WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Louis Dreyfus Trademarks B.V. v. Domain Administrator, See PrivacyGuardian.org / Geren Wenzhen Gu Mangu Geren
Case No. D2019-0247
1. The Parties
The Complainant is Louis Dreyfus Trademarks B.V. of Amsterdam, the Netherlands, represented by INLEX MEA, Mauritius.
The Respondent is Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States of America / Geren Wenzhen Gu Mangu Geren of Thailand.
2. The Domain Name and Registrar
The disputed domain name <louisdreyfuscom.com> (the “Disputed Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 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 January 31, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 4, 2019, 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 February 12, 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 6, 2019.
The Center appointed Nicholas Weston as the sole panelist in this matter on March 14, 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 operates a global agricultural commodity trading business founded in 1851 with more than 22,000 employees and revenue exceeding EUR 40 billion in 2017. The Complainant holds registrations for the trademark LOUIS DREYFUS in numerous jurisdictions which it uses to designate a range of goods and services from agricultural products to transportation and financial services. French figurative trademark registration No. 98735137 LDC LOUIS DREYFUS, for example, shows an application and priority date of June 3, 1998, and is registered in classes 2, 4, 5, 7, 16, 24, and 26. International figurative trademark registration No. 957331 LOUIS DREYFUS, was registered on January 28, 2008.
The Complainant owns more than 100 domain names comprising or containing the LOUIS DREYFUS trademark.
The Respondent registered the Disputed Domain Name <louisdreyfuscom.com> on January 20, 2019. The Disputed Domain Name resolves to a website that contains pornography.
5. Parties’ Contentions
The Complainant cites its numerous trademark registrations including International Registration No. 957331 approved in 2008 and numerous other registrations around the world for the mark LOUIS DREYFUS as evidence of ownership.
The Complainant submits that the mark LOUIS DREYFUS is a family name and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the LOUIS DREYFUS trademark and that the similarity is not removed by the additional letters “com” or the addition of the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it resolves to a website that contains pornography, and contends that the Respondent, having no connection with the Louis Dreyfus family, has no rights or legitimate interests in the Disputed Domain Name.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules, having regard to the scale of the Complainant’s business and long standing prior use of the Complainant’s trademarks. The Complainant submits that “the visitor (to the Respondent’s website) will certainly expect this website to be associated with the Complainant’s business. As a result, the Disputed Domain Name is deceptive as it redirects the Complainant’s customers to a wrong and offensive website, which may in the end turn into a loss of business to the Complainant”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark LOUIS DREYFUS in numerous jurisdictions including Thailand, the Respondent’s location. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see, Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the LOUIS DREYFUS trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s trademark LOUIS DREYFUS; (b) followed by the letters “com”; (c) followed by the gTLD “.com”.
It is well-established that the gTLD is a technical part of a domain name and may be disregarded for the purposes of finding confusing similarity between the Disputed Domain Name and the Complainant’s trademark (see, Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “louisdreyfuscom”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the use of a different gTLD (see: Wal-Mart Stores, Inc. v. WalMart Careers, Inc., WIPO Case No. D2012-0285; Statoil ASA v. Weiwei Qiu / PrivacyProtect.org, WIPO Case No. D2011-1752; Statoil ASA v. Domain Admin/ Management SO Hkg, WIPO Case No. D2012-2392).
Numerous previous UDRP panels have found that confusing similarity can result from the practice of “typosquatting”, which arises where the domain name is a slight alphabetical variation from a famous mark (see, LouisVuitton v. Net-Promotion, WIPO Case No. D2000-0430; Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314; Playboy Enterprises v. Movie Name Company, WIPO Case No. D2001-1201) or a deliberate misspelling of a trademark (see, Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc. WIPO Case No. D2000-0587).
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or a legitimate interest in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that once the Complainant puts forward a prima facie case that the Respondent lacks rights or legitimate interests, the burden of production shifts to the Respondent to rebut that prima facie case (see, World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because there is no evidence of the Respondent’s use, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods and services, noting that:
“1. To the best of Complainant’s knowledge, the Respondent is not a member of Louis Dreyfus family and thus cannot avail oneself of the exception to trademark infringement that is the use of one’s own name;
2. To the best of Complainant’s knowledge, the Respondent has never been operating any business activity under the name “LOUIS DREYFUS”, which otherwise, under certain circumstances, could justify a legitimate interest to the use of this name;
3. To the Complainant’s best knowledge, the Respondent has no registered rights to the name “Louis Dreyfus”;
4. The Respondent has not been authorized by the Complainant to use the [trademark] LOUIS DREYFUS in course of their activity and there exists no business relationship, and no link of any nature, between the Complainant and the Respondent”.
This Panel accepts that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name and, in the absence of a reply by the Respondent, the Panel finds for the Complainant on paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The third element of the Policy requires the Complainant to also demonstrate that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.
The Panel finds that the evidence in the case shows the Respondent has registered and used the Disputed Domain Name in bad faith.
On the issue of registration, it would be inconceivable that the Respondent might have registered the Disputed Domain Name incorporating the trademark LOUIS DREYFUS mark without knowing of it (see, WIPO Overview 3.0, section 3.2.2; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Louis Dreyfus Trademarks B.V. v. David Rosenberg, Louis Dreyfus Commodities WIPO Case No. D2014-2253 (“The Complainant provides ample evidence that the disputed domain name was registered with the sole purpose of having users believe that they were connecting to a website affiliated to the Complainant”).
The diversion of Internet users is also a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see, L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; and Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814).
Further, a gap of ten years between registration of a complainant’s trademarks and a respondent’s registration of the disputed domain name (containing the trademark) could constitute in certain circumstances additional evidence of bad faith (see, Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Name at least ten years after the Complainant first established International trademark rights in the LOUIS DREYFUS mark and in various jurisdictions, significantly more than that period.
On the issue of use, the evidence that the Disputed Domain Name resolves to an unauthorized pornographic website which is evidence of bad faith use in accordance with paragraph 4(b)(i) of the Policy.
Moreover, the Panel has considered whether it should draw an adverse inference from the Respondent’s use of a privacy shield. In the circumstances it seems reasonable to infer that the main purpose the Respondent has used a privacy service is to cause the Complainant difficulty in identifying other domain names registered by the same Respondent (see, Medco Health Solutions, Inc. v. Whois Privacy Protection Service, Inc., WIPO Case No. D2004-0453; Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei, WIPO Case No. D2005-0642; CCM IP S.A. v. Traverito Traverito, WIPO Case No. D2007-0542; Ustream.TV, Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-0598; Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647).
Further, the Panel notes an email from the courier service used by the Center to serve the materials in this case on the Respondent sent on February 13, 2019, indicating the Respondent provided wrong/incomplete contact information when registering the Disputed Domain Name. This Panel therefore infers that the Respondent has used a privacy service in combination with provision of incomplete contact information to conceal the identity of the “true” or “underlying” registrant and accepts this as further evidence of bad faith (See WIPO Overview 3.0, section 3.2).
In this case, the Complainant has a well-known trademark, the Disputed Domain Name resolves to a pornographic website and the Respondent hid behind a privacy service supplied with wrong/incomplete contact information. This Panel regards such conduct as evidence of bad faith use in the absence of a response.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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, <louisdreyfuscom.com> be transferred to the Complainant.
Date: March 28, 2019