The Complainant is Société Anonyme des Galeries Lafayette of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Eac International Co. Limited, Jiaai of New South Wales, Sydney, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 17, 2014. On April 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 17, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 the Respondent of the Complaint, and the proceedings commenced on April 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 14, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 21, 2014.
The Center appointed Keiji Kondo as the sole panelist in this matter on May 30, 2014. 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 Société Anonyme des Galeries Lafayette of Paris is the owner of famous fashion stores Galeries Lafayette.
The Complainant owns nearly 250 stores located in all over the world and employs over 15,000 employees. Moreover, Galeries Lafayette attracted 27 million visitors on its websites in 2012.
The disputed domain name was registered on January 26, 2013.
The Complainant owns many GALERIES LAFAYETTE trademark registrations across the world before the Respondent registered the disputed domain name. 5. Parties' Contentions A. Complainant (1) Identical or confusingly similar
The Complainant owns many GALERIES LAFAYETTE trademarks. The Complainant and GALERIES LAFAYETTE trademark enjoy a worldwide reputation.
The Complainant operates domain names reflecting its trademarks in order to promote its services.
The disputed domain name reproduces the Complainant's trademark in its entirety. There has been no attempt to reduce the likelihood of confusion. It is likely that the disputed domain name could mislead Internet users into thinking that it is, in some way, associated with the Complainant.
Further, the addition of ".biz" is considered as a descriptive suffix commonly used as generic Top-Level Domain ("gTLD") not constituting a prominent portion in a domain name and has merely a technical function. Consequently, the ".biz" gTLD is not taken into account during the assessment of identity or confusing similarity.
For all of the above mentioned reasons, the disputed domain name in disputed is identical or at least confusingly similar to the trademark GALERIES LAFAYETTE in which Complainant has rights. (2) Rights or legitimate interests
The Respondent is not in any way affiliated with the Complainant, nor has the Complainant authorized or licensed the Respondent to use its trademark, or to seek registration of any domain name incorporating the said trademark.
The registration of the GALERIES LAFAYETTE trademark preceded the registration of the disputed domain name for years. Moreover, the Respondent is not commonly known by the name "Galeries Lafayette", in any way affiliated with the Complainant, nor authorized or licensed to use the said trademark or to seek registration of any domain name incorporating the said trademark.
In addition, the Respondent did not demonstrate use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services. The domain name in dispute directs Internet users to a parking page with pay-per-clicks which are likely to generate revenues.
Considering the exchanges with the Respondent (Annex 7 of the Complaint), it appears that the only reason why the Respondent has registered the disputed domain name is for the purpose of selling it to the Complainant for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name.
For all of the above-cited reasons, it is undoubtedly established that the Respondent has no rights or legitimate interests in respect of the domain name in dispute. (3) Bad faith registration and used of the disputed domain name
(a) Registration in bad faith
GALERIES LAFAYETTE is a well-known trademark throughout the world.
In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcends national borders.
A quick GALERIES LAFAYETTE trademark search would have revealed to the Respondent the existence of the Complainant and its trademarks.
In light of the reputation of the Complainant's trademark, taking into account the worldwide reputation of the Complainant and its trademark, it is hard to believe that the Respondent was unaware of the existence of the Complainant and its trademark at the time of registration of the disputed domain name.
Consequently, in view of the abovementioned circumstances, it is established that the Respondent registered the disputed domain name in bad faith.
(b) Use in bad faith
There is little doubt in this case that, at all times, the Respondent was aware that GALERIES LAFAYETTE enjoyed a substantial reputation worldwide and specifically in Australia. The Respondent is taking undue advantage of the Complainant's trademark to generate profits. The use of a well-known trademark to attract Internet users to a website for commercial gains constitutes a use in bad faith. In addition, there is no indication of the Respondent's own activities on the aforementioned site.
The Respondent uses the disputed domain name to direct Internet users to a webpage displaying commercial links related to fashion accessories notably those of the Complainant and its competitors.
The clear inference to be drawn from the Respondent's primary motive in registering and using the disputed domain name was to capitalize on or otherwise take advantage of the Complainant's trademark rights, through the creation of initial interest of confusion.
In exchanges, the Respondent offer to sell the domain name for a sum of "1590 EUR" or "900 EUR" which are in excess of the Respondent's out of pocket expenses in registering the domain name.
Besides, there is an indication on the parking page that the disputed domain name is listed for sale. This set of behavior is a strong indication that the Respondent hoped to sell the domain name to the Complainant or to a competitor of the Complainant which is a clear evidence of registration and use in bad faith.
Consequently, it is established that the Respondent both registered and used the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant's registrations of the GALERIES LAFAYETTE trademark precede the registration of the disputed domain name by years.
At the time of the registration of the disputed domain name the Complainant had registered GALERIES LAFAYETTE trademark in many countries.
The GALERIES LAFAYETTE trademark is highly well-known.
The disputed domain name reproduces the Complainant's trademark in its entirety. Further, the ".biz" gTLD does not typically impact a finding of confusing similarity.
Therefore, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's trademark.
The first element of the UDRP is therefore satisfied. B. Rights or Legitimate Interests
No license or authorization of any kind has been given by the Complainant to the Respondent, to use the GALERIES LAFAYETTE trademark.
The Respondent is not commonly known by the name "Galeries Lafayette" in any way.
The disputed domain name resolves to a parking page displaying commercial links, and some of them are related to fashion accessories notably those of the Complainant. The Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services.
Therefore, the Panel concludes that the Respondent has no rights or legitimate interests with the disputed domain name. C. Registered and Used in Bad Faith
GALERIES LAFAYETTE was already well-known when the disputed domain name was registered.
In light of the reputation of the Complainant's trademark, it is unlikely that the Respondent was not aware of the trademark at the registration of the disputed domain name.
The disputed domain name is solely comprised of the trademark and the gTLD ".biz".
The disputed domain name resolves to a parking page displaying commercial links, and some of them are related to the Complainant's business. These pay-per-click links are likely to generate revenues to the Respondent.
Under the circumstances, it is reasonably inferred that the disputed domain name was registered and used by the Respondent in bad faith, pursuant to paragraph 4(b)(iv) of the Policy and that the Respondent' intention was to try to commercially benefit from the fame of the Complainant's trademark.
In addition to the indication on the parking page that the disputed domain name is listed for sale, in exchanges between the Complainant and the Respondent, the Respondent offer to sell the domain name for a sum of "1590 EUR" or "900 EUR" which are in excess of the Respondent's out of pocket expenses in registering the domain name.
Therefore, the Panel concludes that the disputed domain name was registered and has been used 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 name be transferred to the Complainant.
Keiji Kondo
Sole Panelis
Date: June 16, 2014
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