Case No. D2012-0487 1. The Parties
The Complainant is Société Anonyme des Galeries Lafayette of Paris, France, represented by Dreyfus & associés, France.
The Respondents are Domain Admin/ PrivacyP of Nobby Beach, Australia and Tech Domain Services Private Limited of Mumbai, Maharashtra, India. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2012. On March 13, 2012, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On March 15, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR 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 March 15, 2012, 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 March 16, 2012.
The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 10, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 2012.
The Center appointed Charné Le Roux as the sole panelist in this matter on April 25, 2012. 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 the owner of a range of very famous fashion stores, operating under the name GALERIES LAFAYETTE. GALERIES LAFAYETTE was founded in 1895 and the business has grown to 62 stores located in France and all over the world, where currently 11092 persons are employed. The Complainant’s sales conducted within its GALERIES LAFAYETTE stores have, for the year 2010, been as high as Euro 2,862 000 and the stores attract close to 700 000 shoppers daily. The Complainant’s stores have been the venues of prestigious events since 1946.
The Complainant owns the domain names , registered on August 1, 1997 and , registered on April 26, 1999. The Complainant is also the holder of a number of registered trade marks for the mark GALERIES LAFAYETTE, including International Trade Mark no. 553543 registered in April 1990, International Trade Mark no. 146213 registered in April 1950, International Trade Mark no. 1023540 registered in November 2009, Community Trade Mark no. 003798279 registered in October 2006, Community Trade Mark no. 003798147 registered in May 2006, Community Trade Mark no. 008822454 registered in July 2010, Australian Trade Mark registration no. 507204 registered in March 1989, Australian Trade Mark registration no. 507206 registered in March 1989 and Australian Trade Mark registration no. 507205 registered in March 1989.
The Complainant has in the past successfully restrained other parties from using the trade mark GALERIES LAFAYETTE and other deceptively similar marks through UDRP proceedings launched through the Center.
The Respondents registered the Disputed Domain Name on October 7, 2004. The website at the Disputed Domain Name resolves to a parking page displaying sponsored links in French and English for various goods and services including clothing. 5. Parties’ Contentions A. Complainant
The Complainant contends that it is the owner of the famous range of GALERIES LAFAYETTE fashion stores offering a broad variety of goods and services including various kinds of clothes, shoes and accessories, wedding lists and birth lists. It commenced operation under the name GALERIES LAFAYETTE as long ago as 1895 and it owns trade mark registrations and domain names for GALERIES LAFAYETTE in many countries in the world, as set out above.
The Complainant submits that previous UDRP decisions held that the Complainant had established rights in the trade mark GALERIES LAFAYETTE and also that the previous panels found the trade mark to be famous.
The Complainant contends that the Disputed Domain Name is confusingly similar to its GALERIES LAFAYETTE trade mark in that it is virtually identical to the mark, with the only difference being the addition of the letters “www”.
The Complainant contends that the Disputed Domain Name is designed to lead consumers who are searching for the Complainant’s goods and services to the Respondents’ website.
The Complainant also contends that the Respondents lacks rights or legitimate interests in the Disputed Domain Name in that:
a) the Complainant has not authorized the Respondents to register or use the GALERIES LAFAYETTE trade mark in any way;
b) the Respondents are not commonly known by the Disputed Domain Name; and
c) the Respondents have never used nor made preparations to use any of the Disputed Domain Name or any names corresponding to any of the Disputed Domain Name in connection with the bona fide offering of goods or services.
The Complainant further contends that the Disputed Domain Name was registered and is being used in bad faith. According to the Complainant and given its prominence worldwide, the Respondents must have known that the incorporation of the mark GALERIES LAFAYETTE in the Disputed Domain Name would be likely to cause Internet users to believe that it is affiliated with the Complainant. The Complainant submits that the Respondents’ bad faith is exacerbated by the fact that the website to which the Disputed Domain Name resolves includes sponsored links relating to clothing and accessories, thereby creating further false associations between the Complainant and the Disputed Domain Name.
The Complainant submits that the Respondents attempt to attract, for commercial gain, internet users to the website to which the Disputed Domain Name resolves by creating the likelihood of confusion with the Complainant’s GALERIES LAFAYETTE trade mark as set out above.
The Complainant contends that a further indication of bad faith is the Respondents’ registration of the Disputed Domain Name after establishment of the Complainant’s earlier user rights and that it is inconceivable that the Respondents chose to register the Disputed Domain Name without knowledge of the Complainant’s activities and the GALERIES LAFAYETTE trade mark.
The Complainant contends finally that the fact that the Registrants elected for the Disputed Domain Name’s Whois data to be masked by a privacy shield, combined with all the elements set out above, indicates bad faith on the Respondents’ part.
The Complainant requests that the Disputed Domain Name be transferred to it. B. Respondent
The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove:
i) that the Disputed Domain Name is identical or confusingly similar to the mark in which it has rights;
ii) that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Name;
iii) that the Disputed Domain Name has been registered and is being used in bad faith.
In accordance with paragraph 14(b) of the Rules, the Panel will draw such inferences from the Respondents’ default as it considers appropriate. This will include the acceptance of plausible evidence of the Complainant which has not been disputed. A. Identical or Confusingly Similar
The Panel finds on the evidence and as established by previous Panels in matters concerning this Complainant’s trade mark, namely Societe Anonyme des Galeries Lafayette v Charlie Kalopungi / Moniker Privacy Services, Registrant [2997295],WIPO Case No. D2010-1236; Societe Anonyme des Galeries Lafayette v Anne-Isern-Gagniere,WIPO Case No. D2005-0474; Societe Anonyme des Galeries Lafayette v SARL Impedance, WIPO Case No. D2005-0236; Societe Anonyme des Galeries Lafayette and Galeries Lafayette Voyages v Domains by Proxy, Inc. / Reinhard Herrmann, WIPO Case No. D2009-0904; Societe Anonyme des Galeries Lafayette v Monsieur Abdesslam Mekouar, WIPO Case No. DMA2010-0001 that the Complainant owns both registered and common law rights in the trade mark GALERIES LAFAYETTE and also that this trade mark is well known and famous world wide.
The Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s GALERIES LAFAYETTE trade mark. The only difference between the Complainant’s trade mark and Respondents’ domain name is the addition of the extra letters “www” in the Disputed Domain Name which do not, taking into account sound, sight and overall impression, assist the Respondents in escaping a finding of confusing similarity.
The first requirement of paragraph 4(a) of the Policy is satisfied. B. Rights or Legitimate Interests
The Panel considers that the Respondents’ use of the Disputed Domain Name is not in connection with the bona fide offering of goods and services, such as to confer on the Respondents rights or legitimate interests for the purposes of the Policy. On the contrary, the use of the Disputed Domain Name takes unfair advantage of the extensive reputation of the Complainant’s GALERIES LAFAYETTE trade mark and of the Disputed Domain Name’s identity to or confusing similarity with that trade mark, in order to divert Internet users seeking information about the Complainant and its services to the Respondents’ website.
The Panel further finds that the Respondents are not commonly known by the Disputed Domain Name, that they are not making legitimate, non-commercial or fair use of the Disputed Domain Name, that they are not authorized by the Complainant to use the Disputed Domain Name and that there is no other basis on which they could claim to have rights or legitimate interests in the Disputed Domain Name in this case.
The second requirement of paragraph 4(a) of the Policy is satisfied. C. Registered and Used in Bad Faith
The Panel finds on the evidence that the Respondents are intentionally attracting Internet users to their website by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship and affiliation or endorsement of the Respondents’ website. In the Panel’s view, Internet users seeking information about the Complainant’s goods or services are liable to be diverted by confusion between the Disputed Domain Name and the Complainant’s mark, to the Respondents’ website. This allows the Respondents to profit from and exploit the goodwill associated with the Complainant’s GALERIES LAFAYETTE trade mark. Acts of this nature, particularly those concerning well-known marks such as GALERIES LAFAYETTE, constitute classical forms of cybersquatting and are the very reason why policies and procedures such as those found in the UDRP had to be established.
In accordance with paragraph 4(b)(iv) of the Policy, the Panel is satisfied that there is evidence of registration and use of the Disputed Domain Name in bad faith. There is no evidence displacing this presumption.
The third requirement of paragraph 4(a) of the Policy has been met. 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 Name be transferred to the Complainant.
Charné Le Roux
Sole Panelist
Dated: May 18, 2012
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