WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société Anonyme des Galeries Lafayette v. Contact Privacy Inc. Customer 0154762002 / Athena Company, galerieslafayette-outlet / Athena Comp-Un, Galeries Lafayette Outlet / Passaro First

Case No. D2019-1736

1. The Parties

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

The Respondent is Contact Privacy Inc. Customer 0154762002, Canada / Athena Company, galerieslafayette-outlet, France / Athena Comp-Un, Galeries Lafayette Outlet, France / Passaro First, France.

2. The Domain Names and Registrar

The disputed domain names <galerieslafayettefrance.com>, <galerieslafayette-loutlet.com>, <galerieslafayette-outlet.com>, <outlet-galerieslafayette.com>, and <outletgalerieslafayette.com> are registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2019. On July 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 22, 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 July 24, 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 July 29, 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 July 30, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 19, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 20, 2019.

The Center appointed Jane Seager as the sole panelist in this matter on August 30, 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 an international fashion retailer headquartered in Paris, France. In addition to its various locations in France, the Complainant is present in China, Germany, Indonesia, Turkey, the United Arab Emirates and Qatar.

For use in connection with its retail services, the Complainant owns various trademark registrations for GALERIES LAFAYETTE, including the following:

European Union Trade Mark Registration No. 003798147, GALERIES LAFAYETTE, registered on May 19, 2006; and

International Trademark Registration No. 553543, GALERIES LAFAYETTE, registered on April 12, 1990.

The Complainant also owns the domain names <galerieslafayette.com> and <galerieslafayette.fr>, from which it operates online retail websites.

The disputed domain names were registered using a privacy service as follows:

Prior to the filing of the Complaint, all of the disputed domain names, with the exception of <galerieslafatette-loutlet.com>, resolved to websites purporting to offer items of clothing and footwear for sale at heavily discounted prices (the “Respondent’s websites”). The Respondent’s websites included the Complainant’s logo in the top left corner and gave the impression of being official online outlet stores of the Complainant. The disputed domain name <galerieslafayette-loutlet.com> appears always to have resolved to a placeholder page of the hosting provider lacking any substantive content. The content at the Respondent’s websites was since taken down by the hosting provider, at the request of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant notes that the disputed domain names are registered to nominally distinct registrants. Nevertheless, the Complainant asserts that it is justified in bringing a consolidated Complaint against multiple Respondents on the basis that: (1) the contact information of the underlying registrants as displayed in the Registrar’s WhoIs records for the disputed domain names is the same or highly similar; (2) all of the disputed domain names were registered with the same registrar making use of the same privacy service; (3) the organization name of the registrant for all of the disputed domain names seeks to impersonate the Complainant; (4) all of the disputed domain names follow a similar naming pattern targeting the Complainant’s trademark; (5) four out of five of the disputed domain names resolved to similar websites purporting to be outlet stores of the Complainant; and (6) all of the disputed domain names are hosted with the same hosting provider.

The Complainant asserts that the disputed domain names are confusingly similar to its GALERIES LAFAYETTE trademark. The disputed domain names reproduce the Complainant’s trademark in its entirety with the addition of the terms “outlet” or “france”. The Complainant asserts that the addition of such terms reinforces the confusing similarity between the disputed domain names and the Complainant’s trademarks, as it may lead Internet users to believe that the disputed domain names are linked to the Complainant’s official outlet stores, or refer to the country in which the Complainant’s headquarters are located.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain names. According to the Complainant, the Respondent is not affiliated with the Complainant in any way, nor has it been authorized to register or use the Complainant’s trademark, in a domain name or otherwise. The Complainant asserts that the Respondent is not commonly known by the disputed domain names, or by the name “Galeries Lafayette”. The Complainant further submits that the Respondent has not used the disputed domain names in connection with any bona fide offering of goods or services. Rather, the Complainant submits that the disputed domain names <galerieslafayettefrance.com>, <galerieslafayette-outlet.com>, <outlet-galerieslafayette.com> and <outletgalerieslafayette.com> have been used to resolve to websites that purport to be official online outlet stores of the Complainant, offering discounts on luxury goods that are sold by the Complainant. The Complainant submits that the Respondent’s websites are fraudulent in nature, and are designed to induce Internet users into disclosing their personal details, including their banking information. The Complainant further argues that in light of its goodwill and reputation worldwide, noting the use to which the disputed domain names <galerieslafayettefrance.com>, <galerieslafayette-outlet.com>, <outlet-galerieslafayette.com> and <outletgalerieslafayette.com> have been put, there is no plausible legitimate use of the disputed domain names by the Respondent that would not take unfair advantage of the Complainant’s rights.

The Complainant submits that the disputed domain names were registered and are being used in bad faith. The Complainant claims that it is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain names. The Complainant states that it is well known around the world, and that its GALERIES LAFAYETTE trademarks significantly predate the registration of the disputed domain names. Further, the fact that the disputed domain names all reproduce the Complainant’s trademark in its entirety and the use of the disputed domain names to resolve to fake Galeries Lafayette websites confirm that the Respondent was aware of the Complainant and its trademark. The Complainant submits that the Respondent registered the disputed domain names deliberately to cause confusion amongst Internet users and to take unfair advantage of the Complainant’s trademark, constituting bad faith registration of the disputed domain names. Noting that the disputed domain names have been used in connection with fake Galeries Lafayette websites, as described above, the Complainant asserts that the Respondent is engaged in a fraudulent scheme designed to steal personal and banking information from clients of the Complainant. Accordingly, the Complainant submits that the Respondent is using the disputed domain names intentionally to attract Internet users to its websites by creating a likelihood of confusion with the Complainant’s trademark, as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites, pursuant to paragraph 4(b)(iv) of the Policy.

The Complainant requests transfer of the disputed domain names.

B. Respondent

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

6. Discussion and Findings

6.1. Preliminary Matter: Consolidation of Respondents

The Complainant has submitted a request for consolidation of the Complaint against multiple nominally-distinct Respondents. In determining whether a complaint may be consolidated against multiple respondents, UDRP panels will look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.

In the present case, the Panel is satisfied that the Complainant has produced sufficient evidence of commonalities in the disputed domain names’ registration data, as well as the use to which the disputed domain names have been put, to demonstrate that the disputed domain names appear to be subject to common control. Accordingly, the Panel accepts the Complainant’s request for consolidation.

6.2. Substantive Matters

In order to prevail in its Complaint, the Complainant must prove, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy, namely:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in the disputed domain names; and

(iii) the disputed domain names were registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights in the GALERIES LAFAYETTE trademark as the owner of various registrations for the mark, the details of which are provided in the factual background section above.

All of the disputed domain names incorporate the Complainant’s GALERIES LAFAYETTE trademark in its entirety, simply omitting the space between the words “galeries” and “lafayette”, together with the addition of the element “outlet”, “loutlet” (which may be read as “l’outlet” in French or “the outlet” in English), or “france”. The Panel finds the Complainant’s GALERIES LAFAYETTE trademark to be readily recognizable in the disputed domain names, and further finds that the additional elements do not prevent a finding of confusing similarity; see WIPO Overview 3.0, sections 1.7 and 1.8. The Panel finds the disputed domain names to be confusingly similar to the Complainant’s GALERIES LAFAYETTE trademark.

The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has produced evidence indicating that the disputed domain names <galerieslafayettefrance.com>, <galerieslafayette-outlet.com>, <outlet-galerieslafayette.com> and <outletgalerieslafayette.com> previously resolved to websites that gave the impression of being online outlet stores of the Complainant, offering heavily discounted luxury goods sold by the Complainant. The Respondent’s websites displayed the Complainant’s stylized “Galeries Lafayette” logo in their top left corner, and included links to official social media accounts of the Complainant. There was nothing on the Respondent’s websites to indicate that they are not in fact operated by the Complainant. Rather, the Respondent’s websites appear to have been designed to create the misleading impression of being operated by the Complainant. The Panel further notes that goods on the Respondent’s websites were offered for sale at prices substantially below market value (as little as 10 percent of the retail price). While the Complainant has not produced any evidence of consumer complaints of having been defrauded by the Respondent, in the circumstances, the Panel is prepared to draw the inference that the Respondent’s websites were either created for the purpose of selling counterfeit goods, or in order to obtain personal and financial information of the Complainant’s customers, neither of which support a finding that the Respondent is using the disputed domain names in connection with any bona fide offering of goods or services; see WIPO Overview 3.0, section 2.13:

“[…] the use of a domain name for illegal activity (e.g., the sale of counterfeit goods […], phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”

There is no evidence in the present record to suggest that the Respondent is commonly known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy. In the circumstances, the Respondent cannot be said to be making a legitimate noncommercial or fair use of the disputed domain names, pursuant to paragraph 4(c)(iii) of the Policy. The Respondent has not come forward to dispute the Complainant’s arguments or evidence in this regard.

In light of the above, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Based on the evidence on record, the Panel accepts the Complainant’s submission that it has become a leader in the French fashion-retail sector, and has gained substantial reputation in various countries throughout the world. It is clear, from the contents of the Respondent’s websites at the disputed domain names <galerieslafayettefrance.com>, <galerieslafayette-outlet.com>, <outlet-galerieslafayette.com> and <outletgalerieslafayette.com> that the Respondent had the Complainant’s trademarks in mind when registering the disputed domain names, and did so in order to create a misleading impression of association between the disputed domain names, the contents of the Respondent’s websites, and the Complainant’s trademark. In the circumstances, the Panel is willing to infer that the disputed domain name <galerieslafayette-loutlet.com>, which appears always to have resolved to a webhosting placeholder page lacking substantive content, was registered for similar purposes. Further to the above, the registration of five domain names, each incorporating the Complainant’s trademark in its entirety, supports the conclusion that the Respondent has engaged in a pattern of abusive domain name registration targeting the Complainant’s trademark. The Panel therefore finds that the disputed domain names were registered in bad faith.

It is also clear that by using the disputed domain names <galerieslafayettefrance.com>, <galerieslafayette-outlet.com>, <outlet-galerieslafayette.com> and <outletgalerieslafayette.com>, as described in detail above, the Respondent has intentionally attempted to attract, for commercial gain (either resulting from the sale of counterfeit goods, or by illicitly obtaining personal financial information from the Complainant’s customers), Internet users to its websites, by creating a likelihood of confusion with the Complainant’s trademark, as to the source, sponsorship, affiliation or endorsement of its websites, amounting to bad faith use pursuant to paragraph 4(b)(iv) of the Policy. Furthermore, noting that the Complainant’s GALERIES LAFAYETTE trademark is distinctive and enjoys widespread international reputation, that the Respondent has not come forward to respond to the Complaint, and the use to which the disputed domain names <galerieslafayettefrance.com>, <galerieslafayette-outlet.com>, <outlet-galerieslafayette.com> and <outletgalerieslafayette.com> have been put, the Panel finds that the effective non-use of the disputed domain name <galerieslafayette-loutlet.com> does not prevent a finding of bad faith; see WIPO Overview 3.0, section 3.3.

For the foregoing reasons, the Panel finds that the disputed domain names were registered and have been used in bad faith, and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 <galerieslafayettefrance.com>, <galerieslafayette-loutlet.com>, <galerieslafayette-outlet.com>, <outlet-galerieslafayette.com> and <outletgalerieslafayette.com> be transferred to the Complainant.

Jane Seager
Sole Panelist
Date: September 16, 2019