WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Anonyme des Galeries Lafayette v. Uttara Group Of Company Limited
Case No. D2019-1475
1. The Parties
The Complainant is Société Anonyme des Galeries Lafayette, France, represented by Dreyfus & associés, France.
The Respondent is Uttara Group Of Company Limited, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <galerieslefayette.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2019. On June 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 26, 2019, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2019.
The Center appointed Ian Lowe as the sole panelist in this matter on August 19, 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 a famous French department store chain founded in 1894. It specializes in city-centre fashion retailing and operates some 280 stores including five outside France: in Germany, United Arab Emirates, Turkey, Indonesia, and China. The Complainant employs nearly 14,000 employees in France and its stores receive more than 1 million visitors per day. It operates a number of websites promoting and selling its products, including at “www.galerieslafayette.com” whose domain name was registered in 1997.
The Complainant is the proprietor of a number of registered trademarks in respect of GALARIES LAFAYETTE, including European Union trademark number 3798147 registered on May 19, 2006 and International trademark number 553543 registered on April 12, 1990 designating a number of territories including Switzerland, China, Italy, Morocco and Romania.
The Domain Name was registered on March 25, 2019, and does not resolve to an active webpage. However, a Network Tools search by the Complainant accessed through “mxtoolbox.com” indicates that a number of email servers have been configured on the Domain Name.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its GALERIES LAFAYETTE trademark (the “Mark”), that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith within the meaning of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
For this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has uncontested rights in the Mark, both by virtue of its several trademark registrations and as a result of the substantial goodwill and reputation acquired through its widespread use of the Mark over some 120 years. Ignoring the generic Top-Level Domain (“gTLD”) “.com”, the Domain Name differs from the Mark only by the misspelling of the word “lafayette” as “lefayette”, the replacement of a letter “a” with the letter “e”. In the view of the Panel, this difference does not detract from the confusing similarity between the Mark and the Domain Name. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Name. The Respondent has not used the Domain Name in connection with a bona fide offering of goods or services, but rather has apparently made no active use of it. Since the Domain Name is virtually identical to the Complainant’s famous name and the Mark, the Panel cannot conceive of any legitimate use to which the Respondent could put the Domain Name.
The Respondent has chosen not to respond to the Complaint or to take any steps to counter the prima facie case established by the Complainant. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
Although the Respondent has apparently made no active use of the Domain Name, section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) notes that, from the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) does not prevent a finding of bad faith under the doctrine of passive holding. It depends on the facts of the case, and relevant factors include: the degree of distinctiveness or reputation of the complainant’s mark; the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use; and the implausibility of any good faith use to which the domain name may be put.
In this case, as noted above, the Panel considers that it is almost impossible to conceive of any good faith use to which the Domain Name could be put and that all of the cited factors support a finding of bad faith registration and use. In addition, the Panel considers that the configuring of email servers on the Domain Name gives rise to a significant risk of phishing or of other improper activities on the part of the Respondent. The overwhelming inference is that the Respondent registered the Domain Name with a view to attracting Internet users by creating a likelihood of confusion with the Mark.
Accordingly, the Panel finds that the Domain Name has been 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 <galerieslefayette.com> be transferred to the Complainant.
Date: September 2, 2019