Valeo v Benjamin Abdulnour, Valeo Company

WIPO Case No. D2022-0161

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Valeo v. Benjamin Abdulnour, Valeo Company

Case No. D2022-0161

1. The Parties

The Complainant is Valeo, France, represented by Tmark Conseils, France.

The Respondent is Benjamin Abdulnour, Valeo Company, United States of America.

2. The Domain Name and Registrar

The disputed domain name <us-valeo.com> is registered with Hostinger, UAB (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2022. connection with the disputed domain name. On January 19, 2022, 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 for the disputed domain name.

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, and the proceedings commenced on January 26, 2022. In accordance with the Rules, paragraph
5, the due date for Response was February 15, 2022. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on February 17, 2022.

The Center appointed Tobias Malte Müller as the sole panelist in this matter on March 2, 2022. 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.

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4. Factual Background

It results from the Complainant’s undisputed allegations that it is an automotive supplier registered in the commercial register of Paris since February 25, 1955. As a technology company, it designs innovative solutions for smart mobility, with a particular focus on intuitive driving and reducing CO₂ emissions. It also provides and distributes spare parts for automakers and independent aftermarket operators and is a key player in its market.

The Complainant uses the domain name <valeo.com> (created on March 25, 1997) in order to promote its services dedicated to the automotive industry.

Furthermore, the Complainant is the registered owner of several trademarks worldwide consisting of or
containing the term VALEO, e.g., European Union trademark registration no. 000187542, VALEO, registered
on October 20, 1999, registered for goods and services in classes 6, 7, 9, 11, 12, 16, 17, 18, 25, 35, 38.

This mark has been duly renewed and is in force.

It results from the information disclosed by the Registrar that the disputed domain name was registered on
June 30, 2021.

Furthermore, the undisputed evidence provided by the Complainant proves that the disputed domain name resolved to a parking page comprising pay-per-click (PPC) links, which are clearly related to the automotive sector in which the Complainant operates. Currently the disputed domain name does not resolve to an

active website anymore.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its earlier trademarks, since it is composed of the reproduction of the trademark VALEO in Latin characters, preceded by the country indication for United States of America (i.e. US) and with the generic Top-Level Domain (“gTLD”) “.com”. According to the Complainant, the geographical word element “US” does not eliminate the similarity between Complainant’s prior rights and the disputed domain name, since “US” is a fully descriptive geographical indication of the disputed domain name.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent is not commonly known under the disputed domain name, whereas the Complainant has long standing rights in the trademarks and domain names

which predate the registration of the disputed domain name. The Complainant contends that its trademarks VALEO are well-known worldwide. In addition, the Respondent, Mr. Benjamin Abdulnour, indicated “VALEO COMPANY” in the “registrant organization” category of the disputed domain name contact details with the

exact address of the Complainant’s establishment in Seymour, US. However, the Complainant states that that the disputed domain name is redirecting toward a parking site. Finally, the Complainant has never licensed or otherwise authorized in any way the Respondent to use valeo as a domain name or as element of a domain name or for any other kind of purpose.
no person named Mr. Benjamin Abdulnour is working in his offices. In the Complainant’s view, the

Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. In fact, in view of the Complainant, taking into consideration the attractiveness of the name “VALEO” in relation with the automotive field of activity, the protection and constant use by the Complainant of the name “VALEO” as a company name, trademarks, service marks, domain names worldwide and having in mind the Complainant’s history, there is no chance of it having been registered by the Respondent by co-incidence. In addition, according to the Complainant, the Respondent registered the domain name under a false identity,

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since Mr. Benjamin Abdulnour does not work for Valeo. Therefore, the Respondent provided false
information for the headings “Registrant organization” and “Registration address” of the disputed domain
name’s registrant contact details. Furthermore, the disputed domain name directs to a website showing a
parking page containing commercial PPC links to third party websites related to the automotive business and
thus, there is a high risk that the public shall be redirected to third parties’ websites and products rather than

the Complainant’s genuine products.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a 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”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that the disputed domain name be transferred or cancelled:

(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.

The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

It results from the evidence provided, that the Complainant is the registered owner of various trademark registrations in several jurisdictions consisting of or containing the term VALEO. Reference is made in particular to European Union trademark registration no. 000187542, VALEO, registered on October 20, 1999

registered for goods and services in classes 6, 7, 9, 11, 12, 16, 17, 18, 25, 35, 38. This mark has been duly
renewed and is in force.

Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark for purposes of the first element, where the relevant trademark is recognizable within the disputed domain name. Under such circumstances, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element (cf. section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). This Panel shares the same view and notes that the disputed domain name contains the Complainant’s registered trademark VALEO in full and without any other distinctive element, the additional element “us”, followed by a hyphen does not prevent a finding of confusing similarity. Consequently, this Panel is of the opinion that the trademark VALEO remains recognizable within the disputed domain name.

Finally, the gTLD “.com” of the disputed domain name may be disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11.1).

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In the light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the

Respondent lacks rights or legitimate interests in the disputed domain name.

According to the Complaint, which has remained unchallenged, the Complainant has no relationship in any way with the Respondent and did, in particular, not authorize the Respondent’s use of the trademark VALEO, e.g., by registering the disputed domain name comprising the said trademark entirely.

Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy.

Moreover, the nature of the disputed domain name carries a risk of implied affiliation, since the disputed domain name contains the Complainant’s trademark VALEO preceded by the letters “us-”, which are the geographical abbreviation for the United States of America. Geographic terms are seen as tending to

suggest sponsorship or endorsement by the trademark owner, see WIPO Overview 3.0, section 2.5.1.

It is acknowledged that once the Panel finds a prima facie case is made by a complainant, the burden of production under the second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds, in the circumstances of this case, that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel finds that the Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain a product or service on its website or location (paragraph 4(b)(iv) of the Policy).

name has been registered and is being used in bad faith. The Policy indicates that certain circumstances
specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the
disputed domain name’s registration and use in bad faith. One of these circumstances is that the
Respondent by using the disputed domain name, has intentionally attempted to attract, for commercial gain,
Internet users to its website or other online location, by creating a likelihood of confusion with the
It is the view of this Panel that these circumstances are met in the case at hand.

Based on the evidence submitted by the Complainant, this Panel has no doubt that the Respondent positively knew or should have known that the disputed domain name consisted of the Complainant’s trademark when it registered the disputed domain name. This is underlined by the fact that the disputed domain name is constituted by the Complainant’s registered trademark VALEO preceded by the letters “us-” as geographical abbreviation for the United States of America. In addition, it results from the information disclosed by the Registrar that the disputed domain name was registered indicating a “VALEO COMPANY”

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as the registrant’s alleged organization. In addition, the Respondent used the address of the Complainant’s
establishment in Seymour, US, as contact details while, according to the Complainant’s undisputed
allegations, no person with the Respondent’s name works in the Complainant’s offices. Registration of the
disputed domain name in awareness of the VALEO mark and in the absence of rights or legitimate interests

in this case amounts to registration in bad faith.

These findings are confirmed by the Complainant’s documented allegations following which the disputed
domain name resolved to a parking page comprising PPC links, which are related to the automotive sector in
which the Complainant operates. In this regard, the Panel notes that the current passive holding does not
preclude a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case
No. D2000-0003).

Finally, the further circumstances surrounding the disputed domain name’s registration and use confirm the findings that the Respondent has registered and is using the disputed domain name in bad faith:

(1) the Respondent failed to submit a formal response or to provide any evidence of actual or contemplated
good-faith use;
(2) the Respondent used false contact details indicating the Complainant; and
(3) the implausibility of any good faith use to which the disputed domain name may be put (see WIPO
Overview 3.0 at section 3.3).

In the light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) 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, <us-valeo.com> be transferred to the Complainant.

/Tobias Malte Müller/
Tobias Malte Müller
Sole Panelist
Date: March 29, 2022