The Complainant is Lagardere SCA of Paris, France, represented by Markplus International, France.
The Respondent is Jie Ke of Fuzhou, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with A Singapore E-Commerce Private Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2018. Later the same day, the Center transmitted by email, to the Registrar, a request for registrar verification in connection with the disputed domain name. On September 27, 2018, the Registrar 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 September 27, 2018 which provided the registrant and contact information disclosed by the Registrar and also invited the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 28, 2018. Hereinafter, the Complaint will refer to the amended Complaint, unless the context specifically indicates otherwise.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 that the proceedings commenced on October 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was set to October 21, 2018. The Respondent did not submit any response. Accordingly, on October 22, 2018, the Center notified the Parties of the Respondent’s default.
The Center appointed Peter L. Michaelson as the sole panelist in this matter on October 25, 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
As reflected in the registration record for the disputed domain name in the public WhoIs database (a copy of that record appears in Annex 1 to the Complaint), the disputed domain name was registered on August 2, 2018 and will expire on August 2, 2019. A. The Complainant’s LAGARDERE marks (collectively the “LAGARDERE Marks”)
As indicated in the Complaint, the Complainant owns various national and international trademark registrations worldwide for LAGARDERE in block letters and stylized versions. The Complainant has provided, in Annex 9 to the Complaint, print-outs from the websites of WIPO Madrid database of the registation records of two of its International registrations. Pertinent details of these registrations are as follows:
(1) LAGARDERE (word)
International registration number: 954316
Registered: August 31, 2007
This registration designates multiple jurisdictions, including China, and covers various goods and services in international classes 3, 6, 9, 14, 16, 18, 20, 21, 22, 24, 24, 25, 28, 34, 35, 36, 38, 39, 41, 42, 43, 44 and 45.
(2) LAGARDERE (stylized)
International registration number: 954315
Registered: August 31, 2007
This registration designates the United States of America, Japan, Switzerland and the Russian Federation and covers various goods and services in international classes 3, 6, 9, 14, 16, 18, 20, 21, 22, 24, 25, 28, 34, 35, 36, 38, 39, 41, 42, 43, 44 and 45. B. The Complainant and the Respondent’s website
The Complainant, though having originally started in business in 1826, effectively began its present business operations in 1992 when M. Jean Luc Lagardere began his tenure at its chief officer. Presently, the Complainant operates in the global media sector, specifically now in nearly 40 countries including China where it has a local office in Shanghai, with, as of 2017, annual revenue exceeding EUR 7 billion. The Complainant is structured around four main lines of business: Lagardere Publishing, Lagardere Active, Lagardere Travel Retail and Lagardere Sports and Entertainment, the last of which is a sports and entertainment agency with a global network of local experts specialized in sport and talent management, event management and marketing of sports broadcast rights. See the corporate information provided by and describing the Complainant and its operations and appearing in Annex 8 to the Complaint.
The Complainant, as one means to promote its goods and services, owns the domain names, among others, which it registered on August 2, 1995 and which it registered on July 24, 2015, and currently operates websites to which these domain names resolve. Print-outs of the WhoIs records for these domain names appear in Annex 10 to the Complaint.
The Respondent has not used the disputed domain name, since its registration, to resolve to an operable website. The Complainant notes that email servers have been configured to send and receive mail originating from and destined to email addresses based on the disputed domain name. 5. Parties’ Contentions A. Complainant
(i) Identical or Confusingly Similar
The Complainant contends that the disputed domain name is confusingly similar to its mark LAGARDERE.
Specifically, the name contains this mark but in which the letter “d” has been replaced by the letter “b” and to which the suffix “-se” has been appended. As the letters “b” and “d” are phonetically rather close, this substitution is simply typosquatting. Further, the letters “se” can be viewed as an abbreviation for “sports and entertainment” which constitutes one of the Complainant’s lines of business. Adding these letters was not coincidental, as the Complainant owns the domain name and operates a website under that domain name. Consequently, the disputed domain name creates a likelihood of confusion with the Complainant’s mark LAGARDERE. The addition of the generic Top-Level Domain (“gTLD”) “.com” to form the disputed domain name is irrelevant for purposes of assessing confusing similarity under the Policy.
Thus, the Claimant believes that it has satisfied the confusing similarity/identity requirement in paragraph 4(a)(i) of the Policy.
(ii) Rights or Legitimate Interests
The Complainant contends that, for either of two reasons, the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraphs 4(a)(ii) and 4(c) of the Policy.
Specifically, the Respondent is not affiliated with nor is it authorized by the Complainant in any way to use any of its LAGARDERE Marks, including in a domain name.
Furthermore, each of the LAGARDERE Marks includes the last name of the founder of the Complainant, M. Jean Luc Lagardere. The Complainant has been in business and globally operating under its LAGARDERE Marks for many years prior to August 2, 2018, when the Respondent registered the disputed domain name, and over those years its marks have developed considerable global recognition.
Moreover, as the Complainant maintains a business presence in Shanghai, the Respondent, located in China, was aware of the mark LAGARDERE and, in spite of that knowledge, chose to register a domain name that is a misspelled variant of that mark. Thus, the Respondent was never commonly known by the disputed domain name and could never be, thus failing to qualify under paragraph 4(c)(ii) of the Policy.
As the Respondent’s website has been inactive since it registered the disputed domain name, the Respondent has not made any demonstrable preparations to use the disputed domain name, let alone any actual use of the disputed domain name. Nor has the Respondent made any legitimate noncommercial or fair use of the disputed domain name. Hence, the Respondent fails to qualify under paragraph 4(c)(i) or 4(c)(iii) of the Policy and thus has no rights or legitimate interests to the disputed domain name.
In addition, as the Respondent apparently configured email servers to operate with the disputed domain name, this is likely reflective of a future phishing attempt which constitutes an illegitimate use of the disputed domain name.
Consequently, under the present facts of record, there is simply no plausible actual or contemplated use by the Respondent of the present disputed domain name that would be legitimate under paragraph 4(c) of the Policy.
(iii) Registered and Used in Bad Faith
The Complainant also contends that, for various reasons, the Respondent has registered and is using the disputed domain name in bad faith in violation of paragraph 4(a)(iii) of the Policy.
Specifically, it is implausible that the Respondent was unaware of the Complainant when it registered the name. First, the Complainant is established and well known throughout the world and has recently been present in China, the home country of the Respondent — when the Respondent registered the disputed domain name. This awareness is further evident inasmuch as the disputed domain name contains the suffix “-se” which also appears in the Complainant’s domain name where it is an abbreviation for “sports and entertainment”. It is impossible that the Respondent did not have the Complainant’s LAGARDERE mark, the Complainant’s company name and the Complainant’s domain name in mind when, in spite of this knowledge, the Respondent intentionally registered the disputed domain name. The only purpose which the Respondent had in doing so was to create a misimpression in the minds of Internet users that an association of some sort existed between the Parties, when no such association exists at all, and thereby mislead and confuse those users.
In addition, the Respondent’s deliberate act of typosquatting the Complainant’s mark also reflects bad faith registration.
The following factors, present here and when viewed collectively, reflect bad faith use: the Respondent has not used the disputed domain name since it registered it and hence passively holds it; the name clearly infringes the Complainant’s mark LAGARDERE which enjoys a strong reputation and is widely known, and the Respondent has affirmatively concealed its true identity from the public. B. Respondent
In view of the lack of any Response, this administrative proceeding continued by way of default. Hence, under paragraphs 5(f), 14(a) and 15(a) of the Rules, the Panel decided this proceeding on the basis of the Complainant’s undisputed factual allegations which the Panel finds are not inherently implausible. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark LAGARDERE.
From a simple comparison of the disputed domain name to the Complainant’s mark LAGARDERE, no doubt exists that the disputed domain name is confusingly similar to it. The disputed domain name consists of a misspelled variant of the mark and the addition of the suffix “-se” to form a composite term to which the gTLD “.com” has been appended, with the addition of the “.com” being irrelevant in this case in assessing confusing similarity under paragraph 4(a)(i) of the Policy and thus ignored.
It is now very well-established in prior UDRP cases, including numerous decisions previously rendered by this Panel, that a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to the confusingly similar to the relevant mark for purposes of the first element (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), section 1.9). Here, the Respondent’s misspelling of the Complainant’s mark LAGARDERE as “lagarbere” (substituting the letter “b” for the letter “d” in the mark) and adding the suffix “-se” does not avoid such confusing similarity, as the Complainant’s mark remain recognizable in the disputed domain name. See, e.g., Covestro Deutschland AG v. Kay Mone / KMN INC.,WIPO Case No. D2018-0145;ZB, N.A. dba Amegy Bank v. A Domain Privacy / Host Master, Transure Enterprise Ltd,WIPO Case No. D2017-1268; SAP SE v. Lakshmi Reddy Bhumireddy and P. Hareesh,WIPO Case No. D2017-0396; Compagnie Générale des Etablissements Michelin v. Cameron Jackson,WIPO Case No. D2016-2392; Kumfs Brand Limited v. George,WIPO Case No. D2016-1272; Dubizzle Limited BVI v. Rana Anabtawi,WIPO Case No. D2016-0843; Chicago Mercantile Exchange Inc. and CME Group Inc. v. Domains By Proxy, LLC / Phupinder Gill,WIPO Case No. D2015-1842; Cummins Inc. v. Jamie Lent,WIPO Case No. D2015-0188; Staatliche Porzellan-Manufaktur Meissen GmbH v. Buy Meissen,WIPO Case No. D2013-1687; Forideas Pty Limited v. Movember Organization,WIPO Case No. D2013-1385; AlgaeCal Inc. v. AlgaeCal Fraud,WIPO Case No. D2013-1248; General Motors LLC v. Carol Schadt,WIPO Case No. D2012-2106; National Westminster Bank plc v. Steve Mart,WIPO Case No. D2012-1711; Tommy Bahama Group, Inc. v. Berno Group International,WIPO Case No. D2012-0531; National Association of Realtors v. Hammerberg & Associates, Inc.,WIPO Case No. D2012-0075; Space Needle LLC v. Erik Olson,WIPO Case No. D2011-0931; Clearwire Legacy, LLC v. Leon Ganesh,WIPO Case No. D2010-0148; and Oakley, Inc. v. Kate Elsberry, Elsberry Castro,WIPO Case No. D2009-1286.
Hence, the Complainant has satisfied its burden under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Based on the evidence of record here, the Panel finds that no basis exists which would appear to legitimize a claim of rights or legitimate interests by the Respondent to the disputed domain name under paragraph 4(c) of the Policy.
The Complainant has never authorized the Respondent to utilize any of the Complainant’s LAGARDERE Marks and does not have any relationship, affiliation or connection whatsoever with the Respondent.
Further, with respect to paragraph 4(c)(i) of the Policy, the Respondent does not now use nor has it ever made any demonstrable preparations to use the disputed domain name to resolve to an operational website through which it presently does or will make a bona fide offering of any goods or services. Furthermore, as to paragraph 4(c)(iii) of the Policy, the name is not used in any manner that is either noncommercial or reflective of fair use whatsoever, let alone one that does not provide a potential for commercial gain. In that regard, since the date the Respondent registered the disputed domain name, it has passively held it without using it to resolve to an operational website.
Moreover, as to paragraph 4(c)(ii) of the Policy, the record is entirely devoid of any evidence which reflects that the Respondent is currently or has ever been commonly known by the disputed domain name or any of the Complainant’s LAGARDERE Marks. The Complainant’s LAGARDERE Marks have evidently acquired significant notoreity and reputation in its current lines of business since it registered the mark LAGARDERE on August 31, 2007 and even earlier when it started using the term “Lagardere” in 1992 in connection with its present business operations and potentially as far back as 1826 — each of which occurred, and to some extent considerably, before the date on which the Respondent registered the disputed domain name on August 2, 2018. Hence, the Respondent could not legitimately acquire such a public association or even an association with any mark similar to any of those of the Complainant — at least for the goods and services provided by the Complainant under any of its LAGARDERE Marks — without interfering with the exclusive trademark rights of the Complainant. See, e.g., Alstom v. Zahir Khan, Palki Event Inc.,WIPO Case No. D2017-1124; Compagnie Générale des Etablissements Michelin v. Cameron Jackson, supra; Philip Morris USA Inc. v. Daniele Kanai, iKiss LLC, WIPO Case No. D2015-1527; Valero Energy Corporation and Valero Marketing and Supply Company v. Lisa Katz, Domain Protection LLC / Domain Hostmaster, Customer ID; 62520014085963,WIPO Case No. D2015-0787; Covestro Deutschland AG v. Kay Mone / KMN INC., supra; Chicago Mercantile Exchange Inc. and CME Group Inc. v. Domains By Proxy, LLC / Phupinder Gill, supra; Cummins Inc. v. Jamie Lent, supra; and Staatliche Porzellan-Manufaktur Meissen GmbH v. Buy Meissen, supra.
Consequently, the Panel accepts the Complainant’s submissions under this element and finds that the Respondent does not satisfy any of paragraphs 4(c)(i)-(iii) of the Policy and thus has no rights or legitimate interests in the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that the Respondent’s actions, with respect to the disputed domain name, constitute bad faith registration and use.
Since the Complainant first acquired exclusive trademark rights in its mark LAGARDERE, the mark has acquired considerable goodwill and recognition in the various lines of business in which the Complainant operates as a unique identifier of the Complainant and its goods and services.
Consequently, the Panel infers, particularly from the lack of any substantive response and the Respondent’s very choice of the disputed domain name as a nearly identical, typosquatted version of the Complainant’s mark LAGARDERE (ignoring the suffix “-se” which, from the Panel’s perspective, is a triling additon of no significance to the disputed domain name - particularly in light of the Complainant’s domain name having the same suffix) that the Respondent was very well aware, at the time it registered the disputed domain name, not only of the Complainant and its mark and the substantial reputation and goodwill which that mark acquired and the exclusive rights which the Complainant held in that mark but also of the significant potential of the name to confuse Internet users as to whether some association, affiliation or relationship existed between the Respondent’s website and the Complainant – when, in fact, no such connection actually exists.
Thus, there is simply no question that the registration is abusive and the Respondent exhibited bad faith in doing so.
To date, the Respondent passively held the disputed domain name for a period of approximately three months from August 2, 2018 to the present. During that time, it never used the disputed domain name to resolve to an operational website. A three-month period of passive holding, in and of itself, may generally be too short to constitute bad faith use. However, other relevant factors, apart from just a short period of passive holding, are present here which, when all facts are viewed collectively, decidedly alter that result in favor of a finding of bad faith use.
It is inconceivable to the Panel that, given various characteristics of the mark LAGARDERE, the Complainant’s exclusive rights in that mark and the overwhelming importance of that mark to the Complainant, the Respondent would have any reason to register and then hold the disputed domain name other than to just wait until some future time arises when it could sell the disputed domain name to the Complainant at its desired target price, one that in all likelihood far exceeds its costs of registration and would potentially maximize the pecuniary benefit to the Respondent. Due to the Complainant’s exclusive trademark rights in the mark, the high degree of similarity (nearly identical nature) of the disputed domain name to the mark (as well as to one of the Complainant’s domain names) and the absence of any license or other permission granted by the Complainant to the Respondent authorizing its use of the disputed domain name, it is rather unlikely, under a reasonable extrapolation of the current facts of record, that the Respondent would ever use the disputed domain name in any manner that would not infringe the Complainant’s rights and be legitimate.
Further, the Respondent has absolutely no connection or relationship with the Complainant or any of its goods and services.
Therefore, it stands to reason and so the Panel infers in the absence of any response, that the Respondent’s passive holding is, in actuality, an abusive threat hanging over the head of the Complainant.
Accordingly, the Respondent’s actions, when viewed under the totality of the circumstances present here, reflect bad faith use in violation of paragraph 4(a)(iii) of the Policy. For similar results where UDRP panels, having taken a similar comprehensive view, concluded the passive holding was but one component of broader-based conduct by respondents that collectively evinced bad faith use, see, e.g., Bayer AG v. Gulam Mustafa,WIPO Case No. D2017-0820; and Ladbroke Group Plc v. Sonoma International LDC,WIPO Case No. D2002-0131.
Thus, the Panel concludes that the Complainant has provided sufficient evidence of its allegations, with respect to the disputed domain name to establish a case under the third element of paragraph 4(a) of the Policy upon which the relief it now seeks can be granted. 7. Decision
Accordingly, under paragraphs 4(i) of the Policy and 15 of the Rules, the Panel grants the relief sought by the Complainant.
The disputed domain name is to be transferred to the Complainant.
Peter L. Michaelson
Sole Panelist
Date: November 1, 2018
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