WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Holding Le Duff “HLD” v. Domain Admin, Whois Privacy Corp.
Case No. D2020-0355
1. The Parties
The Complainant is Holding Le Duff “HLD”, France, represented by SCAN Avocats AARPI, France.
The Respondent is Domain Admin, Whois Privacy Corp., Bahamas.
2. The Domain Name and Registrar
The disputed domain name <groupleduff.com> is registered with Internet Domain Service BS Corp. (the ”Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2020. On February 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 17, 2020, 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 February 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2020. The Respondent did not submit any response. Due to an administrative oversight, it appeared that the Center’s Notification emails were not copied to some of the Respondent’s email addresses. On March 13, 2020, the Center granted the Respondent a five day period to indicate whether it wishes to participate to this proceeding. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 19, 2020.
The Center appointed Andrea Mondini as the sole panelist in this matter on April 9, 2020. 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 known as the Groupe Le Duff and was established in 1976. With over 1,658 restaurants and bakeries in 80 countries worldwide it is a leader in the international bakery café market.
The Complainant owns numerous trademark registrations comprising the element “Le Duff”, including the European Union Trade Mark Registrations No. 01146851 for the word mark GROUPE LE DUFF filed on April 21, 1999 and registered on July 31, 2000, and No. 010685816 for the word mark LE DUFF filed on February 29, 2012 and registered on August 2, 2012, which are both registered in several classes.
The disputed domain name was registered on February 6, 2020, and resolves to an index website.
5. Parties’ Contentions
The Complainant in essence contends the following:
The GROUPE LE DUFF and LE DUFF trademarks are well-known in France and worldwide.
The disputed domain name is confusingly similar to the Complainant’s trademarks since it identically reproduces the LE DUFF trademark and almost identically the GROUPE LE DUFF trademark, whereby the omission of the letter “e” of the term “groupe“ does not dispel confusion.
The Complainant has not licensed or otherwise authorized the Respondent to use its trademarks. The Respondent therefore has no rights or legitimate interests in the disputed domain name, or any rights in the Complainant’s trademarks, or association with the Complainant whatsoever.
The disputed domain name has been registered in bad faith because, given the Complainant’s worldwide reputation, the Respondent was or should have been aware of the LE DUFF marks prior to registering the disputed domain name.
The Respondent used the disputed domain name in bad faith by using it to set up an online phishing campaign using email communications pretending to be from the Complainant’s employees in order to mislead the recipients regarding the origin of said communications and obtain sensitive confidential information.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements:
(i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has shown that it holds numerous registrations for the trademarks GROUPE LE DUFF and LE DUFF.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark LE DUFF, because it incorporates this trademark in its entirety and in identical form. The addition of the descriptive word “group” does not dispel confusing similarity between the disputed domain name and the Complainant’s trademark. See section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
In any event, the omission of the letter “e” at the end of the term “groupe” does not dispel a confusing similarity to the trademark GROUPE LE DUFF.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant contends, credibly, that it has not authorized the Respondent to register or use the Complainant’s trademarks in the disputed domain name, and that there is no relationship whatsoever between the Parties. In the absence of any Response, the Panel concludes that the Respondent was not authorized or licensed to use the Complainant’s trademarks in the disputed domain name and that there is no indication of any legitimate noncommercial or fair use of the disputed domain name. Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has demonstrated that the GROUPE LE DUFF and LE DUFF marks are distinctive and extensively used in many countries. The Panel thus concludes that the Respondent must have been aware of these trademarks and their reputation when it registered the disputed domain name, so that the disputed domain name was registered in bad faith.
The Complainant has further shown that the configuration of a webmail server linked to the disputed domain name was used to send phishing emails pretending to be sent by the Complainant’s employees and creating a confusion with their genuine email addresses ending by “@groupeleduff” in order to deceive the recipients and obtain sensitive confidential information. This clearly qualifies as bad faith use of the disputed domain name.
The Panel therefore finds that the Complainant has satisfied the requirement under 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 <groupleduff.com> be transferred to the Complainant.
Date: April 23, 2020