WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
La Halle v. Jimmy Kang
Case No. D2020-2058
1. The Parties
Complainant is La Halle, France, represented by Inlex IP Expertise, France.
Respondent is Jimmy Kang, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <lahalle-fr.com> 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 August 4, 2020. On August 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 5, 2020, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 31, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 1, 2020.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on September 15, 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
Complainant is a company organized under the laws of France that is active in the fashion industry.
Complainant has provided evidence that it is the registered owner of various trademarks worldwide relating to its company name and brand LA HALLE, including the following:
- International word/design mark, LA HALLE FASHION, SHOES & BAGS, registration number: 1254519, registration date: March 19, 2015, status: active;
- International word/design mark, LA HALLE MODE, CHAUSSURES & MAROQUINERIE, registration number: 1213360, registration date: April 10, 2014, status: active; and,
- International word/design mark, LA HALLE AUX VETEMENTS, registration number: 486315, registration date: July 6, 1984, status: active. (Collectively referred to hereinafter as the “LA HALLE trademarks”.)
Moreover, Complainant has evidenced to own the domain name <lahalle.com>, which resolves to Complainant’s official website at “www.lahalle.com”, where Complainant promotes its fashion business and offers fashion products for online sale.
Respondent, according to the WhoIs information for the disputed domain name, is a resident of the United States who registered the disputed domain name on July 20, 2020. By the time of the rendering of this decision, the disputed domain name does not resolve to an active website.
Complainant requests that the disputed domain name be transferred to Complainant.
5. Parties’ Contentions
Complainant contends to have opened its first store back in 1981 and that nowadays there are more than 870 stores throughout France with 6,400 employees and 15.5 million visitors to Complainant’s website each year. Furthermore, Complainant claims that its LA HALLE trademark is well known, particularly in France.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s LA HALLE trademarks, as it combines the distinctive element LA HALLE, which matches a number of rights held by Complainant, with the suffix “-fr” designating the territorial area of France. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) there is no business or legal relationship between Complainant and Respondent, and the latter has neither been authorized nor licensed to use Complainant’s trademarks in any way, and (2) the disputed domain name does not resolve to any valid content on the Internet, which is why it is obvious that Respondent has no legitimate interest in registering or using it. Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith, since (1) given the well-known character of the LA HALLE trademark and its constant and wide use, one may not imagine that Respondent registered the disputed domain name by chance or coincidence, (2) the suffix “-fr” after the term “lahalle” in the disputed domain name suggests that the latter has been made up to capture users by letting them think that this disputed domain name is related to one of Complainant’s official LA HALLE websites, and (3) Respondent has created an email exchanger record (“MX Record”) which allows to use email addresses with the suffix “@lahalle-fr.com”.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent’s failure to submit a Response as it considers appropriate.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name is confusingly similar to the LA HALLE trademarks in which Complainant has rights.
The disputed domain name incorporates the distinctive part LA HALLE of each of Complainant’s trademarks in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview 3.0, section 1.8), that the addition of other terms (whether e.g. descriptive or otherwise) would not prevent the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the descriptive suffix “fr” (together with a hypen), which is the two-letter country‑code for “France” where Complainant is located and its business and trademarks are particularly known, does not dispel the confusing similarity arising from the incorporation of the dominant feature of the Complainant’s LA HALLE trademark in the disputed domain name.
Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent has neither been granted a license nor has it been otherwise authorized by Complainant to use its LA HALLE trademarks, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the term “la halle” on its own. Finally, it appears that by the time of the rendering of this decision the disputed domain name does not resolve to any active content on the Internet and that it never has done so in the past. UDRP panels, however, have recognized that the mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase, does not by itself automatically confer rights or legitimate interests in the disputed domain name (see WIPO Overview 3.0, section 2.10.1).
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has defaulted, Respondent has not met that burden.
The Panel, therefore, finds that Respondent has no rights or legitimate interests in respect of the disputed domain name and that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
As a general rule, UDRP panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding (see WIPO Overview 3.0, section 3.3). While UDRP panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include e.g.: the degree of distinctiveness or reputation of Complainant’s mark, the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good faith use, or the implausibility of any good faith use to which the domain name may be put.
Complainant contends, and Respondent has not challenged this contention, that its LA HALLE trademarks have achieved a well-known status, particularly in France. Given the composition of the disputed domain name, which not only reflects the distinctive part of Complainant’s LA HALLE trademarks, but combines it with the suffix “fr” directed to France where Complainant is located and has its main business, this Panel has no reasonable doubts that Respondent was well aware of Complainant and its LA HALLE trademarks when it registered the disputed domain name, and that the latter is directly pointing thereto. At the same time, the circumstances of the case at hand leave very little room for any plausible use of the disputed domain name that would not profit from the undisputed reputation that Complainant’s LA HALLE trademarks enjoy, particularly in France. Rather, there is reason to believe that the disputed domain name was registered and is intended to be used for the sending of (potentially fraudulent) emails, which may be derived from the fact that allegedly an MX Record has been created thereunder. Against this background, the passive holding of the disputed domain name by Respondent up until now does not prevent a finding that Respondent has registered and is using the disputed domain name in order to take unfair advantage of or otherwise abuse Complainant’s LA HALLE trademarks, and, thus, acts in bad faith within the larger meaning of paragraph 4(b) of the Policy.
Accordingly, the Panel concludes that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).
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 <lahalle-fr.com> be transferred to Complainant.
Stephanie G. Hartung
Date: September 29, 2020