WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Vivendi v. Your art dna

Case No. D2021-0900

1. The Parties

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

The Respondent is Your art dna, Netherlands.

2. The Domain Names and Registrar

The disputed domain names <happyplanetvivendi.com>, <happyplanetvivendi.online> and <happyplanetvivendi.site> are registered with Realtime Register B.V. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2021. On March 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 26, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 26, 2021, 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 26, 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 March 31, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 20, 2021. An informal Response was filed with the Center on April 8, 2021. The Center informed the Parties of its commencement to Panel Appointment on April 22, 2021.

The Center appointed Antony Gold as the sole panelist in this matter on April 29, 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.

4. Factual Background

The Complainant is a multinational media group with its headquarters in Paris, France. It has over 44,000 employees located in 78 countries and its turnover in 2018 amounted to EUR 13,932 million.

The Complainant is the owner of several international trade mark registrations for VIVENDI including, by way of example only, International Trade Mark, registration number 687855, registered on February 23, 1998, for VIVENDI in classes 9 and 35 to 41 inclusive. The Complainant also owns domain names, which resolve to websites promoting its services, including <vivendi.com> and <vivendi-universal.com>.

The disputed domain names were registered on March 21, 2021. They presently resolve to a parking page.

5. Parties’ Contentions

A. Complainant

The Complainant says that the disputed domain names are identical or confusingly similar to a trade mark in which it has rights. The disputed domain names wholly incorporate the Complainant’s VIVENDI mark and the addition of the generic Top Level Domains (“gTLDs”) “.com”, “.site” and “.online” do not change the overall impression of them as being connected with the VIVENDI trade mark nor do they prevent a likelihood of confusion with its mark.

The Complainant says also that the Respondent has no rights or legitimate interests with respect to the disputed domain names. A complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once it is has done so, the respondent carries the burden of demonstrating rights or legitimate interests in it; see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Respondent is not known by the disputed domain names. Nor is the Respondent affiliated with the Respondent, nor is it authorized by it to use its VIVENDI trade marks. Furthermore, the disputed domain names resolve to a parking page. As the Respondent has not made any use of them since registration and has no demonstrable plan to do so, it clearly lacks legitimate interests in them.

Finally, the Complainant says that the disputed domain names were registered and are being used in bad faith. Given the distinctiveness of the Complainant’s trade marks and reputation, it is reasonable to infer that the disputed domain names were registered by the Respondent with full knowledge of them. The disputed domain names are not being used and the Respondent has not demonstrated any activity in respect of them. Furthermore, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain names that would not be illegitimate, such as passing off the Complainant’s rights or an attempt by the Respondent to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.

B. Respondent

The Respondent’s email to the Center dated April 8, 2021, asserts that it is sent on behalf of a group of artists who have set themselves the goal of making the world a better place. They are doing so with the Happy Planet concept. This is built on the importance and need of corporate social responsibility to support and increase sustainability throughout the world.

The Happy Planet Family acts as an umbrella, protecting and providing a platform for the Happy Planet Labels. These labels enable enterprises to show that they make an effort to return on investment. The Labels include Happy Planet Service, Happy Planet Food, Happy Planet Toys and so on. These are just examples of what every label under the Happy Planet Umbrella has set out to bring to the world.

Happy Planet Family consists of the Happy Planet Quality Mark, acquired through one of the Happy Planet Family Labels, and the Happy Planet Platforms. To ensure ownership of the Happy Planet Family concept, the Respondent has made sure to register intellectual property worldwide. The disputed domain names are the Respondent’s property. The intention is 100 percent protection. The Respondent will sign an agreement that protects theirs and the Complainant’s brand; “We will ensure that that the domain names containing the Vivendi brand will not be used by us in any way”. And similarly; “We will not use or exploit the domains registered that contain the Vivendi name. They will remain with The Happy Planet Family in our freezer at -30 degrees for at least 100 years”. The Respondent is open to a collaboration with the Complainant to promote and support corporate social responsibility and sustainability worldwide. This is the Happy Planet Family goal and the ambition, which motivates the Respondent every single day.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:

(i) the disputed domain name is identical or confusingly similar to a trade mark 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

The information provided by the Complainant in relation to its trade mark registrations for VIVENDI, including the mark in respect of which full details are provided above, establish its rights in its VIVENDI trade marks.

For the purpose of determining whether the disputed domain names are identical or confusingly similar to the Complainant’s mark, the gTLDs “.com”, “.online” and “.site” are disregarded as they are a technical requirement of registration.

The disputed domain names include the Complainant’s VIVENDI trade mark, in full and without alteration. The fact that the Complainant’s mark is preceded in each of the disputed domain names by the words “happy planet” does not prevent them from being confusingly similar to the Complainant’s mark. As explained at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.

The Complainant’s VIVENDI trade mark is clearly recognizable within each of the disputed domain names.

The Panel therefore finds that the disputed domain names are confusingly similar to a trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy explains that a respondent may establish that it has rights or legitimate interests in a domain name if, in summary, it can show that either;

(i) before any notice to it of the dispute, it had used, or made demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services; or

(ii) it been commonly known by the domain name; or

(iii) it was making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

When considering whether the Respondent has made use of the disputed domain names in connection with a bona fide offering of goods or services it is material to have regard to the provisions of section 2.2 of the WIPO Overview 3.0, which provides a number of non-exhaustive examples of what would constitute satisfactory evidence by a respondent of prior use, or demonstrable preparations to use, a domain name, in connection with a bona fide offering of goods or services. These include: “proof of a genuine (i.e., not pretextual) business plan utilizing the domain name, and credible signs of pursuit of the business plan” and/or “other evidence generally pointing to a lack of indicia of cybersquatting intent”. Section 2.2 explains that panels have not necessarily required evidence of such use or intended use to be available immediately after registration of a domain name, but that the passage of time may be relevant in assessing whether purported demonstrable preparations are bona fide or pretextual. Finally, it explains that, if not independently verifiable by the panel, examples of use or demonstrable preparations to use a domain name in connection with a bona fide offering of goods or services should be inherently credible and supported by relevant pre-complaint evidence.

Not a great deal of time has elapsed between the dates of registration of the disputed domain names and the filing of the Complaint and the Panel takes this into account when assessing the Respondent’s assertions. However, not a single document has been produced by the Respondent in an attempt to substantiate its assertions that it has a highly developed project to make the world a better place through the promotion of a series of quality marks, platforms and labels. This is notwithstanding that the Respondent has made claims such as “Each Happy Planet Family Label carries its own consumer comparison site to ensure that the product or service that the looking to purchase has the Corporate Social Responsibly [sic] and sustainability quality mark”. Considering the scale and specificity of the Respondent’s apparent plans, it is to be expected that some evidence of them was available, if they were genuine. The claims by the Respondent accordingly fall a long way short of satisfying the evidential test, as outlined in at section 2.2 of the WIPO Overview 3.0, for establishing that its activities comprise either a bona fide offering of goods and services or demonstrable preparations for such an offering.

The second circumstance under paragraph 4(c) of the Policy can be dealt with briefly; there is no evidence that the Respondent has been commonly known by the disputed domain names. The third circumstance is also inapplicable; registration of the disputed domain names incorporating the Complainant’s mark for no apparent reason does not amount to a legitimate, noncommercial use of them and the composition of the disputed domain names is such that they carry a risk of implied affiliation with the Complainant, which prevents their use from being considered fair; see section 2.5.1 of the WIPO Overview 3.0.

The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain names.

C. Registered and Used in Bad Faith

Dealing, first, with bad faith registration, the Respondent has not suggested that it was unaware of the Complainant and its activities as at the time of its registration of the disputed domain names. With this in mind, its response notably fails to provide any explanation as to why its apparent plans to make the world a better place required, as component part, registration of three domain names, identical save for the gTLD in which they have been registered, which incorporated the Complainant’s VIVENDI trade mark. Not only has the Respondent omitted to explain where the Complainant and its VIVENDI marks featured in its strategy, but it has also not explained why the disputed domain names were registered notwithstanding that it had no intention of ever using them, viz; “We will not use or exploit the domains registered that contain the Vivendi name. They will remain with The Happy Planet Family in our freezer at -30 degrees for at least 100 years”.

The approach of previous UDRP panels where a respondent has registered the well-known mark of a complainant is reflected in, by way of example, the finding of the UDRP panel in ALSTOM v. Domain Investments LLC, WIPO Case No. D2008-0287; “[t]he Complainant’s trademark ALSTOM as appropriated by the Respondent has a strong reputation and is recognised internationally. [...] Neither the Complainant nor its trademark has any conceivable connection with Respondent’s name or activities. The registration of a well-known trademark of which the Respondent must reasonably have been aware constitutes bad faith”. Similarly, as the UDRP panel found in Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, “[…] the registration of a domain name with the knowledge of the Complainant’s trademark registration amounts to bad faith”. The Panel similarly finds that the disputed domain names were registered in bad faith.

The Respondent’s claim that it will keep the disputed domain names in the Happy Family freezer for 100 years is most appropriately considered by reference to the doctrine of passive holding which considers whether merely holding a domain name, without active use, might amount to bad faith use. Whilst previous UDRP panels consider the totality of the circumstances in any given case, applicable considerations, first expressed in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”. Applying these criteria to the circumstances of this case, at least three of them are fulfilled, namely; (i) the Complainant’s VIVENDI trade mark is inherently distinctive; (ii) whilst the Respondent has responded to the Complaint, it has not provided credible evidence of any contemplated good faith use of the disputed domain names; (iii) it is implausible to conceive of any good faith use to which the disputed domain names might be put by the Respondent. Finally, the Panel takes into account the inherent lack of plausibility of the Respondent’s claims, which point to it not having provided a truthful explanation for its registration of the disputed domain names.

The Panel accordingly finds that the disputed domain names were both registered and used in bad faith.

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 names, <happyplanetvivendi.com>, <happyplanetvivendi.online> and <happyplanetvivendi.site> be transferred to the Complainant.

Antony Gold
Sole Panelist
Date: May 11, 2021