The Complainant is Ladurée International SA of Enney, Switzerland, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Andrew White of Melbourne, Australia. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , , , and are registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 26, 2016. On May 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 27, 2016, 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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 2, 2016. In accordance with paragraph 5 of the Rules, the due date for Response was June 22, 2016. On June 18, 2016, the Respondent submitted an informal email communication to the Center, stating he consented to the remedy requested by the Complainant. On June 20, 2016, the Center acknowledged receipt of the Respondent's email communication. On the same day, the Complainant requested a 30-day suspension of the proceedings to allow the Parties to discuss settlement. The Center confirmed on June 20, 2016 that the administrative proceeding was suspended until July 20, 2016.
On June 20, 2016, the Complainant signed a Standard Settlement Form and the Respondent was invited to add his signature, but failed to do so. Throughout July 2016, the Respondent sent emails consisting of incomplete Standard Settlement Forms. On July 18, 2016, the Complainant asked that the proceedings be reinstituted, and the Center confirmed reinstitution of the proceedings on July 19, 2016. The Respondent was allowed to submit a further Response until July 24, 2016. No further communication or Response was received by the Center. Accordingly, the Center notified the parties of the commencement of the Panel appointment process on July 25, 2016.
The Center appointed Brigitte Joppich as the sole panelist in this matter on August 1, 2016. The Panel finds that it was properly constituted. The Panel submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. 4. Factual Background
The Complainant is a French luxury patisserie founded in 1862. Today, the Complainant maintains 85 shops in 45 cities across more than 25 countries worldwide, including two shops in Australia, where the Respondent is located. The Complainant's most famous products are macarons, which the Complainant produces in a quantity of more than 50,000 per day for sale in its Parisian shops. In addition to its macaron and pastry products, the Complainant also offers further goods for sale, including chocolates, tea, delicatessen, personal and home fragrance products, bath and body products, jewelry, and other luxury gifts and home goods.
The Complainant owns several trademark registrations for LADUREE, inter alia, International trademark registration no. 827779, registered on June 22, 2004 for goods and services in classes 30 and 43 and designating, inter alia, Australia (the "LADUREE Mark"). In addition, the Complainant owns various domain names across numerous Top-Level Domains ("TLDs") containing its LADUREE Mark and variations thereof, including .
The disputed domain names were all registered on July 31, 2012. The disputed domain names , , , , , , and were previously used to redirect Internet users to the Respondent's website offering macarons, and today point to a parking website provided by the registrar of the disputed domain names featuring links to third-party websites, some of which are competing directly with the Complainant's business. The disputed domain names , , , , , , , and have only been used in connection with the aforementioned parking website.
The Complainant first tried to contact the Respondent on March 14, 2016 through a cease-and-desist letter. On the very same day, the Complainant received a response in which the Respondent stated that the disputed domain names no longer resolved to the Respondent's website. Several additional emails were exchanged but the matter could not be resolved. 5. Parties' Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case.
(1) The disputed domain names are all confusingly similar to the LADUREE Mark, as the additional generic and geographical terms are all related to the Complainant's business and only serve to underscore and increase the confusing similarity between the disputed domain names and the LADUREE Mark. In addition, the Complainant argues that the TLDs ".com" and ".net" do not affect the domain names for the purpose of determining whether they are identical or confusingly similar either.
(2) The Respondent has no rights or legitimate interests in the disputed domain names as he is not sponsored by or affiliated with the Complainant in any way, as the Complainant has not given the Respondent permission to use the LADUREE Mark in any manner, as the Respondent is not commonly known by the disputed domain names, and as the Respondent is making neither a bona fide offering of goods or services nor a legitimate, noncommercial fair use of the disputed domain names.
(3) The Complainant states that the disputed domain names were registered and have been used in bad faith. With regard to bad faith registration, the Complainant argues that the Complainant and its LADUREE Mark are known internationally, that the Respondent knew, or at least should have known, of the existence of the LADUREE Mark at the time of registration of the disputed domain names, and that registration of domain names containing a well-known trademark constitutes bad faith per se. With regard to bad faith use, the Complainant contends that the Respondent's use of the disputed domain names in connection with a website featuring advertising links for third parties' websites is evidence of bad faith use under paragraph 4(b)(iv) of the Policy. Furthermore, the Complainant states that the Respondent's use of the disputed domain names , , , , , and constitutes a disruption of the Complainant's business and qualifies as bad faith registration and use under paragraph 4(b)(iii) of the Policy because such domain names are confusingly similar to the LADUREE Mark and because the websites previously available at these domain names offered goods for sale which were in direct competition with the Complainant's own offerings. In addition, the Complainant argues that the number of infringing domain names registered by the Respondent demonstrates that the Respondent is engaging in a pattern of cybersquatting, which is also evidence of bad faith registration and use. B. Respondent
The Respondent offered to transfer the disputed domain names to the Complainant in an email communication, but did not file a formal Response to the Complaint. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain names are identical or confusingly similar to the Complainant's trademark; 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 disputed domain names fully incorporate the Complainant's highly distinctive LADUREE Mark and are confusingly similar to such Mark. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of generic or geographical terms.
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among UDRP panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent's rights or legitimate interests in the disputed domain name will then shift to the respondent. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain names. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain names.
Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent either. The Respondent used the disputed domain names in connection with websites offering competing products and in connection with parking websites with advertising links for third parties' websites. Such use does not constitute rights or legitimate interests under paragraph 4(c)(i) of the Policy.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain names under paragraphs 4(a)(ii) and 4(c) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which can be evidence of the registration and use of the disputed domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or 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 that complainant, for valuable consideration in excess of the respondent's 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 its website or location.
The Panel is satisfied that the Respondent registered the disputed domain names with full knowledge of the Complainant and its rights in the LADUREE Mark as it used some of the disputed domain names in connection with the sale of macarons, which are the Complainant's most famous product. Given that macarons are a niche product, it is inconceivable that the Respondent registered the disputed domain names containing the highly distinctive LADUREE Mark without knowledge of the Complainant. In addition, all of the disputed domain names contain additional descriptive or geographical terms which may be considered as targeting the Complainant's business.
As to bad faith use, by fully incorporating the LADUREE Mark into the disputed domain names and by using such domain names in connection with websites offering competing products and parking websites respectively, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant's website to its own for commercial gain as set out under paragraph 4(b)(iv) of the Policy.
Therefore, the disputed domain names were registered and are being used in bad faith, and the Complainant has thus satisfied the requirements of paragraph 4(a)(iii) of the Policy as well. 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 , , , , , , , , , , , , , and , be transferred to the Complainant.
Brigitte Joppich
Sole Panelist
Date: August 13, 2016
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