WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Vivendi v. 吴朝文 (Wuchaowen)

Case No. D2019-2792

1. The Parties

The Complainant is Vivendi, France, represented by Nameshield, France.

The Respondent is 吴朝文 (Wuchaowen), China.

2. The Domain Name and Registrar

The disputed domain name <vivendi.ltd> is registered with DNSPod, Inc. (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 15, 2019, 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.

On November 19, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. On the same day, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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 in English and Chinese, and the proceedings commenced on November 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2019. The Respondent sent emails to the Center on November 26 and 27, 2019 regarding a possible settlement and the Complainant sent emails on November 27 and 28, 2019 indicating it was willing to settle the dispute but declining to offer compensation. The Respondent sent an informal response to the Complaint by email dated November 27, 2019. The Respondent sent its formal Response on November 30, 2019 and confirmed that this was its final response in an email dated December 3, 2019. Accordingly, the Center informed the Parties that it would proceed with panel appointment on December 4, 2019.

The Center appointed Matthew Kennedy as the sole panelist in this matter on December 26, 2019. 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 media company with activities in music, television, film, video games, telecommunications, tickets and video hosting services. It has over 44,000 employees in 78 countries. The Complainant holds International trademark registration number 687855 for VIVENDI, registered on February 23, 1998, designating multiple jurisdictions, and specifying goods and services in classes 9, 35, 36, 37, 38, 39, 40, 41 and 42. That registration remains current. The Complainant also registered the domain name <vivendi.com> on November 12, 1997, that it uses in connection with its official website where it provides information about itself and its services.

The Respondent is an individual resident in China. The Respondent indicated in his emails of November 26 and 27, 2019 that he wanted to reach a settlement with the Complainant and transfer the disputed domain name to it, but that he hoped to receive some compensation from the Complainant because, he alleged, the disputed domain name had been renewed for many years.

The disputed domain name was registered on November 12, 2019. It does not resolve to any active website; rather, it is passively held.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical to the Complainant’s VIVENDI trademarks.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known as the disputed domain name. The Respondent is not affiliated with nor authorized by the Complainant in any way. The Complainant does not carry out any activity for, nor has any business with, the Respondent. Neither license nor authorization has been granted to the Respondent to make any use of the Complainant’s trademarks, or apply for registration of the disputed domain name by the Complainant. The disputed domain name is currently inactive.

The disputed domain name was registered and is being used in bad faith. Given the distinctiveness of the Complainant’s trademarks and reputation, it is reasonable to infer that the Respondent registered the disputed domain name with full knowledge of the Complainant’s trademarks. 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 disputed domain name by the Respondent that would not be illegitimate.

B. Respondent

The Respondent submits that he did not use the disputed domain name to establish a website to publish any content similar to the Complainant’s or do anything that would harm the Complainant’s interests.

Many trademarks that are the same can coexist, as long as the nature of the domain is irrelevant.

Trademarks and domain names are separate; trademark rights do not entitle the owner to the same domain names for free. It would be illegal to use the disputed domain name similar to the VIVENDI company trademark or corporate behavior but the Respondent has not used it in that way.

The disputed domain name provider did not show that the disputed domain name was reserved or unregistrable; rather, the Respondent successfully registered the disputed domain name and its registration remains valid until the expiry date.

The Response also recites the terms of the Complainant’s email dated November 28, 2019, declining to pay compensation.

6. Discussion and Findings

6.1 Language of the Proceeding

Paragraph 11(a) of the Rules provides that “unless 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, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.

The Complainant requests that English be the language of the proceeding. Its main arguments are that English is the language most widely used in international relations, the disputed domain name is in Roman characters, translation of the Complaint would be costly and impose a significant burden on the Complainant.

Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the Parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that the Complaint and the Response were both filed in English. Therefore, the Panel considers that requiring the Parties to translate their submissions from English into Chinese would create an undue burden and delay.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that the complainant must prove each of the following elements in respect of each disputed domain name:

(i) the disputed 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 in respect of the disputed domain name; and

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

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the VIVENDI mark.

The disputed domain name wholly incorporates the VIVENDI mark. Its only additional element is a generic Top-Level Domain (“gTLD”) suffix, i.e. “.ltd”, which is a technical requirement of registration. A gTLD suffix is disregarded in the comparison between a trademark and a domain name for the purposes of the first element of the Policy unless it has some impact beyond its technical function, which is not the case here.

Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights or legitimate interests in a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] 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] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The disputed domain name does not resolve to any active website; rather, it is held passively. This is not a use in connection with a bona fide offering of goods or services within the terms of paragraph 4(c)(i) of the Policy, nor a legitimate noncommercial or fair use of the disputed domain name within the terms of paragraph 4(c)(iii) of the Policy.

According to the Registrar’s WhoIs database, the Respondent’s name is “吴朝文 (Wuchaowen)”. There is no evidence on the record that the Respondent has been commonly known as “vivendi” within the terms of paragraph 4(c)(ii) of the Policy.

In view of the above circumstances, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Respondent draws attention to the fact that he successfully registered the disputed domain name. However, the Panel does not consider that the mere registration of a domain name creates rights or legitimate interests for the purposes of the second element of the Policy, otherwise no Complaint could ever succeed, which would be an illogical result. See, for example, Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134. Moreover, the fact that the Complainant did not reserve the disputed domain name does not imply that it waived its trademark rights.

Although the Respondent asserted in his informal email of November 27, 2019 that he had previously planned to set up a personal blog for the disputed domain name, he did not provide any supporting evidence nor pursue that argument in the Response.

Accordingly, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive.

With respect to registration, the disputed domain name was registered in 2019, years after the registration of the Complainant’s VIVENDI trademark. The disputed domain name wholly incorporates the VIVENDI trademark, with no additional element besides a gTLD suffix, which is a technical requirement of registration. The Complainant has acquired a considerable reputation in its VIVENDI mark due to its extensive use in connection with its goods and services. It can be noted that the top results of a search for the term “vivendi” in the Baidu search engine in Chinese all refer to the Complainant. The Respondent provides no explanation as to why he chose to register “vivendi” as a domain name. Accordingly, the Panel considers it more likely than not that the Respondent knew of the Complainant at the time of registration of the disputed domain name, and that he registered the disputed domain name in bad faith.

With respect to use, the Respondent currently makes only passive use of the disputed domain name but this does not preclude a finding of use in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the present dispute, the disputed domain name wholly incorporates the VIVENDI trademark, with no additional element besides a gTLD suffix. The Complainant has acquired a considerable reputation in its VIVENDI mark due to its extensive use in connection with its goods and services, including through its official website. The Respondent argues that a trademark and domain name can coexist and that he has not used the disputed domain name in a way that harms the Complainant’s interests. However, the Panel notes that the Respondent has provided no credible explanation as to how he intends to use the disputed domain name and the potential use of the disputed domain name by the Respondent remains a continuing threat to the interests of the Complainant. In all these circumstances, the Panel considers it more likely than not that the Respondent is using the disputed domain name in bad faith.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 <vivendi.ltd> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: January 8, 2020