WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Anonyme des Galeries Lafayette v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico
Case No. D2019-0841
1. The Parties
Case No. D2019-0841
1. The Parties
1. The Parties
The Complainant is Société Anonyme des Galeries Lafayette of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (the “United States”) / Carolina Rodrigues, Fundacion Comercio Electronico of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <galetieslafayette.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2019. On April 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 16, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 17, 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 April 22, 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 April 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 13, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 14, 2019.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on May 16, 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 runs a chain of department stores. The Complainant receives more than 1 million visitors every day in its 280 stores and e-commerce websites.
The Complainant is one of France’s leading private employers with nearly 16,000 employees. It has five stores outside France (Berlin, Dubai, Istanbul, Jakarta and Beijing). It will open in Doha, Luxembourg, Kuwait and Shanghai.
The Complainant owns numerous trademark registrations, such as European Union trademark GALERIES LAFAYETTE, n° 003798147 registered on May 19, 2006, European Union trademark GALERIES LAFAYETTE, n° 012602652 registered on August 27, 2014 and International trademark GALERIES LAFAYETTE, n° 553543 registered on April 12, 1990, duly renewed. In addition, the Complainant has registered domain names in operation such as <galerieslafayette.com> and <galerieslafayette.fr>.
Pursuant to the Registrar, the Domain Name was registered on January 31, 2019. At the time of drafting the decision, the Domain Name redirected to the web page <https://btczeit.com> which appears to be connected with Bitcoin investment software.
5. Parties’ Contentions
According to the Complainant, the Domain Name is confusingly similar to the Complainant’s trademark, as the Domain Name contains a single modification in that the letter “r” in the term “galeries” is substituted with the letter “t”. This substitution does not modify the overall impression.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant has not authorized the Respondent to use and register its trademark, or to seek registration of any domain name incorporating said mark. The registration of the Complainant’s trademark preceded the registration of the Domain Name for years. The Domain Name is similar to the well-known trademark. The Respondent’s registration and use of the Domain Name is typosquatting, and this does not constitute a legitimate use. The Respondent has not replied to the Complainant’s cease and desist letter.
The Complainant argues that it is implausible and unlikely that the Respondent was unaware of the Complainant when he registered the Domain Name. The Complainant and its trademark are widely known throughout the world. Moreover, the imitating of the Complainant’s trademark is additional proof that the Respondent had knowledge of the Complainant when the Respondent registered the Domain Name. The Respondent has not provided any evidence of use in good faith of the Domain Name, and the Respondent has never replied to the Complainant’s cease-and-desist letter. The Respondent appears to be a cyber-squatter as the Respondent has been ordered to transfer in more than 15 UDRP proceedings. The domain names reproduced trademarks like IBM, CALVIN KLEIN, FORD, MARLBORO and SANOFI.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established rights in the trademark GALERIES LAFAYETTE.
The test for confusingly similarity involves the comparison between the trademark and the Domain Name. In this case the Domain Name is identical to the Complainant’s trademark save the letter “r” substituted with the “t”. This does not reduce the risk of confusing similarity. For the purposes of assessing confusing similarity under paragraph 4(a)(i) of the Policy, one may ignore the generic Top-Level Domain “.com”.
The Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has not authorized the Respondent to use its trademark or register the Domain Name. The Respondent has not made any use of, or demonstrable preparations to use, the Domain Name or a corresponding name in connection with a bona fide offering of goods or services. The Respondent is not making any legitimate noncommercial or fair use of the Domain Name. The Respondent’s registration and use of the Domain Name looks indeed like a classic case of typosquatting. Typosquatting is not legitimate use of a trademark.
The Panel finds that the Complainant has made out a prima facie case. The Respondent has not responded and the Panel is unable to conceive how the Respondent could have any rights or legitimate interests in respect of the Domain Name.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent was aware of the Complainant and its trademark when the Respondent registered the Domain Name. The Complainant has used its trademark decades before the registration of the Domain Name. The trademark is well-known. The registration of the Domain Name is a clear case of typosquatting. The Respondent has been ordered to transfer domain names in more than 15 UDRP proceedings, domain names that reproduced trademarks such as IBM, CALVIN KLEIN, FORD, MARLBORO and SANOFI.
The Panel concludes that the Domain Name was registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <galetieslafayette.com> be transferred to the Complainant.
Date: May 18, 2019