Complainant is Holding Le Duff “HLD”, France, represented by Scan Avocats AARPI, France.
Respondent is KeM Tech KSF Europe, Nigeria. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2020. On June 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 16, 2020, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on June 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 14, 2020. The Center appointed Jordan S. Weinstein as the sole panelist in this matter on July 27, 2020. 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 Complainant specializes in restaurants and bakeries worldwide and is the owner of the following registered trademarks: - European Union word trademark GROUPE LE DUFF no. 001146851 registered on July 31, 2000 in classes 29, 30, 32, 35, and 42; - French word trademark GROUPE LE DUFF no. 99786142 registered on April 13, 1999 in classes 29, 30, 32, 41, 42, 43, and 45; - European Union word trademark LE DUFF no. 010685816 registered on August 2, 2012 in classes 29, 30, 31, 32, 35, 41, 43, and 44; - European Union Registration no. 010685873 for LE DUFF and design, registered on August 2, 2012 in classes 29, 30, 31, 32, 35, 41, 43, and 44; and - International Registration no. 1390842 for GROUPE LE DUFF and design, registered on October 2, 2017 in classes 16, 29, 30, 32, 35, 36, 38, 39, 41, 42, and 43 to designate the United States of America. The Disputed Domain Name was registered on December 13, 2019 and it does not resolve to an active website. 5. Parties’ Contentions A. Complainant Complainant, known as Groupe Le Duff, asserts that it was established in 1976, and specializes in restaurants and bakeries worldwide. Complainant asserts that it is currently the leader in the international bakery café market, with over 1,658 restaurants and bakeries in 80 countries worldwide and serving 1,000,000 customers daily. Complainant asserts that its total revenue is more than two billion euros. Complainant asserts that it operates its international restaurant and bakery café markets through various restaurant brands, including: - “Brioche Dorée”, the leader of French-style bakery café; - “Del Arte”, the No. 1 Italian pizza and pasta restaurants in France; - “Fournil de Pierre”, the high French baking tradition; - “La Madeleine”, the French-style traditional café; and - “Bridor”, providing traditional know-how for professionals. Complainant asserts that it is present in 100 countries around the world, and is planning to open 2,000 new franchised restaurants worldwide in the next 5 years. Complainant regularly launches massive investment plans and acquires well-known restaurant and bakery chains. Complainant asserts that it received several awards for the quality of its products and for its business success, notably the “Palmes de la Restauration 2015” for its work over the years 1995-2015 and the award for the best retail chain of the year 2018-2019 for its “Brioche Doree” brand, for the second year in a row. Complainant asserts that it uses its GROUPE LE DUFF and LE DUFF trademarks to promote its activities on Complainant’s websites, notably “www.groupeleduff.com”, and on its business documents, for many years. Complainant’s trademarks also appear on its commercial buildings together with its restaurant brands. Complainant asserts that its “Le Duff” brand is the first hit on many Google search engine searches when searching for “Groupe Le Duff” or “Le Duff”. Therefore, Complainant asserts that the trademarks GROUPE LE DUFF and LE DUFF are well known and widely used worldwide. Complainant asserts that the Disputed Domain Name is confusingly similar to its prior GROUPE LE DUFF and LE DUFF trademarks and domain names; that the Disputed Domain Name incorporates Complainant’s LE DUFF trademarks in its entirety, and reproduces Complainant’s GROUPE LE DUFF trademarks, adding an additional letter “L” at the beginning of the French definite article “le”. Complainant asserts that this minor difference does not eliminate the confusing similarity between Complainant’s registered prior rights and the Disputed Domain Name. Complainant asserts that the addition of the “.com” Top-Level Domain at the end of the Disputed Domain Name is irrelevant in the comparison to Complainant’s marks. Complainant asserts that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, because Respondent is not currently and has never been known under the names “Groupe Le Duff” or “Le Duff”; Complainant has never authorized any third party (including Respondent) to register or use its GROUPE LE DUFF and LE DUFF trademarks; Complainant did not know Respondent before the Disputed Domain Name was registered, because Respondent is not in any way related to Complainant’s business and does not carry out any activity for or have any business with it; Respondent’s business activities have nothing to do with Complainant’s activities; and Respondent has not been licensed, contracted, or otherwise permitted by Complainant to use the prior GROUPE LE DUFF and LE DUFF trademarks or to register any domain name incorporating these prior trademarks, nor has Complainant acquiesced to such use or registration of “Groupe Le Duff” and “Le Duff” by Respondent. Complainant asserts that Respondent has registered the Disputed Domain Name in bad faith because, given the strong reputation and the leading position of its GROUPE LE DUFF and LE DUFF trademarks in France and internationally in the field of restaurant and bakery café markets, it is highly likely that Respondent knew of the existence of Complainant’s prior intellectual property rights at the time the Disputed Domain Name was registered, and highly unlikely that Respondent was unaware of the existence of Complainant and its well-known reputation and trademarks in the field of restaurants and bakery cafés, when it registered the Disputed Domain Name. Complainant asserts that a simple search via the Google or other search engines using the keywords “Groupe Le Duff” and “Le Duff” demonstrates that nearly all results relate to Complainant’s websites or business. Thus, Respondent should have been clearly aware of Complainant’s activity under the denominations “Groupe Le Duff” and “Le Duff” when it registered the Disputed Domain Name. Complainant asserts that the notoriety of Complainant’s trademarks, especially in the field of restaurant and bakery cafés, is such that a prima facie presumption is raised that Respondent registered the Disputed Domain Name for the purpose of selling it to Complainant or one of its competitors. Complainant asserts that the registration and use and of a domain name which is evidently connected with a famous or well-known trademark, by someone with no connection with said trademark, suggests opportunistic bad faith. Complainant asserts that Respondent is using the Disputed Domain Name in bad faith, because there is no justification for Respondent – whose business activities are very different from Complainant’s to register the Disputed Domain Name substantially similar to Complainant’s well-known trademarks GROUPE LE DUFF and LE DUFF. Complainant asserts that the redirection of the Disputed Domain Name to an inactive page cannot prevent the characterization of bad faith since many factors attest to the bad faith of Respondent who is likely to have registered or acquired the Disputed Domain Name for the purpose of selling, renting, or otherwise transferring it to Complainant or its competitors. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Applicable Policy Provisions Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) 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. Paragraph 4(b) of the Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that 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 Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain Name; or (ii) 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 Respondent has engaged in a pattern of such conduct; or (iii) 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, 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 Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. These circumstances are non-exhaustive, and a UDRP panel may consider other circumstances as constituting registration and use of a domain name in bad faith. According to paragraph 4(c) of the Policy, a respondent may demonstrate rights or legitimate interests to a domain name by any of the following, without limitation: “(i) before any notice to you of the dispute, your 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 (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.” Where a respondent is in default, a UDRP panel may draw such inferences as it considers appropriate. Rules, paragraph 14(b). B. Findings 1) Identical or Confusingly Similar The Panel finds that the Disputed Domain Name Thus, the Panel finds that Complainant has provided sufficient evidence to establish paragraph 4(a)(i) of the Policy. 2) Rights or Legitimate Interests Complainant has made a prima facie case under paragraph 4(a)(ii) of the Policy by showing that Respondent is not and has not been known under the names “Groupe Le Duff” or “Le Duff”; that Complainant has not authorized Respondent to register or use its trademarks; that Respondent is not related to Complainant’s business; that Respondent has not been licensed, contracted, or otherwise permitted by Complainant to use its trademarks; and that Complainant has not acquiesced to such use by Respondent. Once Complainant makes its prima facie case of no rights or legitimate interests, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name. SeeWIPO Overview 3.0, section 2.1. Respondent failed to come forward with allegations or evidence demonstrating either rights or legitimate interests in the Disputed Domain Name. As Respondent failed to file a Response, the Panel may make an inference that Respondent has no rights or legitimate interests in the Disputed Domain Name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse,WIPO Case No. D2000-1221. The Panel notes here that the Disputed Domain Name is a typo of a well-known mark, so it is difficult to conceive of a plausible legitimate explanation for its registration. As a result, Complainant has established paragraph 4(a)(ii) of the Policy. 3) Registered and Used in Bad Faith The Panel finds that Complainant has provided sufficient evidence to satisfy paragraph 4(a)(iii) of the Policy, namely that Respondent has registered and is using the Disputed Domain Name in bad faith because the Disputed Domain Name purposefully incorporates Complainant’s highly distinctive and notorious GROUPE LE DUFF and LE DUFF marks and was registered long after the marks became notorious, constituting opportunistic bad faith. First, although Complainant’s allegations and evidence were sufficient to find that Complainant and its marks are notorious and highly distinctive, the Panel notes that other UDRP panels have reached the same conclusion. See, e.g., Holding Le Duff “HLD” v. VistaPrint Technologies Ltd,WIPO Case No. DCO2016-0025 ( Second, by registering a domain name incorporating Complainant’s notorious and highly-distinctive trademarks in the Disputed Domain Name in its entirety, at a time when Complainant had long established its reputation and its marks, Respondent has registered the Disputed Domain Name in bad faith. See Sanofi v. Registration Private, Domains By Proxy, LLC / Ernest Medina,WIPO Case No. D2016-0594, PIERRE BALMAIN S.A. v. Oscar Lee,WIPO Case No. D2010-2138; J. Choo Limited v. Zhenqun Mo AKA mozhenqun,WIPO Case No. D2010-1937. Third, even if the Disputed Domain Name has been passively held, this fact alone is not sufficient to avoid a finding of bad faith. Rather, from the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. WIPO Overview 3.0, section 3.3. The Panel finds that all four of the factors to be considered weigh in Complainant’s favor, but further detail is required regarding factor (iii). Specifically, the Panel has compared the website purported to be that of Respondent, which was provided by Complainant as an Annex to the Complaint, with the WhoIs information for the Disputed Domain Name, also provided as an Annex to the Complaint. The Panel notes that the registrant, administrative, and technical email addresses for Respondent are typosquatting instances of the webpage’s actual address; the latter being ksf[...]@gmail.com, and the former being kfs[...]@gmail.com. That this is not an unintentional transposition is shown by the fact that all three of the email contact addresses include this same typo. Further, the Panel notes that the street addresses for Respondent do not appear anywhere on Respondent’s purported website, which lists no addresses in Nigeria. By conducting independent search engine research, which panelists are permitted to do (seeWIPO Overview 3.0, section 4.8), the Panel notes that the enterprise KeM Tech KSF Europe has no address in Nigeria, and conversely that the “street view” image at Respondent’s listed street address shows a building with the name “Shrakat Adeniji House” on the side, and no sign for Respondent’s listed name. Combining these observations, and drawing the inferences this Panel is permitted to draw based upon Respondent’s default, the Panel concludes that Respondent has probably falsely adopted the name of an unrelated business, KeM Tech KSF Europe, to cloak its own identity (see WIPO Overview 3.0, section 3.6), and made minute changes to the unrelated business’s email address to avoid detection – just as it made a minute change to Complainant’s trademarks in the Disputed Domain Name to ensnare unsuspecting Internet users looking for Complainant. As a result, the Panel finds that Respondent has registered and is using the Disputed Domain Name in bad faith pursuant to Section 4(a)(iii) of the Policy. 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 Jordan S. Weinstein
Sole Panelist
Date: August 13, 2020
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