WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société Anonyme des Galeries Lafayette v. Perfect Privacy, LLC / Ylliass Aaziz, Yamin Ouarti

Case No. D2018-2758

1. The Parties

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

The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States of America / Ylliass Aazi of Caen, France, and Yamin Ouarti of Chevigny St Sauveur, France.

2. The Domain Names and Registrar

The disputed domain names <galerieslafayette-prive.com>, <galerieslafayetteprive.com>, <gallerieslafayette-prive.com> are registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2018. On November 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 30, 2019, 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 December 10, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On December 11, 2019, the Complainant requested the proceedings to be suspended. On the same day, the Center notified the Parties of the suspension of the proceedings for purposes of settlement discussions concerning the disputed domain names. The Complainant requested to reinstitute the proceedings and filed an amended Complaint on February 8, 2019.

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 February 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 5, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 8, 2019.

The Center appointed Alexandre Nappey as the sole panelist in this matter on March 15, 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 Société Anonyme des Galeries Lafayette, a French company specialised in city-center fashion retailing which is one of the French market leaders in departement stores and famous all around the world.

The Galeries Lafayette group receives more than 1 million visitors every day in its 280 stores and ecommerce websites and is one of France’s leading private employers with nearly 16,000 employees.

The Complainant is the owner of numerous GALERIES LAFAYETTE trademarks among which:

- the French trademark GALERIES LAFAYETTE, registered under No. 1502755 on December 9, 1988, duly renewed in classes 1 to 42;

- the European Union trademark GALERIES LAFAYETTE, registered under No. 003798147 on May 19, 2006, duly renewed in classes 3, 4, 5, 7, 8, 9, 11, 14, 15, 16, 18, 20, 21, 22, 23, 25, 26, 27, 28, 29, 30, 32, 33, 35, 36, 37, 38, 39, 41, 42, 43, 44 and 45;

- the European Union trademark GALERIES LAFAYETTE, registered under No. 012602652 on August 27, 2014 in classes 18, 25, 35 and 45, the (“Trademarks”).

The disputed domain names are:

<galerieslafayetteprive.com> registered by the Respondent Yamin Ouarti on November 22, 2018;

<galerieslafayette-prive.com> registered by the Respondent Ylliass Aaziz on November 23, 2018;

<gallerieslafayette-prive.com> registered by the Respondent Ylliass Aaziz on November 23, 2018.

According to the Complainant, the disputed domain name <galerieslafayetteprive.com> used to activate a French fake website “galerieslafayette” reproducing the Galeries Lafayette logo which was advertised from a fake “Galeries Lafayette Prive” Twitter account.

At the time the Complaint was filed, the disputed domain names pointed to hosting pages provided by WIX.

The Panel is requested to transfer the three disputed domain names to the Complainant.

5. Parties’ Contentions

A. Complainant

1. The Complainant first alleges that the disputed domain names <galerieslafayetteprive.com>, <galerieslafayette-prive.com> and <gallerieslafayette-prive.com> are similar to its earlier trademarks, to the point of creating confusion as they reproduce its earlier trademarks GALERIES LAFAYETTE in their entirety.

The Complainant alleges that the disputed domain names add the generic word “prive” which can be translated as “private” in English (for the three of them) and a hyphen (for two of them) which does not influence the similarity. On the contrary, the addition of the generic term “prive” can lead Internet users into believing that the disputed domain names are linked to Complainant and its activities linked to private sales.

2. Moreover, the Complainant alleges that the Respondents have no rights or legitimate interests in respect of the disputed domain names.

The Respondents are neither affiliated with the Complainant nor have been authorized by the Complainant to use and register its trademarks.

Respondents have no prior rights or legitimate interests in the disputed domain names.

Respondents are not commonly known by the disputed domain names or the name “Galeries Lafayette”.

Respondents cannot assert that, before any notice of the dispute, they were using, or had made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services.

The domain name <galerieslafayetteprive.com> was directing towards a phishing website which was a fake Galeries Lafayette website in French.

The Respondent Ylliass Aaziz, owner of the disputed domain names <galerieslafayette-prive.com> and <gallerieslafayette-prive.com> is a known cybersquatter.

3. Finally, the Complainant claims that the disputed domain names were registered and are being used in bad faith

- Registration in bad faith:

As GALERIES LAFAYETTE is a well-known trademark throughout the world, it is implausible that Respondents were unaware of Complainant when they registered the disputed domain names.

Moreover, the composition of the three domain names along with the prior imitation of Complainant’s official website through the domain name <galerieslafayetteprive.com> and the fraudulent Twitter account strongly suggest that Respondents had Complainant’s trademark and activities in mind when registering the disputed domain names.

Complainant’s trademark rights predate the registration date of the disputed domain names.

Finally, given Complainant’s goodwill and renown, and the nature of the disputed domain names, Respondents could simply not have chosen the disputed domain names for any reason other than to deliberately cause confusion amongst Internet users as to its source in order to take unfair advantage of Complainant’s goodwill and reputation, which clearly constitutes bad faith.

- Use in bad faith:

The disputed domain names <galerieslafayette-prive.com> and <gallerieslafayette-prive.com> resolve to a webhost default page and can thus be considered as inactive pages. It is not possible to know if these domain names were originally inactive or were deactivated at the same time as the disputed domain name <galerielafayetteprive.com> by the hosting company. Nevertheless, this state of inactivity does not mean that the domain names are used in good faith and passive holding of a disputed domain name can satisfy the requirements of paragraph 4(a)(iii) of the Policy.

By using this disputed domain name <galerieslafayetteprive.com>, the Respondent Yamin Ouarti has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites. Indeed, the disputed domain name <galerieslafayetteprive.com> was directing towards a phishing website: this website was a fake Galeries Lafayette website in French, offering special “Black Friday” discounts on luxury goods sold in retail by Galeries Lafayette (such as Gucci and Balenciaga). When purchasing products on the website, Internet users had to insert sensitive information like bank details.

The Complainant concludes that all aforementioned circumstances confirm that the disputed domain names are used in bad faith.

B. Respondent

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

6. Discussion and Findings

Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:

(i) The disputed domain names are 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 names; and

(iii) The disputed domain names have been registered and are being used in bad faith.

However, under paragraph 14(b) of the Rules, where a Party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.

Having considered the Parties’ contentions, the Policy, the Rules, the Supplemental Rules and applicable law, the Panel’s findings on each of the above-mentioned elements are the following.

A. Preliminary consideration: Multiple Respondents

The Complainant has requested the consolidation of multiple Respondents in respect of the disputed domain names.

Under paragraph 3(c) of the Rules: “The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”.

Under section 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), proceedings against more than one respondent may be consolidated where “(i) the domain names or corresponding websites to which are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.”

In this case:

- All three disputed domain names were registered using the same privacy service, namely Perfect

Privacy, LLC;

- All three disputed domain names are registered with the same registrar, Network Solutions;

- All three disputed domain names are or were hosted by Wix.com. The domain names <gallerieslafayette-prive.com> and <galerieslafayette-prive.com> are hosted on Wix DNS servers and the domain name <galerieslafayetteprive.com> was pointing to a fraudulent website using Wix services;

- All three disputed domain names were registered almost at the same time since the disputed domain name <galerieslafayetteprive.com> was registered on November 22, 2018 and the disputed domain names <gallerieslafayette-prive.com> and <galerieslafayette-prive.com> were registered on November 23, 2018;

- All three disputed domain names share an identical construction since they all associate the trademark GALERIES LAFAYETTE (one of them doubling the “L”) to the French term “prive” (i.e., “private” in English);

- Identities of the registrants seem to be fake

Based on the above, and taking into consideration that the Respondents did not rebut the Complainant’s assertions, the Panel is satisfied that the disputed domain names are subject to common control, and it would be fair and equitable to all parties to proceed with the consolidation.

See: Oculus VR, LLC v. Alexey Slobodchicov / Michail Molovzorov WIPO Case No. D2018-2175.

In light of the above, the Respondents will hereinafter be referred to as the “Respondent”.

B. Identical or Confusingly Similar

The Panel is satisfied that the Complainant owns trademark rights in GALERIES LAFAYETTE, which predate the registration of the disputed domain names.

The Panel finds that the disputed domain names <galerieslafayetteprive.com>, <galerieslafayette-prive.com> and <gallerieslafayette-prive.com> are confusingly similar to the registered GALERIES LAFAYETTE trademarks owned by the Complainant.

Indeed, the disputed domain names both incorporate the entirety of the Complainant’s GALERIES LAFAYETTE trademark.

The addition of the word “prive” (which can be translated as “private in English), a hyphen or the letter “l” does nothing to avoid confusing similarity between the disputed domain names and the earlier trademark “GALERIES LAFAYETTE”, since this word can lead Internet user to think that these domain names are related to private sales.

Therefore, the Panel finds that the disputed domain names are both confusingly similar to the Complainant’s mark under paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names under paragraph 4(a)(ii) of the Policy and then the burden of productions shifts to the Respondent to demonstrate its rights or legitimate interests.

The Complainant has stated that it has not authorized, licensed or consented to the Respondent’s use of its GALERIES LAFAYETTE trademarks.

The Complainant submitted printouts showing that the website at <galerieslafayetteprive.com> offered for sale products under the appearance of an official GALERIES LAFAYETTE website related to the “black Friday”, without Complainant’s authorization.

Such use does not give rise to rights or legitimate interests for the purposes of the Policy.

With respect to <galerieslafayette-prive.com> and <gallerieslafayette-prive.com> which are not used, based on the evidence provided by the Complainant and unchallenged by the Respondent, the Panel does not find any such rights or legitimate interests referred to in paragraph 4(c) of the Policy or otherwise.

In the light of what is stated above, the Panel finds that the Complainant has made an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.

As the Respondent has not provided otherwise, the Panel finds that the second element of the paragraph 4(a) of the Policy is fulfilled.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a UDRP panel to be evidence of bad faith registration and use of a domain name. It provides that:

“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or the Respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that he is engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website or location or of a product or service on his website or location.”

Since GALERIES LAFAYETTE is a distinctive and widely known trademark, which further predates by years the registration of the three disputed domain names, and given the Respondent’s use of the disputed domain name, it is evident that the Respondent was aware of the Complainant’s trademark at the time it registered the disputed domain names.

Here, the Panel finds that the Respondent must have had knowledge of the Complainant’s rights in the GALERIES LAFAYETTE trademark at the time of registration of the disputed domain names, since the use that the Respondent made of the website linked to the disputed domain name <galerieslafayetteprive.com> immediatly after registration clearly shows that the Respondent knew of the Complainant’s trademark.

In addition, it appears that the Respondent acquired two other domain names confusingly similar to the Complainant’s established mark, to which it has no rights whatsoever, and has set up one of the disputed domain names with a commercial website, giving the impression that it is somehow associated with the Complainant.

The Respondent has no apparent connection with the GALERIES LAFAYETTE trademarks. Moreover, the Panel cannot conceive any use that the Respondent could make of the disputed domain names that would not interfere with the Complainant’s trademark rights.

In the circumstances of the present case, the Panel finds that the Respondent’s passive holding of the disputed domain names <gallerieslafayette-prive.com> and <galerieslafayette-prive.com> also amounts to use of the disputed domain name in bad faith for the purpose of the Policy (see section 3.3 of the WIPO Overview 3.0.).

In the circumstances the Panel holds that the three disputed domain names <galerieslafayetteprive.com>, <galerieslafayette-prive.com> and <gallerieslafayette-prive.com> were registered and are being used in bad faith.

The Panel finds that the above constitutes registration and use in bad faith pursuant to the third requirement of 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 names <galerieslafayette-prive.com>, <galerieslafayetteprive.com> and<gallerieslafayette-prive.com> be transferred to the Complainant.

Alexandre Nappey
Sole Panelist
Date: April 8, 2019