WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société Anonyme des Galeries Lafayette v. Domain Dotter, Elia Tan

Case No. D2013-2233

1. The Parties

The Complainant is Société Anonyme des Galeries Lafayette of Paris, France, represented by Dreyfus & associés, France.

The Respondent is Domain Dotter, Elia Tan of Montreal, Quebec, Canada.

2. The Domain Name and Registrar

The disputed domain name <galrieslafayette.com> is registered with Wild West Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2013. On December 23, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 2013, 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.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 29, 2014.

The Center appointed Stefan Abel as the sole panelist in this matter on February 4, 2014. 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 French company running approximately 60 fashion stores in France and abroad employing over 10.000 employees. In particular, the Complainant has been running for decades its flagship store in Paris offering one of the leading collections of international fashion items displayed on eight floors in three separate buildings covering a total of fourteen thousand square meters offering some 3.000 brands. The Complainant’s fashion store in Paris has a long tradition of hosting prestigious events introducing to the public artists and movements such as Giacometti, Polliakoff, Dubuffet and Niki de Saint Phalle. The Complainant’s fashion store building at Boulevard Haussmann in Paris attracts since many years a large number of tourists coming from all over the world to visit Paris.

The Complainant is the owner of a number of trademarks containing the term GalerieS Lafayette, in particular the international word mark Galeries Lafayette number 146213 registered in April 1950 in classes 1 - 34 Nice convention and Canadian trademark (word) Galeries Lafayette, registered in November 1990 for a large number of products in class 1. The Complainant further owns the website “www.galerieslafayette.com” hosting a large number of the Complainant’s selection of goods. The Complainant has registered the domain name <galerieslafayette.com> on August 19, 1997.

The Respondent has registered the disputed domain name <galrieslafayette.com> on June 20, 2009. The Respondent’s website at the disputed domain name contains a number of links to several commercial websites including websites of the Complainant’s competitors marketing and promoting fashion goods.

5. Parties’ Contentions

A. Complainant

In summary, the Complainant’s contentions are as follows:

The disputed domain name is identical or at least confusingly similar to the Complainant’s trademark Galeries Lafayette. The disputed domain name reproduces the trademark GALERIES LAFAYETTE with the deletion of the letter “e” in the term “galeries”. This deleted letter does not significantly affect the appearance or pronunciation of the domain name but represents just a “typosquatting” matter creating confusion with the Complainant’s trademark.

The Respondent has no right or legitimate interest in the disputed domain name. The Respondent is in no way affiliated with the Complainant, nor has the Complainant authorized or licensed the Respondent to use its trademark as a domain name or otherwise. The registration of the GALERIES LAFAYETTE trademark preceded the registration of the disputed domain name for many years, so that, in view of the similarity of the disputed domain name with the Complainant’s trademark, the Respondent cannot reasonably pretend he was intending to develop a legitimate activity through the disputed domain name. “Typosquatting” does not constitute a legitimate use of a trademark. In addition, the disputed domain name resolves to a parking page displaying commercial links referring inter alia to products and services in the field of fashion. The disputed domain name directs Internet users to a parking page with pay-per-click links which are likely to generate revenues, which is not a legitimate noncommercial or fair use.

The Respondent registered the disputed domain name in bad faith. In light of the reputation of the Complainant’s trademark, the Respondent’s quasi reproduction of the GALERIES LAFAYETTE trademark proves that the Respondent was aware of the existence of the Complainant’s trademark. “Typosquatting” is in itself evidence of bad faith. The disputed domain name is also being used in bad faith since it directs Internet users to a web page displaying pay-per-click links which are likely to generate revenues. It is likely that the Respondent’s primary motive in registering and using the disputed domain name was to capitalize on or otherwise take advantage of the Complainant’s trademark rights through the creation of initial interest of confusion.

B. Respondent

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

6. Discussion and Findings

The Policy provides for transfer of the disputed domain name if the Complainant establishes each of the following elements set out in paragraph 4(a)(i) to (iii) of the Policy:

- the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent’s has no rights or legitimate interests in respect of the disputed domain name; and

- the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademarks GALERIES LAFAYETTE.

The disputed domain name consists of the two word elements of the Complainant’s trademarks in the same order. The missing “e” in the first element of the Complainant’s trademarks does not change the same phonetical impression when pronounced. Also visually, the disputed domain name is confusingly similar to the Complainant’s trademark since the disputed domain name is identical with 16 out of 17 letters of the Complainant’s trademark and its order. The missing space between the first element and the second element trademark does not modify the overall impression of the disputed domain name which is at least highly similar to the Complainant’s trademarks. For trademarks, when used as a domain name, consisting of several word elements usually are either written together as one word or with a hyphen since blank spaces cannot be used in domain names.

The generic Top-Level Domain (“gTLD”) “.com” does not affect this finding.

The first element of the UDRP is therefore satisfied.

B. Rights or Legitimate Interests

There is no indication that the Respondent is licensed or otherwise authorized by the Complainant to use its registered trademark or to register the disputed domain name.

The disputed domain name does not have any apparent generic or descriptive meaning and the term “galrieslafayette” is not a designation for a person, company, services or products on the website of the disputed domain name.

By producing evidence on these circumstances, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of submitting evidence therefore shifts to the Respondent. The Respondent must then by concrete evidence demonstrate its rights or legitimate interests in the disputed domain name in order to refute the prima facie case. The Respondent has made no such showing.

The Panel finds that the Respondent’s default in refuting the prima facie case made by the Complainant is sufficient to establish this element of the Policy. It is an often impossible task for the Complainant to prove a negative that is primarily within the knowledge of the Respondent such as lack of rights or legitimate interests in the disputed domain name.

Producing evidence that the Respondent prima facie has no rights or legitimate interests in the disputed domain name must therefore be regarded as sufficient to establish the requirement of paragraph 4(a)(ii) of the Policy if the Respondent fails to rebut the prima facie case. This finding is consistent with the consensus view in previous UDRP decisions (see e.g. Belupo d.d. v. WACHEM d.o.o. , WIPO Case No. D2004-0110; Doserno Trading Ltd and Red Diamond Holdings Sarl v. Bruce Chang, WIPO Case No. D2012-0263).

The second element of the UDRP is therefore satisfied.

C. Registered and Used in Bad Faith

The Panel finds that the Complainant has established this element in accordance with paragraph 4(b)(iv) of the Policy for the following reasons:

The Panel finds that, by using the disputed domain name for a set of links relating to products and services in the field of fashion, including shoes and clothes, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s GALERIES LAFAYETTE trademarks as to source, sponsorship and affiliation of the website. The disputed domain name represents a misspelled version of the Complainant’s trademarks sounding and spelled nearly identical to the Complainant’s trademarks. In addition to that, the Respondent’s website provides links to other websites advertising fashion products. Internet users are therefore likely to get the idea that the Respondent’s site at the disputed domain name is an official site of the Complainant sponsored by the Complainant or affiliated with the Complainant. Such likelihood of confusion will attract more customers to the site of the disputed domain name which typically results in commercial gain as the Respondent’s site provides links to numerous commercial websites.

The Panel finds that the Respondent acted intentionally. It is not conceivable to the Panel that the Respondent could have registered the disputed domain name without having the Complainant and its trademarks in mind. The Respondent’s intention to use the disputed domain name as a reference to the Complainant and its trademarks is obvious to the Panel considering that the disputed domain name is nearly identical to the Complainant’s non descriptive trademarks, relates to products covered by the Complainant’s trademarks and taking into account that no rights or legitimate interests in using the disputed domain name are apparent, that the Complainant’s trademarks have been registered years before the registration of the disputed domain name, in particular in Canada, and intensively used in the Internet years before the registration of the disputed domain name.

The third element of the UDRP is therefore satisfied.

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 <galrieslafayette.com> be transferred to the Complainant.

Stefan Abel
Sole Panelist
Date: February 18, 2014