Complainant is Societe Anonyme des Galeries Lafayette of France, represented by Hirsch & Associés Law Firm of France.
Respondent is Charlie Kalopungi of Seychelles / Moniker Privacy Services, Registrant [2997295] of United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2010. On July 27, 2010, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the disputed domain name. On July 29, 2010, Moniker Online Services, LLC. 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 Complainant on July 30, 2010 providing the registrant and contact information disclosed by the Registrar, and the Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on August 2, 2010.
The Center verified that the Complaint together with the amendment to 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 23, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 24, 2010.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on August 31, 2010. 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 the owner of a famous fashion store in Paris in which it offers a wide range of products and services to consumers including various kinds of clothes, shoes and accessories, wedding lists and birth lists and travel agency services. Complainant uses the GALERIES LAFAYETTE trademark for these services.
Complainant shows to be the holder of the following GALERIES LAFAYETTE and GALERIES LAFAYETTE VOYAGES trademarks:
- GALERIES LAFAYETTE: French trademark no. 1502755 filed on October 16, 1979, duly renewed on December 9, 1988 and on July 1, 2008 for various products and services including "clothing, shoes, insurance and financial affairs, Transportation, Travel arrangement (...)" in all classes;
- GALERIES LAFAYETTE: International trademark no. 553543 filed on April 12, 1990, for various products and services including "clothing, shoes, insurance and financial affairs, Transportation, Travel arrangement (...)" in all classes;
- GALERIES LAFAYETTE: International trademark no. 146213 filed on April 4, 1950, for various products and services including "clothing, shoes (…)” in all classes;
- GALERIES LAFAYETTE: Community trademark no. 3798147 filed on April 27, 2004, for various products and services including "clothing, shoes, insurance and financial affairs, Transportation, Travel arrangement (,..)" in classes 3, 4, 5, 7, 8, 9, 11, 14, 15, 16, 18, 20, 21, 22, 23, 25, 26, 27, 28, 29, 30, 32, 33, 35, 36, 37, 38, 39, 41, 42, 43, 44, 45;
- GALERIES LAFAYETTE: Community trademark no. 3798279 filed on April 27, 2004, for various products and services including "clothing, shoes, insurance and financial affairs, Transportation, Travel arrangement (...)" in classes 3, 4, 5, 7, 8, 9, 11, 14, 15, 16, 18, 20, 21, 22, 23, 25, 26, 27, 28, 29, 30, 32, 33, 35, 36, 37, 38, 39, 41, 42, 43, 44, 45;
- GALERIES LAFAYETTE VOYAGES: French trademark no. 99768007 filed on January 8, 1999 and duly renewed on December 30, 2008 for various services including "Arranging of travel and holidays, travel reservations; information relating to travel (.,.)" in classes 16, 35, 36, 39, 41, 42, 43, 45. 5. Parties’ Contentions A. Complainant
Complainant considers the disputed domain name to be identical or confusingly similar to the trademarks and service marks in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interest in respect of the disputed domain name. According to Complainant, Respondent has not used the disputed domain name in connection with a bona fide offering of services or a legitimate noncommercial use. Also, Respondent has not been commonly known by the disputed domain name, according to Complainant.
Finally, Complainant considers that the disputed domain name was registered and being used in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4 (a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are civil, the standard of proof is the balance of probabilities.
Thus, for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. The disputed domain name has been registered and is being used in bad faith.
The Panel will therefore deal with each of these requirements in turn. A. Identical or Confusingly Similar
Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant is the holder of the widely-known trademark GALERIES LAFAYETTE used to offer to consumers a wide range of goods and services in the field of clothes, shoes and accessories, wedding lists and birth lists and travel agency services.
The Panel considers the only difference between the disputed domain name and Complainant’s trademark is the omission of one letter “t” in the word “Lafayette”. The omission of the letter “t” in the word “Lafayette” is insufficient to avoid confusing similarity, as such a minor modification to a trademark does not diminish in any significant way the likelihood of confusion between the disputed domain name and Complainant’s trademark. (See Roche Diagnostics Gmbh v. Terra Serve,WIPO Case No. D2010-0640; Perfetti van Melle SpA v. Pavel Tkachev,WIPO Case No. D2010-0575; BHP Billiton Innovation Pty Ltd v. Pluto Domain Services Private Limited / Whois Privacy Protection Services,WIPO Case No. D2008-1910).
Therefore, the Panel finds that the disputed domain name is confusingly similar with Complainant’s trademark GALERIES LAFAYETTE.
Accordingly, Complainant has made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the disputed domain name.
It is established in previous UDRP decisions that it is sufficient for Complainant to make a prima facie showing that Respondent has no right or legitimate interest in the disputed domain name in order to shift the burden of proof to Respondent. (See Champion Innovations, Ltd. V. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Panel notes that Respondent has not been commonly known by the disputed domain name and that the Respondent does not appear to have acquired trademark or service mark rights. Respondent’s use and registration of the disputed domain name was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent existed.
Moreover, the Panel is of the opinion that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Respondent uses the disputed domain name as a parking page with commercial links dedicated to competitors of Complainant. Respondent presumably receives referral fees of some sort for the placement of these advertisements on the corresponding website. Such use does not constitute a bona fide use or a legitimate noncommercial use or fair use, as contemplated by the Policy. (See e.g. McLaughlin Gormley King Company v. BWI Domains c/o Domain Manager, NAF Claim No. 1230837; Stunt Dynamics c/o John Zimmerman v. BWI Domains c/o Domain Manager, NAF Claim No. 1226425 ; MacKenzie-Childs Aurora LLC v. BWI Domain Manager c/o Domain Manager, NAF Claim No. 1218043).
Diverting Internet traffic to third party websites of direct competitors of Complainant can even be considered to be misleading and damaging to Complainant’s trademarks. In the present case, the Panel considers that Respondent has misleadingly diverted consumers and damaged the trademarks at issue.
As a result, Complainant has demonstrated that Respondent has no right or legitimate interest in the disputed domain name. C. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities that the disputed domain name was registered in bad faith and that it is being used in bad faith (See e.g. Telstra Corporation Limited v. Nuclear Marshmallow,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith is the use of the domain name for intentionally attempting to attract, for commercial gain, Internet users to a web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s web site or location or of a product or service on the web site or location. 1. Bad Faith Registration
In the instant case, Respondent most likely had knowledge of Complainant’s rights in the GALERIES LAFAYETTE trademark at the moment he registered the disputed domain name, since Complainant’s trademark is a widely-known trademark. Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. (See Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No.D2001-1070, where the word POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix suggested knowledge of the complainant’s rights in the trademarks).
Moreover, the omission of one letter “t” in the disputed domain name constitutes a deliberate attempt by Respondent to trade on imperfect typing or carelessness by an Internet user when looking for information on the Complainant. According to the Panel, the registration of a domain name with a slight and typographical variation to the widely-known mark GALERIES LAFAYETTE constitutes typosquatting which in this Panel’s view in itself evidences bad faith. (See A, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman,WIPO Case No. D2006-0517; ESPN, Inc. v. XC2,WIPO Case No. D2005-0444).
The Panel finds that since Respondent must have had knowledge of Complainant’s rights in the GALERIES LAFAYETTE trademark at the moment he registered the disputed domain name, since Respondent had no legitimate interest in the disputed domain name, and since the registration of the disputed domain name by Respondent constitutes typosquatting, it is established that the disputed domain name was registered in bad faith. 2. Bad Faith Use
Pursuant to paragraph 4(b)(iv) of the Policy, intentionally attempting to attract for commercial gain, Internet users to a web site or other online location, by creating a likelihood of confusion with the complainant’s mark constitutes evidence of bad faith use of a domain name.
In the present case, the disputed domain name is linked to a parking website featuring links to third parties, some of whom are direct competitors of Complainant. The parking page also features links to adult websites. This is a clear indication that Respondent intentionally attempted to attract Internet users for commercial gain, using Complainant’s trademark. By doing so, Respondent created a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. It is more than likely that Respondent is profiting off the goodwill associated with Complainant’s trademark by accruing click-through fees for each redirected Internet user. (See Axcan Pharma Inc. v. BWI Domain Manager c/o Domain Manager, supra,; McLaughlin Gormley King Company v. BWI Domains c/o Domain Manager, supra. The Panel finds that these circumstances support a finding of bad faith use pursuant to paragraph 4(b)(iv) of the Policy.
Moreover, Respondent concealed his identity by registering the disputed domain name under the name of “Moniker Privacy Services”. According to the information provided by the Registrar, it was Charlie Kalopungi from AA7 Group Ltd. that registered the disputed domain name. This same person has already been involved in bad faith registration and use of a domain name, that equally involved typosquatting (See Autosales Incorporated, dba Summit Racing Equipment v. Moniker Privacy Services [2731514] / Registrant [2909991]: Charlie Kalopungi,WIPO Case No. D2010-1081). This is a clear indication that Respondent has engaged in a pattern of such conduct. Moreover, Respondent has not filed a response in either this case or the abovementioned case. As a result, these factors clearly show that the disputed domain name has not only been registered, but is also being used in bad faith. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be cancelled.
Flip Jan Claude Petillion
Sole Panelist
Dated: September 14, 2010
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