WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Anonyme des Galeries Lafayette v. Super Privacy Service LTD c/o Dynadot / Wu Yu
Case No. D2021-3582
1. The Parties
The Complainant is Société Anonyme des Galeries Lafayette, France, represented by Dreyfus & associés, France.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America / Wu Yu, China.
2. The Domain Name and Registrar
The disputed domain name <rgalerieslafayette.com> (the “Domain Name”) is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2021. On October 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 29, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 2, 2021, 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 November 3, 2021.
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 November 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 24, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 2, 2021.
The Center appointed Gregor Vos as the sole panelist in this matter on December 8, 2021. 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 well-known French company, with multiple stores around the world, active in the field of city-center fashion retailing.
The Complainant is the owner of inter alia the following international trademark registration (hereinafter referred to as: the “Trademark”):
- International registration No. 553543 for GALERIES LAFAYETTE registered on April 12, 1990, with designation of inter alia Switzerland, China, Italy, Morocco, and Romania.
Further, it is undisputed that the Complainant is the holder of inter alia the domain name <galerieslafayette.com>, registered on August 1, 1997.
The Domain Name was registered on March 7, 2021, and currently resolves to a parking page on which the Domain Name is offered for sale and which shows pay-per-click (“PPC”) advertising links that redirect to other webpages.
5. Parties’ Contentions
With the Complaint, the Complainant seeks that the Domain Name is transferred to the Complainant. The Complaint is based on the following factual and legal grounds: the Domain Name is identical or confusingly similar to the Trademark of the Complainant, the Respondent has no rights or legitimate interests in the Domain Name, and the Domain Name has been registered and is being used in bad faith.
Firstly, according to the Complainant, the Domain Name is identical or confusingly similar to its well-known Trademark. The Domain Name reproduces the Trademark entirely with the mere addition of the generic Top-Level Domain (gTLD) “.com” and the addition of the letter “r”. Therefore, by registering the Domain Name, the Respondent has created a confusing similarity with the Complainant’s Trademark in that it could mislead Internet users into thinking that it is in some way associated with the Complainant.
Secondly, according to the Complainant, the Respondent has no rights or legitimate interests in the Domain Name. The Respondent has never received any form of authorization from the Complainant to use the Trademark and is not commonly known under the name “galeries Lafayette” nor under the name “rgalerieslafayette”.
Finally, according to the Complainant, the Respondent has registered and is using the Domain Name in bad faith. In light of the well-known character of the Complainant’s Trademark, it is inconceivable that the Respondent registered the Domain Name without knowledge of the Complainant and its Trademark. This is confirmed by the composition of the Domain Name, that reproduces the Complainant’s Trademark in its entirety. Also, according to the Complainant, the Domain Name is being used in bad faith, because the Domain Name is used to direct Internet users to alternative pages and finally to the Complainant’s official website. Further, there is a risk that the Respondent is engaged in a phishing scheme, since an email server has been configured on the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In view of the lack of a response filed by the Respondent as required under paragraph 5 of the Rules, this proceeding has proceeded by way of default. Hence, under paragraphs 5(f), 14(a) and 15(a) of the Rules, the Panel is directed to decide this administrative proceeding on the basis of the Complainant’s undisputed factual presentations.
For the Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
i. the Domain Name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;
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.
Only if all three elements have been fulfilled, the Panel is able to grant the remedy requested by the Complainant. The Panel will deal with each of the requirements in turn.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the Domain Name is (i) identical or confusingly similar to a trademark or service mark, (ii) in which the Complainant has rights.
With respect to having rights pursuant to paragraph 4(a)(i) of the Policy, it is noted that the Complainant is registered as the owner of the trademark GALERIES LAFAYETTE. Consequently, the Panel finds that the Complainant has proven that it has rights in the Trademark.
With regard to the assessment of identity or confusing similarity of the Domain Name with the Trademark, it is generally accepted that this test involves a reasoned but relatively straightforward comparison between the Complainant’s Trademark and the Domain Name (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). In cases where a domain name incorporates the entirety of a trademark, 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 (see section 1.7 of the WIPO Overview 3.0).
In the present case, the Trademark is incorporated in its entirety and is recognizable within the Domain Name. The addition of the generic Top-Level Domain (“gTLD”) “.com” and the addition of the letter “r” does not prevent a finding of confusing similarity with the Trademark (see sections 1.7 and 1.11 of the WIPO Overview 3.0). Consequently, the Panel finds that the requirement under paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the Domain Name. The onus of proving this requirement, like each element, falls on the Complainant. Given the difficulty in proving a negative, however, it is usually sufficient for a complainant to make out a prima facie case that a respondent lacks rights or legitimate interests. If a complainant does establish a prima facie case, the burden of production shifts to the respondent (see, e.g. WIPO Overview 3.0, section 2.1; Sanofi v. Cimpress Schweiz GmbH, WIPO Case No. D2017-0522).
Paragraph 4(c) of the Policy lists three non-limitative examples of instances in which a respondent may establish rights or legitimate interests in the disputed domain name.
The Complainant has substantiated that none of these circumstances apply in this case. By defaulting, the Respondent has failed to rebut the prima facie case established by the Complainant. Furthermore, based on the record before it, the Panel does not see an indication that any of the circumstances of paragraph 4(c) of the Policy is present. The Domain Name is constructed of the Complainant’s Trademark in its entirety, save for the additional “r” (a letter adjacent to the letter “g” on a typical QWERTY keyboard), and resolves to a PPC page with links of a commercial nature, evidencing the Respondent’s intent to capitalize on the misdirection caused by the confusingly similar Domain Name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. Paragraph 4(a)(ii) is thereby fulfilled.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, a complainant must show that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four non-limitative circumstances which may be considered as evidence of registration and use in bad faith of a domain name.
In the present case, the Trademark is registered by the Complainant and have been used for many years. The Complainant’s rights to the Trademark predate the registration date of the Domain Name. In light of the well-known character of the Trademark, the Panel agrees with the Complainant that it is not conceivable that the Respondent chose the Domain Name without knowledge of the Complainant’s activities and its Trademark under which the Complainant is doing business. The well-known character of the Trademark of the Complainant has been confirmed by earlier UDRP panels (see e.g. Société Anonyme des Galeries Lafayette v. Ilgar Ahmetli, WIPO Case No. D2017-0173; Societe Anonyme des Galeries Lafayette v. Charlie Kalopungi / Moniker Privacy Services, Registrant , WIPO Case No. D2010-1236).
Further, the Panel has found that the Respondent lacks any rights to or legitimate interests in the Domain Name and finds that the Respondent is taking unfair advantage of the Domain Name by diverting Internet users to a PPC site that includes links of a commercial nature. Therefore, the Panel finds from the present circumstances that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s Trademarks as to the source, sponsorship, affiliation or endorsement(see e.g. “Dr. Martens” International Trading GmbH / “Dr. Maertens” Marketing GmbH v. Joan Mitchell, WIPO Case No. D2018-0226). Moreover, the PPC site to which the Domain Name resolves to also contains a banner offering the Domain Name for sale, further supporting an inference of bad faith. Lastly, the Complainant has furnished evidence illustrating the existence of active MX records attached to the Domain Name, permitting the ability for the Domain Name to be used for email and thus creating an ongoing implied threat to the Complainant that the Domain Name may be used for such fraudulent means.
Accordingly, the Panel finds that the Domain Name has been registered and is being used in bad faith and that the third element of paragraph 4(a)(iii) of the Policy is fulfilled.
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, <rgalerieslafayette.com>, be transferred to the Complainant.
Date: December 22, 2021