WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Holding Le Duff (HLD) v. Vasile Mitrea

Case No. D2019-2183

1. The Parties

The Complainant is Holding Le Duff (HLD), France, represented by SCAN Avocats, France.

The Respondent is Vasile Mitrea, Romania.

2. The Domain Name and Registrar

The disputed domain name <leduf.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2019. On September 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 9, 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 September 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 9, 2019. The Respondent did not submit any response. The Center received an informal email from the previous domain holder and accordingly, the Center notified the Commencement of Panel Appointment Process on October 10, 2019.

The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on October 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, Holding Le Duff “HLD”, known under the name “the Group Le Duff”, was established in 1976. It is currently one of the leader in the international bakery café market with more than 1,658 restaurants and bakeries in 80 countries worldwide, including in Romania, through its various restaurant brands. The company serves 1 million customers daily and has a turnover of more than two billions euros.

The Complainant is the owner of the trademarks GROUPE LE DUFF and LE DUFF across various jurisdictions. These registrations include:

- European Union trademark GROUPE LE DUFF with registration No. 01146851, registered on June 20, 2000, in International classes 29, 30, 32, 35 and 42;
- French trademark GROUPE LE DUFF with registration No. 99786142, registered on April 13, 1999, in International classes 29, 30, 32, 41, 42, 43 and 45;
- European Union trademark LE DUFF with registration No. 010685816, registered on July 31, 2012, in International classes 29, 30, 31, 32, 35, 41, 43 and 44;
- European Union figurative trademark Le DUFF with registration No. 010685873, registered on July 31, 2012, in International classes 29, 30, 31, 32, 35, 41, 43 and 44;
- European Union semi-figurative trademark GROUPE LE DUFF with registration No. 016543894, registered on September 12, 2017, in International classes 16, 29, 30, 32, 35, 36, 38, 39, 41, 42 and 43.

The Complainant asserts that the trademarks GROUPE LE DUFF and LE DUFF are widely used worldwide and well-known to the public (see Holding Le Duff “HLD” v. Wang Lian Feng (王连凤), WIPO Case No. D2018-1002).

Additionally, the Complainant is also the registrant of various domain names containing the trademarks GROUPE LE DUFF and LE DUFF, including but not limited to <leduff.eu>, <leduff.net>, <le-duff.com> and <leduff.site>.

The disputed domain name <leduf.com> was registered on May 8, 2018, well after the Complainant secured rights to the trademarks. The disputed domain name currently does not resolve to an active webpage. At the time of filing the Complaint the disputed domain name appears to have been used to resolve to a pornographic website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant maintains that the disputed domain name is confusingly similar to the registered trademark in which the Complainant has rights. It represents that the disputed domain name reproduces the term LE DUFF in its entirety, except in respect of the deletion of the second “f”. According to the Complainant this simple deletion of the letter “f” does not significantly affect the appearance of the disputed domain name which is confusingly similar to the Complainant’s trademark. Relying on Sanofi v. Domain Manager, eWeb Development Group / ProxyTech Privacy Services Inc. / Privacy Manager, WIPO Case No. D2014-1185, the Complainant argues that the sole absence of the final letter composing the Complainant’s trademark is not sufficient to prevent it from being confusingly similar to prior trademarks.

Additionally, the Complainant contends that the generic Top-Level Domain (“gTLD”) “.com” does not affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar.

Relying on Hermes International v. Domain Administrator, MMGA Domains, LLC, WIPO Case No. D2014-1760, the Complainant finally claims that the incorporation of a well-known trademark into a domain name is sufficient ground for finding a likelihood of confusion.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence that the Respondent is currently, or has ever been, known under the name of the disputed domain name. Furthermore, the Respondent has never filed any trademark identical, or similar, to the Complainant’s trademarks.

Additionally, the Complainant does not know the Respondent and the Respondent is not in any way related to its business, nor does it carry out any activity for or have any business with the Complainant. The Complainant has also never given any authorization or permission whatsoever to the Respondent to register or to use the disputed domain name.

With respect to bad faith, the Complainant states the Respondent registered the disputed domain name in bad faith. The Complainant’s trademarks enjoy a strong reputation in France and abroad and were registered many years before the disputed domain name was registered. The Complainant has also significantly developed its activities in Romania in the last few years. It is therefore implausible that the Respondent was unaware of the Complainant’s trademarks when it registered the disputed domain name. A simple search on the Internet using Google or any other search engine of the word “LE DUFF” shows that the results are linked to the Complainant’s and its activities.

The Complainant further contends that the disputed domain name has been registered and is being used in bad faith for the following reason: the term “LE DUFF” is not a common word in French and English as the term “LE DUFF” refers to the HLD’s CEO’s surname.

Accordingly, the Complainant is convinced that the Respondent has registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor, for valuable consideration in excess of the Complainant’s costs, which is a proof of bad faith.

The Complainant further alleges that using the disputed domain name to redirect Internet users to a pornographic website for commercial gain is proof of bad faith (see Axa SA v. Zhong Jinzhang, WIPO Case No. D2018-1342).

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademarks.

First of all, this Panel finds that the Complainant has evidenced that it has registered trademark rights in GROUPE LE DUFF and LE DUFF.

Secondly, this Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.com” to the disputed domain name is viewed as a standard registration requirement and as such is to be disregarded.

Thirdly, the disputed domain name differs from the Complainant’s trademark LE DUFF merely by the deletion of the letter “f”. The Panel further endorses the view of previous UDRP panels that the omission of one simple letter does not influence the similar overall impression of the disputed domain name and the trademark as there is only minor differences in the appearance and pronunciation, especially in the presence of well-known trademarks.

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

This Panel finds that there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name.

It is a well-established view of the UDRP panels, with which this Panel agrees, that a prima facie case advanced by the complainant is generally sufficient for the complainant to satisfy the requirements under paragraph 4(a)(ii) of the Policy, provided that the respondent does not submit any evidence to the contrary (AGUAS DE CABREIROA, S.A.U. v. Hello Domain, WIPO Case No. D2014-2087; Spigen Korea Co., Ltd., Spigen Inc. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-0145; HubSpot, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Steve Johnson, WIPO Case No. D2016-1338).

In the present case, taking into consideration the Respondent’s default, this Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, in view of the circumstances of this case, including the following factors:

- there is no evidence that the Respondent has been commonly known by the disputed domain name;

- there is no evidence that the Respondent has been licensed or authorized to use the disputed domain name by the Complainant;

- there is no evidence that legitimate noncommercial or fair use of the disputed domain name has taken place.

For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

In fact, as set out in more detail below, the evidence shows that the Respondent used the disputed domain name to direct Internet users to a pornographic website for commercial gain.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“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 you have registered or you have 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) you have 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 you have engaged in a pattern of such conduct; or

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

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of “registration and use of a domain name in bad faith”.

With regard to the Respondent’s registration of the disputed domain name, this Panel believes bad faith may be found where the Respondent knew or should have known of the registration and use of the GROUPE LE DUFF and LE DUFF trademarks prior to registering the disputed domain name. Such is true in the present case in which the Respondent registered the disputed domain name after the Complainant obtained its trademark registrations for the GROUPE LE DUFF and LE DUFF trademark. The Complainant’s presence on the Internet makes it disingenuous for the Respondent to claim that it was unaware of the Complainant’s trademark rights.

As to the use of the disputed domain name, the Respondent has used the disputed domain name to direct consumers to a pornographic website for commercial gain. This practice is an example of “pornosquatting” where confusion with a well-known trademark is used to divert customers to a pornographic website for commercial purposes and cannot constitute bona fide use (see Prada S.A. v. Roberto Baggio, WIPO Case No. D2009-1187).

At the time of the Decision the disputed domain name does not resolve to an active website. However, non-use of a domain name can, in certain circumstances, constitute a domain name being used in bad faith. The Panel has considered whether, in the circumstances of this particular case, the passive holding of the disputed domain name by the Respondent amounts to the Respondent acting in bad faith. Relying on Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the Panel concludes that the Complainant has proven bad faith under the passive use doctrine.

In light of the foregoing, this Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith under 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 name <leduf.com> be transferred to the Complainant.

Benoit Van Asbroeck
Sole Panelist
Date: October 28, 2019