WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Louis Delhaize Financière et de Participation (DELFIPAR) v. Privacy service provided by Withheld for Privacy ehf / Vallee Virginie
Case No. D2021-4126
1. The Parties
The Complainant is Société Louis Delhaize Financière et de Participation (DELFIPAR), Belgium, represented by Inlex IP Expertise, France.
The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Vallee Virginie, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <groupelouisdelhaize.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 December 9, 2021. On December 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 9, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 14, 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 December 15, 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 January 11, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 2, 2022.
The Center appointed Torsten Bettinger as the sole panelist in this matter on February 15, 2022. 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 Belgian company active in the field of mass distribution and management of hypermarkets.
The Complainant owns a number of registrations for the LOUIS DELHAIZE word and design marks, including the following:
- Benelux trademark No. 368916, LOUIS DELHAIZE, registered on September 25, 1980 in classes 3, 29, 30, 31, 32, 33, and 34;
- Benelux trademark No. 956197, LOUIS DELHAIZE (design), registered on July 17, 2014 in classes 29, 30, 31, 32, 33, 35, and 43.
The disputed domain name was registered on May 6, 2021. The disputed domain name resolves to a parking page with pay‑per-click (“PPC”) links.
5. Parties’ Contentions
The Complainant states that it is a well-known company which has been active in the distribution sector for many years.
The Complainant provided screenshots that show that at the time of the drafting of the present Complaint the disputed domain name was redirected to PPC website which contains links to competitors of the Complainant.
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case.
With regard to the requirement of identity or confusing similarity between the trademark and the disputed domain name pursuant to paragraph 4(a)(i) of the Policy, the Complainant asserts that:
- the disputed domain name is identical to or confusingly similar with the Complainant’s well-known LOUIS DELHAIZE trademark since it only differs from the Complainant’s trademark LOUIS DELHAIZE by the addition of the term “groupe”;
- that the addition of the term “groupe” rather reinforces the risk of confusion as the Complainant is a distribution group.
With regard to the Respondent having no rights or legitimate interests in the disputed domain name, the Complainant submitted that:
- the Respondent is not a licensee or authorized agent of the Complainant or in any other way authorized to use the Complainant’s trademarks;
- the Respondent has used the disputed domain name for a PPC website hereby intentionally attempting to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion.
Finally, with regard to the disputed domain name having been registered and being used in bad faith, the Complainant argues that:
- the name LOUIS DELHAIZE is associated, at least in the mind of the French and Belgian consumers with the Complainant’s Group of retail companies and trademark LOUIS DELHAIZE;
- Respondent could not have ignored, while registering, the existence of the Complainant’s company, trademark and its website;
- under the circumstances of the case using privacy services is an indication of bad faith;
- Respondent used the disputed domain name for the transmission of fraudulent e-mails in order to place false orders and impersonate one of the company's directors;
- such use of the disputed domain name disrupts the Complainant’s business and causes harm to the Complainant’s brand image;
- Respondent intentionally attempts to exploit the reputation of the LOUIS DELHAIZE trademark to attract Internet users to its parking lot page, which contains links to websites of companies that compete with Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns multiple trademark registrations for the mark LOUIS DELHAIZE.
It is well-established that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the trademark is used or other marketing and use factors usually considered in trademark infringement cases. (See sections 1.1.2 and 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In this case, the disputed domain name contains the LOUIS DELHAIZE trademark in its entirety. As set forth in section 1.7 of the WIPO Overview 3.0: “in cases where a domain name incorporates the entirety of a trademark […] the domain name will normally be considered confusingly similar to that mark.” (See, e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy”)).
Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see section 1.8 of the WIPO Overview 3.0), that the addition of other terms (whether, e.g., descriptive or otherwise) does not prevent the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the term “groupe” does not dispel the confusing similarity arising from the incorporation of Complainant’s LOUIS DELHAIZE trademark in the disputed domain name.
Finally, it is well accepted in past UDRP decisions that the generic Top-Level Domain (“gTLD”), such as “.com”, “.net”, “.org”, is typically not to be taken into account when assessing the issue of identity and confusing similarity, except in certain cases where the applicable gTLD may itself form part of the relevant trademark (see section 1.11 of the WIPO Overview 3.0).
For the foregoing reasons the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s LOUIS DELHAIZE trademark in which the Complainant has exclusive rights.
B. Rights or Legitimate Interests
Pursuant to paragraph 4 (c) of the Policy a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [the Respondent] 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 [the Respondent] (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 [the Respondent] 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.”
The Complainant has asserted and presented evidence that the disputed domain name resolves to a parked page comprising PPC advertising links and that these links redirect Internet users to various sites and services, some of which compete with the Complainant’s offerings. The Complainant also contends that it has not authorized or licensed the Respondent to use the Complainant’s LOUIS DELHAIZE trademark in any way.
These assertions and evidence are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.
The Respondent chose not to contest the Complainant’s allegations and has failed to come forward with any evidence to refute the Complainant’s prima facie showing that the Respondent lacks rights or legitimate interests. The Panel therefore accepts these allegations as undisputed facts.
From the record in this case, the Respondent has also not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that the Respondent has used the disputed domain name to resolve to a PPC advertising webpage featuring various links that redirect Internet users to unrelated or competing websites. Furthermore, the Respondent used the disputed domain name in connection with an e-mail address impersonating the Complainant.
The Panel therefore concludes that Respondent has no rights or legitimate interest in the disputed domain name and that, accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, 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 the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Complainant holds multiple trademark registrations for the LOUIS DELHAIZE mark that predate the registration of the disputed domain name.
Given that the Complainant’s LOUIS DELHAIZE mark was widely known at the time the Respondent registered the disputed domain name and is exclusively associated with the Complainant’s retail group, and also noting the use of the disputed domain name discussed in more detail below, it is inconceivable that the Respondent coincidentally registered the disputed domain name without any knowledge of the Complainant and its LOUIS DELHAIZE mark.
The Panel therefore concludes that the Respondent registered the disputed domain name in bad faith.
Based on the record in this proceeding it is also undisputed that the disputed domain name redirects Internet users to a PPC parking page featuring links to websites, some of which compete with the Complainant’s offerings.
The purpose of this PPC parking website clearly was to attract Internet users to the site, for profit, based on their confusing the Respondent’s domain name and/or website with the Complainant. Once on the Respondent’s page, some users likely click on PPC links, which presumably result in click-through fees and thus in a commercial benefit for the Respondent.
The Panel therefore infers that the Respondent by using the disputed domain name in this manner, has intentionally created a likelihood of confusion with the Complainant’s trademark for the Respondent’s financial gain and that the Respondent is using the disputed domain name in bad faith.
Furthermore, the Complainant asserted and provided evidence that the Respondent used the disputed domain name in connection with an e-mail address in order to impersonate the Complainant. The Respondent has not contested the Complainant’s allegations.
The Respondent’s use of the disputed domain name as part of an e-mail address to send out a fraudulent e‑mails also falls under the concept of use of a domain name in bad faith pursuant to 4(b) of the Policy. It has been long established under the UDRP that the concept of use is not confined to the use of a domain name in connection with website content displayed at a disputed domain name. In recent years, with the global rise in cybercrime, domain names have been employed in connection with e-mail fraud schemes. In such a scenario, the domain name holder utilizes an e-mail address connected to the domain name, which has been selected specifically either for its similarity to a known trademark or to impersonate the trademark holder whose mark is included in the text of the domain name, for the illicit profit of the domain name holder. (See, e.g., B & H Foto & Electronics Corp. v. Whois Privacy Protection Service, Inc. / Jackie Upton, WIPO Case No. D2010-0841).
Such use of a domain name also falls under the concept of use of a domain name in bad faith.
Accordingly, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith and that therefore the Complainant has also satisfied the requirements of 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 <groupelouisdelhaize.com> be transferred to the Complainant.
Date: March 1, 2022