WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alain Afflelou Franchiseur v. Mark Pawlowski

Case No. D2020-3015

1. The Parties

The Complainant is Alain Afflelou Franchiseur, France, represented by Novagraaf France, France.

The Respondent is Mark Pawlowski, United States of America (“United States”).

2. The Domain Names and Registrar

The domain names <afflelous.net> (“the first disputed domain name”) and <consultingafflelous.net> (“the second disputed domain name”) are registered with Wild West Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2020. On November 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 16, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 23, 2020 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 23, 2020.

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 December 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 20, 2021.

The Center appointed Antony Gold as the sole panelist in this matter on January 26, 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 franchisor of optical retail outlets based in France with over 1400 optical stores in 19 countries. It was founded in 1972 and incorporated in 1975.

The Complainant trades as both ALAIN AFFLELOU and as AFFLELOU. The Complainant registered the domain name <afflelou.net> on June 17, 1999 and the domain name <afflelou.com> on September 13, 1999. These resolve to websites promoting the Complainant’s business. The Complainant is also the owner of a number of trade mark registrations for AFFLELOU including, by way of example only, French trade mark registration number 1305969 for AFFLELOU registered on April 26, 2016 in classes 3, 5, 9, 10, 35, 36, 37, 38 and 44.

The disputed domain names were registered on November 4, 2020. Neither disputed domain name resolves to an active website. The Complainant has provided evidence that, at least, the first disputed domain name has been used in connection with fraudulent phishing activity.

5. Parties’ Contentions

A. Complainant

The Complainant says that the disputed domain names are identical or confusingly similar to trade marks in which it has rights. It draws attention to its trade marks for AFFLELOU, full details of one of these marks having been set out above. The first disputed domain name is confusingly similar to the Complainant’s AFFLELOU trade mark as it reproduces it in its entirety and just adds a final “s”. Moreover, in spoken French, the letter “s”, when used as the final letter in a word, is silent so, phonetically, “AFFLELOU” and “AFFLELOUS” are identical. The second disputed domain name is also confusingly similar to the Complainant’s marks because it simply adds “consulting”, as a prefix, as well as a final “s” to the Complainant’s mark. The likelihood of confusion arising in relation to the second disputed domain name is exacerbated because the Complainant uses the subdomain <consultant.afflelou.net> for its business to business activities and emails.

The Respondent’s activities comprise typosquatting, that is the registration of domain names which contain misspellings which are hardly noticeable and result in a very minor modification to a complainant’s trade marks. Internet users are likely to think that the first and second disputed domain names belong to the Complainant or have been registered on its behalf. In view of the notoriety of the Complainant, there is a very high likelihood of confusion.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names. There is no evidence that the Respondent has acquired any registered rights in the words “Afflelous” or “Afflelous Consulting” and the Complainant has never authorized registration of the disputed domain names.

Lastly, the Complainant says that the disputed domain names were registered and are being used in bad faith. Given the fame of the Complainant’s marks, the Respondent must have been aware of them when registering the disputed domain names. The email address for the first disputed domain name has been used to send an invoice to one of the Complainant’s customers, purporting to come from the Complainant but, in fact, containing the Respondent’s bank details. The Respondent’s registration and use of the disputed domain names constitutes an infringement of the Complainant’s rights and creates a high risk of other phishing attacks. Conduct of this nature is evidence of bad faith; see Gerber Technology LLC v. WhoisGuard Protected, WhoisGuard, Inc. / Nazareth Barsoumian, WIPO Case No. DCO2020-0035.

B. Respondent

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

6. Discussion and Findings

Dealing, first, with the Respondent’s failure to file a response to either Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:

(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The information provided by the Complainant in relation to its trade mark registrations for AFFLELOU, including the mark in respect of which full details are provided above, establish its rights in this trade mark.

For the purpose of determining whether the disputed domain names are identical or confusingly similar to its mark, the generic Top-Level Domain (“gTLD”) “.net” is generally disregarded as this is a technical requirement of registration.

The first disputed domain name comprises the Complainant’s AFFLELOU trade mark in full and adds an additional “s”. The addition of the letter “s” does not impact on an assessment of whether the disputed domain name is confusingly similar to the Complainant’s trade mark. As explained in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7: “… 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 for purposes of UDRP standing”. The Complainant’s trade mark is clearly recognisable in the first disputed domain name.

The second disputed domain name differs from the Complainant’s mark only by the additions of the word “consultant” as a prefix and the letter “s” as a suffix. The addition of these terms does not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview 3.0).

The Panel therefore finds that the first and second disputed domain names are confusingly similar to a trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or legitimate interests in a domain name. These are, summarised briefly:

(i) if the respondent has been using the domain name in connection with a bona fide offering of goods and services;

(ii) if the respondent has been commonly known by the domain name; or

(iii) if the respondent has been making a legitimate noncommercial or fair use of the domain name.

The Complainant has provided clear evidence that an email address derived from the first disputed domain name has been used in connection with a fraud perpetrated against one of its customers. This serves to exclude any possibility that the disputed domain name has been used in connection with a bona fide offering of goods and services. In this respect, see section 2.13.1 of the WIPO Overview 3.0 which explains that; “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”.

No evidence of fraudulent activity has been produced in respect of the second domain name. However, having regard to the fact that the first and second disputed domain names were registered on the same day by the same Respondent and that both are confusingly similar to the Complainant’s AFFLELOU trade mark, it is highly probable that both disputed domain names are intended by the Respondent to be used for similar types of fraudulent activity. In fact, as the Complainant has shown that the email address it uses for business to business purposes includes the word “consultant”, which is very similar to the “consulting” component of the second disputed domain name, the risk of confusion being caused to customers of the Complainant in this eventuality is appreciable.

The second of the circumstances set out at paragraph 4(c) of the Policy is also inapplicable; there is no evidence to indicate that the Respondent has been commonly known by either of the disputed domain names. As for the third circumstance, using the first disputed domain name for fraudulent purposes coupled with the likelihood that the second disputed domain name will be used for similar purposes, establishes that neither disputed domain name is being used for legitimate noncommercial or fair purposes, not least because both disputed domain names effectively impersonate or suggest a connection with the Complainant.

The Complainant has made out a prima facie case in relation to the second element and the burden of production shifts to the Respondent. In the absence of any response from the Respondent, the Panel finds that it has no rights or legitimate interests in respect of the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstances set out in paragraph 4(b)(iv) of the Policy are if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.

The Respondent is not, in fact, using a website to create confusion between it and the Complainant; rather, it has sought to defraud at least one customer of the Complainant through the use of an email address connected with the first disputed domain name and is likely to be using, or to use in the future, the second disputed domain name for similar purposes. However, the activities which comprise use of a domain name for the purposes of paragraph 4(b)(iv) of the Policy are generally considered to extend beyond the hosting of a website and to include, sending phishing or other fraudulent emails connected with it; see, by way of example, Arla Foods Amba v. Michael Guthrie, M. Guthrie Building Solutions, WIPO Case No. D2016-2213. Note, in any event, that the circumstances at paragraph 4(b) of the Policy are expressed to be without limitation and conduct by a respondent which is essentially the same in its intention and effect as that set out at paragraph 4(b)(iv) should be considered in a broadly similar way.

The use by the Respondent of a privacy service to mask the identity of the underlying registrant is, in the circumstances of this Complaint, a further indication of bad faith.

For these reasons, the Panel finds that the Respondent has registered and is using the disputed domain names in bad faith.

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 names, <afflelous.net> and <consultingafflelous.net>, be transferred to the Complainant.

Antony Gold
Sole Panelist
Date: February 9, 2021