from the mark as shown”. This disclaimer does not assist the Respondent at least in this context. First, the disputed domain name is not “service.com”. The question is whether the disputed domain name as a whole is confusingly similar to the Complainants’ trademarks.
Secondly, the Respondent’s argument does not address the Complainants’ registrations for VALEO alone. The Respondent does point out that United States trademark registrations include notations that the term can be translated such as “be strong, be well, be powerful, prevail.” Such notations are not disclaimers. Whether or not they can operate that way or whether the term in question is distinctive of the goods or services in question depends in part on the context and in part on whether a significant part of the public would recognise the foreign meaning. Having regard to those matters, the Panel does not consider “Valeo” is directly descriptive of the range of goods or services for which the Complainants’ have registered the term. See WIPO Overview 3.0, section 1.8.
Accordingly, the Panel finds that the Complainants have established that the disputed domain name is confusingly similar to their trademarks and the requirement under the first limb of the Policy is satisfied.
In the circumstances of this case, it is appropriate to consider the third requirement under the Policy next.
Under the third requirement of the Policy, the Complainants must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The Complainants contend their “Valeo” trademark is very well known. The sales of the group have been referred to in section 4 above and are very substantial. The Opposition Division of (then) OHIM found that, for the purposes of article 8(5) of the Community Trad Mark Regulation (CTMR), the first Complainant had a reputation in “Valeo” on the grounds of exposure to a substantial part of the public throughout the European Union: Valeo v Alfred Stöckl Decision No. 977/2005. According to the Complainant, the Intellectual Property Office in China also found that the first Complainant had a reputation in “Valeo” in 2010. A number of previous panels have also found the Complainants’ trademark to be well-known. These include Valeo v fa lei ao run hua you(bei jing) you xian gong si (Valeo Lubricants (Beijing) Co., Ltd.) / zhang ou (Zhang Ou), WIPO Case No. D2012-2311, Valeo v. Privacy Protect, LLC (PrivacyProtect.org) / Li Mq, WIPO Case No. D2018-2615; Valeo v. Domain Administrator, Domain Administrator, Conrad Design Ltd, WIPO Case No. D2019-0236 and Valeo v. Pouya Habibi, To see Tejarat Pooya, WIPO Case No. D2019-2546.
The Respondent, however, has submitted a declaration in which he categorically denies any knowledge of the Complainants and their trademarks.
Further, he says he is in the business (at least on the side) of registering domain names, which he considers are likely to have intrinsic value because of their descriptive nature. The Response includes evidence that he holds a significant number of such registrations.
The Respondent also says he has an interest in foreign languages and as a result he has registered a number of domain names for descriptive words in foreign languages. Some of the domain names included in his evidence include <Elmedica.com> (which the Respondent claims is Spanish for “The Doctor”), <Emandar.com> (the Respondent claims Mandar is Portugese for “To Send”, combined with prefix “E” to indicate “electronically”), <Interioriza.com> (which the Respondent claims is Romanian for ‘internalize’), <Atlantas.com> (which the Respondent claims is Lithuanian for “Atlas”), <SpazioUrbano.com> (which the Respondent claims is Italian for “Urban Space”), <Tramitesyservicios.com> (which the Respondent claims is Spanish for “Procedures and Services”) and <FormaMarketing.com> (which the Respondent claims is Forma is Spanish for “Shape”, combined with English word “Marketing” to indicate ‘Marketing Form’).
The Respondent also provides evidence that he has registered at least four other domain names which end in “sevices”: <driverlesstruckservices.com>, <trueclearingservices.com>, <whitecollarservices.com> and <reikiservices.com>.1
According to the Respondent one of the languages which he has some familiarity with is Finnish. The Respondent provides evidence demonstrating that “valo” in Finnish translates to “light” or “lamp” in English. Thus, he considered “valo service” conveyed the idea of a service relating to lights.
The Panel must express more than some skepticism that the combination of two words from different languages can really be used in this way to claim the disputed domain name is merely descriptive. 2 However, the issue under this limb of the Policy is the Respondent’s motivations in registering and using the disputed domain name and whether they can be described as in bad faith. The plausibility of a claim that the disputed domain name is descriptive would be a consideration in that assessment, but is not necessarily determinative.
In the present case, there is more. According to the Response, the Respondent undertook research before proceeding with the registration. It is not entirely clear what the research consisted of. However, the Response includes evidence that there are a very large number of businesses or entities in many countries around the world whose name is or starts with “valo”. Also in the United States, there are a number of registered trademarks for or including “valo” in the names of a number of different parties and for a range of goods and services.
Importantly for present purposes, the Respondent points out, and has provided evidence demonstrating, that trademark searches for “valo” do not result in disclosure of any of the trademarks for VALEO or its derivatives VALEO SERVICE and VALEO SERVICE WE CARE $ YOU. Similarly, Google searches of “valo” do not produce any links to the Complainants or their products.
In these circumstances, the Panel does not consider the Respondent’s denial of awareness of the Complainants and their trademarks can be disregarded. These administrative proceedings are proceedings on the papers, without the benefit of procedures like discovery or oral evidence including cross-examination. The Respondent’s explanation of how he came to register the disputed domain name is arguably unusual, but it is supported to an extent by his own past practices as evidenced by other domain names he has registered (albeit not many other ones, if any, based on Finnish words) and also the trademark and Google searches.
Accordingly, the Complainants have not established that the Respondent registered the disputed domain name in bad faith and the Complaint must fail.
In view of that outcome, no good purpose would be served by considering whether or not the Respondent has used the disputed domain name in bad faith or has been shown not to have rights or legitimate interests in the disputed domain name.
The Respondent contends that the Complaint has been brought in bad faith and, accordingly, the Complainant should be sanctioned by a finding of reverse domain name hijacking.
Paragraph 15(e) of the Rules provides, in part:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
Paragraph 1 of the Rules defines “Reverse Domain Name Hijacking” to be “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
The fact that a Complaint has failed is not in itself sufficient to warrant a finding of reverse domain name hijacking.
In the present case, the Respondent has succeeded on the narrow ground that he did not register the disputed domain name in bad faith. Contrary to the Respondent’s contentions, the Panel has found that the disputed domain name is confusingly similar to the Complainants’ trademarks. In addition, the Panel considers the Complainants had a legitimate basis for considering the Respondent was likely to have been aware of their trademarks given how long they have been using the trademarks and the scale of that use albeit in the fairly discrete field of automotive parts and related products and services.
The Respondent was and is also offering the disputed domain name for sale for a price almost 200 times the USD 12.99 which the Respondent paid for it.
The Respondent has been able to rebut that inference on the basis of information essentially solely within his control.
Accordingly, the Panel declines to make the requested order.
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Sole Panelist
Date: August 25, 2021
1 The Panel notes that <reikiservices.com> combines “reiki” and “services”. While “reiki” is apparently of Japanese origin, its practice has apparently extended (amongst other places) into a number of English speaking countries including, apparently, the United States as the name of a particular branch of alternative medicine.
2 The Respondent cites NovAtel Inc. v. Registration Private, Domains By Proxy, LLC / Domain Admin, FindYourDomain.com, WIPO Case No. D2019-1939 (<novatela.com>) in support of this proposition. In that case, however, the respondent contended and the panel accepted that “nova tela” in Portuguese could be translated as “new screen” in English.