The Complainant is Société Anonyme des Galeries Lafayette of Paris, France, represented by Dreyfus & associés, France.
The Respondent is Mr Galeries Lafayette of Paris, France. 2. The Domain Name and Registrar
The disputed domain name is registered with Key-Systems GmbH dba (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2018. On May 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 15, 2018, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 7, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 8, 2018.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on June 26, 2018. 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 French group founded in 1895, and operates fashion stores, especially in Paris, offering a wide range of products and services.
The Complainant owns 280 stores in France and all over the world, employs 16,000 employees, attracts 1 million persons per day and its retail sales represent EUR 4.5 billion.
The Complainant is the owner of numerous trademarks (thereafter the “GALERIES LAFAYETTE trademarks”) such as:
- the French trademark GALERIES LAFAYETTE, no. 1502755, registered on December 9, 1988, duly renewed in classes 1 to 42;
- the European Union trademark GALERIES LAFAYETTE, no. 003798147, registered on May 19, 2006, duly renewed 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 and 45;
- the European trademark GALERIES LAFAYETTE, no. 012602652, registered on August 27, 2014 in classes 18, 25, 35 and 45.
The Complainant also registered the domain name on August 1, 1997, in order to promote its services.
The disputed domain name was registered by the Respondent on December 8, 2017.
At the time the Complaint was filed, the disputed domain name pointed to an inactive page.
The Panel is requested to transfer the disputed domain name to the Complainant. 5. Parties’ Contentions A. Complainant
In accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complainant relies are set out below.
First, the Complainant argues that the disputed domain name is identical or at least confusingly similar to its GALERIES LAFAYETTE trademarks, since it reproduces the GALERIES LAFAYETTE mark in its entirety with the addition of the adjective “pro” which means professional and is a generic term.
The Complainant also recalls that it and its GALERIES LAFAYETTE trademarks enjoy a worldwide reputation.
Secondly, the Complainant considers that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since the Respondent is neither affiliated with the Complainant, nor is the Respondent authorized to use and register the Complainant’s trademarks or to seek registration of any domain name incorporating them.
The Complainant also underlines that the Respondent has no prior rights or legitimate interests in the disputed domain name, which has been registered years after the registration of the GALERIES LAFAYETTE trademarks.
The Complainant adds that the Respondent has impersonated it when registering the disputed domain name, using “Mr Galeries Lafayette” as registrant name, which cannot be considered as a legitimate interest or confer rights as it is in itself a violation of the law.
Moreover, the Complainant asserts that, given that the disputed domain name points to an inactive page, it cannot be inferred that the Respondent is making a legitimate noncommercial or fair use of disputed domain name.
The Complainant highlights that the Respondent never answered the letter by which the Complainant previously tried to resolve the matter amicably despite its reminders.
Finally, the Complainant argues that the disputed domain name was registered and is being used in bad faith for several reasons.
Indeed, according to the Complainant, the Respondent knew or should have known of the Complainant’s GALERIES LAFAYETTE trademark rights given the fact that it is well-known throughout the world and that at least a quick search would have revealed its existence to the Respondent.
Furthermore, the Complainant underlines that the address of the Respondent does not exist and that its name, Mr Galeries Lafayette, is very suspect, showing bad faith in registering and using of the disputed domain name.
To demonstrate that the disputed domain name is being used in bad faith, the Complainant notably emphasizes the fact that this use had not been authorized and that the likelihood of confusion between the disputed domain name and the GALERIES LAFAYETTE trademarks has probably led to the diversion of Internet traffic from its website to that of the Respondent.
Finally, to the Complainant, it is likely that the Respondent registered the disputed domain name in order to prevent the Complainant from using it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the complainant shall prove the following three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark 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 name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the complainant shall prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
First, the Panel finds that the Complainant has provided evidence that it has rights in the GALERIE LAFAYETTE trademarks.
Then, the Panel notices that the disputed domain name is composed of the distinctive elements “Galeries Lafayette”, which is the exact reproduction of the GALERIES LAFAYETTE trademarks, the term “pro” that refers to the descriptive term “professional” and the generic Top-Level Domain (“gTLD”) “.info”.
The Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. 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 (See section 1.7 of the WIPO Overview of WIPO Panel Views on selected UDPR Questions, Third Editions (“WIPO Overview 3.0”)).
Furthermore, the Panel concurs with the opinion of several prior UDRP panel decisions which have held that the fact that a domain name wholly incorporates a complainant’s registered trademark may be sufficient to establish confusing similarity for purposes of the Policy (see, e.g., Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Bayerische Motoren Werke AG v. ,WIPO Case No. D2002-0615; RapidShare AG, Christian Schmid v. InvisibleR, Domain Admin,WIPO Case No. D2010-1059; Hoffmann-La Roche Inc., Roche Products Limited v. Vladimir Ulyanov,WIPO Case No. D2011-1474; Swarovski Aktiengesellschaft v. mei xudong,WIPO Case No. D2013-0150).
Regarding the disputed domain name , the Panel finds that the addition of the descriptive term “pro” to the GALERIES LAFAYETTE trademark is not sufficient to exclude confusing similarity. Where the GALERIES LAFAYETTE trademarks are recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element (See section 1.8 of the WIPO Overview 3.0 and LEGO Juris A/S v. DBA David Inc/ DomainsByP,WIPO Case No. D2011-1290).
Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain name is confusingly similar to the Complainant’s trademarks. B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the complainant shall demonstrate that the respondent has no rights or legitimate interests in respect of the disputed domain name.
The Policy, paragraph 4(c), outlines circumstances that if found by the panel to be proved shall demonstrate the respondent’s rights or legitimate interests in the disputed domain name.
These circumstances are:
- before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
- the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
- the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
According to prior UDRP panel decisions, it is sufficient that the complainant shows prima facie that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Indeed, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out prima facie that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (See section 2.1 of the WIPO Overview 3.0).
According to the Panel, the Complainant has shown prima facie that the Respondent is not affiliated with the Complainant and has not been permitted, licensed or otherwise authorized by the Complainant to use its GALERIES LAFAYETTE trademarks.
The Complainant having established prima facie that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production has been shifted to the Respondent.
However, it turns out that the Respondent has not provided any answer to the Complainant’s contentions.
Therefore, according to the Policy, paragraph 4(a)(ii) and 4(c), the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain name . C. Registered and Used in Bad Faith
According to the Policy, paragraph 4(a)(iii), the complainant shall prove that the disputed domain name has been registered and are being used in bad faith.
Thus, paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 domain name; or
(ii) the respondent has registered the 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 domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the 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 the respondent’s website or location.
First, the Panel finds that the Respondent could not have been unaware of the Complainant’s prior trademarks at the time of the registration of the disputed domain name, given the strong reputation of the GALERIES LAFAYETTE trademarks, which have been registered long before the registration of the disputed domain name.
Secondly, according to the Panel, it is very likely that “the Galeries Lafayette” is not the real name of the Respondent, since “Galeries” does not constitute a French name.
The Panel therefore finds that the Respondent registered the disputed domain name in bad faith.
Then, and in light of the evidence provided by the Complainant, the Panel finds that the disputed domain name is not currently used since it points to an inactive page, but wishes to remind that such “passive holding” does not prevent a finding of bad faith, since according to prior UDRP panel decisions the panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith (See section 3.3 of the WIPO Overview 3.0 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Indeed, the Panel considers the passive holding of the disputed domain name proves that the Respondent acts in bad faith. The particular circumstances of this case which lead to this conclusion are:
- the Complainant’s trademark has a strong reputation and is well-known;
- the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name;
- the Respondent has not provided any answer to the Complainant’s contentions;
- the Respondent has provided false contact details to register the disputed domain name (in breach of its registration agreement);
- taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated use of the disputed domain name by the Respondent that would not be illegitimate, such as by being an infringement of the Complainant’s rights under trademark law.
The Panel considers that the disputed domain name is being used in bad faith.
Therefore, in view of all the circumstances of this case the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith according to the Policy, paragraph 4(a)(iii) and 4(b). 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.
Christiane Féral-Schuhl
Sole Panelist
Date: July 11, 2018
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