The Complainant is Holding Le Duff “HLD”, France, represented by SCAN Avocats, France.
The Respondent is Maria Nobree, Maria S.A, Belgium. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2019. On September 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 16, 2019, 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 16, 2019, 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 the same day. The Center verified that the Complaint together with 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2019. The Center appointed Christian Schalk as the sole panelist in this matter on October 14, 2019. 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, also known as Group Le DUFF has been established in 1976. It is an International leading company in the bakery café market. According to the Complainant, it owns over 1,658 restaurants and bakeries in more than 80 countries of the world. More than 1 million customers are served daily in the Complainant’s restaurant- and bakeries under brands such as BRIOCHE DORÉE, DEL ARTE, BRUEGGER’S, LA MADELEINE or GOURMING. The total turnover of the Complainant’s group of company amounts to more than two billion Euros. The Complainant offers its services also in the Internet and has received several awards for the quality of its products and for its business success. The Complainant owns among others the following trademark rights - European Union word trademark No. 01146851 GROUPE LE DUFF, filed on April 21, 1999, covering services in International. classes 29, 30, 32, 35 and 42; - European Union word trademark No. 010685816 LE DUFF, filed on February 29, 2012, covering services in International. classes 29, 30, 31, 32, 35, 41, 43 and 44; - European Union word and device trademark No. 010685873 LE DUFF, filed on February 29, 2012, covering services in Intl. classes 29, 30, 31, 32, 35, 41, 43 and 44. Several panelists have found that the Complainant holds well-established rights in the trademark GROUPE LE DUFF and that its trademarks are highly distinctive (see for instance, Holding Le Duff “HLD” v. Franck James,WIPO Case No. D2019-0150; Holding Le Duff “HLD” v. Wang Lian Feng,WIPO Case No. D2018-1002). The Complainant owns also various domain names featuring the Complainant’s LE DUFF trademark, such as The Respondent registered the disputed domain name on June 20, 2019. According to the material brought before the Panel, the disputed domain name resolves to a domain parking page displaying several links written in French language which apparently lead to third parties’ sponsored links related to various categories of interest. 5. Parties’ Contentions A. Complainant The Complainant alleges that the disputed domain name is identical or confusing similar to the Complainant’s trademarks in which it has rights. The Complainant argues that the disputed domain name identically reproduces the Complainant’s LE DUFF prior trademarks to which the word “qroupe” has been added. The Complainant explains in this context that the addition of the word “qroupe” to the Complainant’s LE DUFF prior trademarks in the disputed domain name does not grant self-distinctiveness to its domain name and is insufficient to prevent it from being confusingly similar to the Complainant’s prior LE DUFF trademarks. The Complainant believes that this is especially the case here since the word “qroupe” is likely to be read and understood by Internet users as the term “groupe” which is descriptive and directly refers to the diversity of the Complainant’s activities unified under the legal entity “Holding Le Duff “HLD”. The Complainant states further that the disputed domain name is also confusingly similar to its GROUP LE DUFF trademark since it reproduces almost identically its prior trademark, with replacement of the letter “g” by the letter “q”, which, according to the Complainant is very close from a visual and phonetic point of view. The Complainant explains in this context that the word “qroupe” obviously refers to the word “groupe” and is likely to be read by Internet users as such since these signs are visually and phonetically similar. The Complainant cites in this context Andrey Ternovskiy dba Chatroulette v. Domain Administrator, See PrivacyGuardian.org / Zichao Yang,WIPO Case No. D2019-0792; Hobson, Inc. v. Peter Carrington a/k/a Party Night Inc.,WIPO Case No. D2003-0317 and Ruby Life Inc. v. Domain Admin, Whois Privacy Corp,WIPO Case No. D2019-1456 to support his arguments. The Complainant alleges further that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant believes that the Respondent is not currently and has never been known under the names “Groupe Le Duff” or “Le Duff”. The Complainant states further that the Respondent is not in any way related to the Complainant’s business, does not carry out any activity on behalf of the Complainant nor as the Complainant ever given any authorization or license to any third party to register or to use its GROUPE LE DUFF and LE DUFF trademarks or feature them in a domain name. The Complainant argues also that the disputed domain name was registered and is being used in bad faith. The Complainant refers in this context to the strong reputation and leading position of its GROUPE LE DUFF- and LE DUFF prior trademarks in France and abroad in the field of restaurants and bakery café market. Therefore, the Complainant believes that the Respondent knew of the existence of the Complainant’s prior intellectual property rights at the time the disputed domain name was registered. In order to underline this argument, the Complainant states that its GROUPE LE DUFF and LE DUFF trademarks are used in commerce since 1976 and therewith many years before the registration of the disputed domain name. It is the similar with the Complainant’s domain names featuring the terms “groupe le duff” and “le duff”. The Complainant continues that had the Respondent carried out a search via Google or any other search engine using the keywords “groupe le duff” and “le duff”, then the Respondent should have been clearly aware of the Complainant’s activities under the denominations “groupe le duff” and “le duff” when it registered the disputed domain name. Therefore, the Complainant concludes that it is highly unlikely that the Respondent was unaware of the existence of the Complainant and its well-known reputation in the field restaurant and bakery café market and its trademark rights, when it registered the disputed domain name. Furthermore, the Complainant is convinced that the registration of the disputed domain name by the Respondent was not accidental but primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant or to a competitor, for valuable consideration in excess of the Complainant’s costs. The Complainant states also that the Respondent is using the disputed domain name in bad faith since it resolves to a domain parking page displaying several links written in French language which lead to third parties’ sponsored links related to various categories of interest and referring to a generic privacy policy which is not linked to the Respondent. The Complainant continues in this context that although the generation of revenue from domain name parking or other advertising activities is not necessarily activity in bad faith, it is different where a registrant is using the disputed domain name in this manner because of its similarity to the Complainant’s trademarks in the hope and expectation that such similarity would lead to confusion on the part of Internet users and result in an increased number of Internet users being drawn to that domain name parking page. The Complainant cites in this context Paris Hilton v. Deepal Kumar,WIPO Case No. D2010-1364 and Whatsapp, Inc. v. Naresh Jagani,WIPO Case No. D2019-1631, to support his arguments. Furthermore, the Complainant refers to it’s strong reputation and the fact that the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name and states that this is also an indication of bad faith use. The Complainant cites in this context Telstra Corporation Limited v/ Nuclear Marshmallows,WIPO Case No. D2000-0003. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Panel finds that the Complainant has established trademark rights in the terms GROUPE LE DUFF and LE DUFF which have been registered by trademark offices of many countries of the world. The disputed domain name is also confusingly similar to the Complainant’s trademark rights in GROUPE LE DUFF and LE DUFF. As it has been decided by previous UDRP Panels, incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see, for instance, Yahoo! Inc. v. Blue Q Ltd., Romain Barissat,WIPO Case No. D2011-0702; Casa Editorial El Tiempo, S.A. v. Montanya Ltd,WIPO Case No. D2009-0103; Todito.com, S.A. de C.V. v. Francisco Gómez Ceballos,WIPO Case No. D2002-0717; Bayerische Motoren Werke AG v. bmwcar.com,WIPO Case No. D2002-0615; Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA,WIPO Case No. D2002-0504; Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; and EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047). The disputed domain name features the word Mark LE DUFF in its entirety. Furthermore, in accordance with many decisions rendered under the Policy, the addition of descriptive terms to a trademark does not prevent a finding of confusing similarity (see Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis,WIPO Case No. D2000-1807; Bellsouth Intellectual Property Corporation v. Henry Chan,WIPO Case No. D2004-0550; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims,WIPO Case No. D2000-0819; Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0565; Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0624; and Toyota France and Toyota Motor Corporation v. Computer-Brain,WIPO Case No. D2002-0002). As set out in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), “[w]here the relevant trademark is 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. The nature of such additional term(s) may however bear on assessment of the second and third elements”. Therefore, the addition of the term “qroupe” which is visually and phonetically nearly identical to the French term “groupe” and to the English term “group” does not prevent a finding of confusing similarity with the Complainant’s trademark. The term “groupe” (or in English: “group”) is commonly used in the field of business to identify a holding company which usually consists of a number of legal entities which are controlled by a mother company. The disputed domain name features also the Complainant’s trademark GROUPE LE DUFF in its entirety. The only difference between the Complainant’s GROUPE LE DUFF trademark and the disputed domain name is the first letter of the disputed domain name, where the letter “g” has been replaced by the letter “q”. This difference is, however, only of a very minor nature and thus has no relevance for the determination of confusing similarity between the disputed domain name and the Complainant’s trademark GROUPE LE DUFF. In addition, the generic Top-Level Domain (“gTLD”) “.com” in the disputed domain name does not affect the determination that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks GROUPE LE DUFF and LE DUFF in which the Complainant has rights (see also Compagnie Générale des Etablissements Michelin v. Trendimg,WIPO Case No. D2010-0484; Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp.,WIPO Case No. D2001-0936; and Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan,WIPO Case No. D2001-0615 and cases cited therein). It is well-established that gTLDs such as “.com” are generally disregarded when determining if there is identity or confusing similarity. For all these reasons, the Panel finds that the Complainant has fulfilled the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Based on the submissions and materials filed in this case, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. It is the consensus view of UDRP panels that once the complainant has made out a prima facie showing on this element, the burden of production shifts to the respondent (see section 2.1 of the WIPO Overview 3.0); Ustream.TV, Inc. v. Vertical Axis, Inc,WIPO Case No. D2008-0598; mVisible Technologies, Inc v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141; and Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415. The Respondent has not provided any evidence of circumstances specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Specifically, the Panel finds no evidence that the Respondent has been or is commonly known by the disputed domain name. The Respondent is neither affiliated with the Complainant nor has a license to use its trademark. The Respondent has also not provided the Panel with any substantial explanations as to the Respondent’s rights or legitimate interests in the disputed domain name. In accordance to the material brought before the Panel, the Respondent has directed the disputed domain name to a domain parking page displaying several links written in French language which apparently lead to third parties’ sponsored links related to various categories of interest. It is by now well established that pay-per-click (“PPC”) parking pages built around a third party’s trademark do not constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, nor do they constitute a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) (see Ustream.TV, Inc. v. Vertical Axis, Inc,WIPO Case No. D2008-0598; mVisible Technologies, Inc v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141; Mobile Communication Service Inc v. WebReg, RN,WIPO Case No. D2005-1304; Gerber Products Co. v. LaPorte Holdings,WIPO Case No. D2005-1277; Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; Champangne Lanson v. Development Services/MailPlanet.com,WIPO Case No. D2006-0006; The Knot, Inc. v. In Knot we Trust Ltd,WIPO Case No. D2006-0340). Internet users who search for the Complainant’s services may easily oversee the typo in the disputed domain name and get directed to the parking page to which the disputed domain name resolves. When they then click on one of the links, this may create already a certain income directly or indirectly to the benefit of the Respondent. Therefore, the Panel is convinced that the only reason for the Respondent to register the disputed domain name was, on balance, to capitalize on the Complainant’s goodwill by redirecting Internet traffic intended for the Complainant away from it. Such behaviour cannot constitute a bona fide or legitimate use of the disputed domain name (see also Bright Imperial Ltd. V. Cleiton da Silva Pardim,WIPO Case No. D2013-1548). In addition, searches for the terms GROUPE LE DUFF or LE DUFF in a search engine such as Google revealed the Complainant’s services in a prominent manner. The Panel is therefore convinced that the Respondent was aware of the Complainant when it registered the disputed domain name and the Panel can find no plausible circumstances in which the Respondent could legitimately use the disputed domain name (see also Microsoft Corporation v. Superkay Worldwide, Inc.,WIPO Case No. D2004-0071). For all these reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and therefore, the requirement of paragraph 4(a)(ii) of the Policy is met. C. Registered and Used in Bad Faith The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Policy, paragraph 4(b) sets forth four non-exclusive circumstances, which evidence bad faith registration and use of a domain name: (i) circumstances indicating that the Respondent has registered or has 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 owner of the trademark or service mark or to a competitor of the 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 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 its website or location or of a product or service on its website or location. The Panel finds that the Respondent must have been aware of the Complainant’s trademark and its services when it registered the disputed domain name. The Complainant has a strong presence in the Internet. Had the Respondent carried out even a basic search in search engines such as Google or Bing, it would have found a number of references to the Complainant in a prominent manner on the first pages of the respective search engine’s report. Therefore, the Panel is convinced that the Respondent was aware of the Complainant when it registered the disputed domain name. The Panel finds further, that the Respondent is also using the disputed domain name in bad faith. The use, to which the disputed domain names are put, namely a parking page featuring sponsored advertising links, is calculated to attract Internet users to the site in the mistaken belief that they are visiting a site of or associated with the Complainant. The object has to be commercial gain, namely PPC or referral revenue achieved through the visitors to the site clicking on the sponsored advertising links. Even if visitors arriving at the websites to which the disputed domain names resolve become aware that this website is not such of the Complainants, the operators of these websites will nonetheless have achieved commercial gain in the form of a business opportunity, namely the possibility that a proportion of those visitors will click on the sponsored links (see also: Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320). Therefore, the Panel believes that the main purpose of the Respondent was to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. In addition, the Respondent’s behaviour could also disrupt the Complainant’s business since Internet users may get frustrated when they reach the Respondent’s website instead of the Complainant’s website. As a consequence, they may seek for the Complainant’s competitor’s services instead or may even not return to the Complainant’s real website and buy the services offered there. The only reason for this situation is the registration of the disputed domain name by the Respondent. Furthermore, the Respondent has apparently also provided inaccurate contact details when it registered the disputed domain name or failed at least to correct such false contact details. The Center has used the contact details given in the WhoIs record as provided by the Registrar when it tried to contact the Respondent. However, the courier service provider could not reach the Respondent in order to deliver the Written Notice of the Complaint. Therefore, the Panel notes that the Respondent may have given incorrect contact details to frustrate or at least to delay this proceeding (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). Given all the facts and circumstances of this case, the Panel finds that the disputed domain name was registered and is being 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 Christian Schalk
Sole Panelist
Date: October 28, 2019
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