The Complainant is La Fournée Dorée - LFD, France, represented by MEYER & Partenaires, France.
The Respondent is John Scott, Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2021. On May 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 28, 2021, 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 June 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 23, 2021. The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on July 1, 2021. 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, La Fournée Dorée - LFD., is a French company that operates since 1997 in the food industry, more specifically brioche and bread. It is the third biggest brand on the French viennoiseries market, representing 9.6 percent market share in 2019. The Complainant has factories located in France and in Canada and is exporting to more than 35 countries its own brand or through partnership with leading quality brands. The Complainant is the owner of multiple trademarks containing or comprising LA FOURNEE DOREE across various jurisdictions. These registrations include, inter alia: - European Union trademark LA FOURNEE DOREE with registration No. 004552279, registered on August 7, 2015, in International class 30; - European Union trademark LA FOURNEE DOREE (fig.) with registration No. 014329726, registered on November 11, 2015, in International classes 30 and 43; - Hong Kong, China, trademark LA FOURNEE DOREE with registration No. 01228509, registered on October 27, 2018, in International class 30; - Hong Kong, China, trademark 金爐 金炉 with registration No. 301229328 on October 29, 2008, in International class 30. Additionally, the Complainant is also the registrant of the domain name The disputed domain name The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows: (a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant contends that the disputed domain name is confusingly similar to the registered trademarks in which the Complainant has rights. It represents that the disputed domain name reproduces the term LA FOURNEE DOREE in its entirety. Relying on Rolls Royce PLC v. Hallofpain,WIPO Case No. D2000-1709, the Complainant further argues that the addition of the hyphen does nothing to distinguish the disputed domain name from the Complainant’s LA FOURNEE DOREE trademarks. Additionally, the Complainant claims that the mere adjunction of the suffix “fr” does not negate the confusingly similarity between the disputed domain name and the Complainant’s trademark. According to the Complainant, the confusing similarity between the disputed domain name and the Complainant’s LA FOURNEE DOREE trademark is in fact further enhanced by the inclusion of the term “fr” that relates to the business of the Complainant which originated in France. b) The Respondent has no rights or legitimate interests in respect of the disputed domain name The Complainant asserts the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant argues that the Respondent’s name is “John Scott” and that it can therefore not be commonly known by the disputed domain name. Additionally, the Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name since the Respondent has not been authorized or granted a license by the Complainant to use its trademarks or to seek registration of any domain names incorporating said trademarks. Moreover, the Respondent does not appear to have used the disputed domain name for any legitimate noncommercial purpose. The Complainant states that the Respondent’s only use of the disputed domain name and associated email server is to create fraudulent email addresses (ending with “@lafourneedoree-fr.com”) impersonating the Complainant’s employees and business partners. Therefore, the Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name. (c) The disputed domain name was registered and is being used in bad faith The Complainant contends that registration in bad faith can be deducted from the inclusion in the disputed domain name of the two-letter code of France, closely related to its business activity as it refers to the country where it has its seat. According to the Complainant, this is an indication of the Respondent’s knowledge of and familiarity with the Complainant’s brands and business. The Complainant further states that it is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name since the email phishing campaign associated with the disputed domain name precisely targeted the Complainant. In addition, the Complainant alleges and provides evidence that the Respondent has engaged in a pattern of cybersquatting which indicates registration of the disputed domain name in bad faith (see Sysgo Real-Time Solutions GmbH v. WebMaster,WIPO Case No. D2002-0766). Regarding the use of the disputed domain name, the Complainant refers to a previously rendered UDRP decision (see, The Swatch Group AG and Swatch AG v. Deena Newman,WIPO Case No. D2019-2791) which found that the passive holding of a domain name may amount to bad faith when it has been used for as an email server for sending fraudulent email messages purportedly on behalf of the complainant. Relying on Société Internationale de Télécommunications Aéronautiques v. SIVAGANESH SIVAGNANAM,WIPO Case No. D2020-2937, the Complainant finally argues that the Respondent cannot disclaim responsibility for the email server attached to the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark. First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights in LA FOURNEE DOREE. Secondly, this Panel finds, similarly to other UDRP panels, that the addition of the generic Top-Level-Domain “.com” to the disputed domain name is viewed as a standard registration requirement and as such is to be disregarded. Thirdly, the disputed domain name fully incorporates the Complainant’s LA FOURNEE DOREE trademark in which the Complainant has exclusive rights. Fourthly, this Panel finds that the additions of a hyphen and the term “fr” do not prevent a finding of confusing similarity for purposes of the Policy. See in this regard section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), stating that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity. On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s LA FOURNEE DOREE trademark. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads: “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii); or (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 consumers or to tarnish the trademark or service mark at issue.” This Panel finds that there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name. It is a well-established view of the UDRP panels, with which this Panel agrees, that a prima facie case advanced by the complainant is generally sufficient for the complainant to satisfy the requirements under paragraph 4(a)(ii) of the Policy, provided that the respondent does not submit any evidence to the contrary (AGUAS DE CABREIROA, S.A.U. v. Hello Domain,WIPO Case No. D2014-2087; Spigen Korea Co., Ltd., Spigen Inc. v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2016-0145; HubSpot, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Steve Johnson,WIPO Case No. D2016-1338). In the present case, taking into consideration the Respondent’s default, this Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, in view of the circumstances of this case, including the following factors: - there is no evidence that the Respondent has been licensed or authorized to use the disputed domain name by the Complainant; - there is no evidence that the Respondent has been commonly known by the disputed domain name; - there is no evidence that legitimate noncommercial or fair use of the disputed domain name has taken place (rather, there is evidence of the use of the disputed domain name for a fraudulent email scheme impersonating the Complainant, an illegal use that can never confer rights or legitimate interests). The Respondent has not responded and thus has not rebutted the prima facie case established by the Complainant. For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads: “For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the 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 your documented out-of-pocket costs directly related to the domain name; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of “registration and use of a domain name in bad faith”. With regard to the registration of the disputed domain name, the Panel agrees that the Respondent was aware of the Complainant’s LA FOURNEE DOREE trademark and activity at the time he registered the disputed domain name. Such is true in the present case in which the Respondent registered the disputed domain name after the Complainant obtained its trademark registrations for LA FOURNEE DOREE trademark. The Respondent’s email phishing campaign makes it further disingenuous for the Respondent to claim that he was unaware that the registration of the disputed domain name would violate the Complainant’s rights. This conclusion is also enhanced by the fact that the disputed domain name incorporates the term “fr”, an abbreviation that can be interpreted to reference the geographic location where the Complainant is based (i.e., France), noting for instance that the Top-Level Domain “.fr” is the country code Top-Level Domain (“ccTLD”) for France. Moreover, the evidence submitted by the Complainant shows that the Respondent has engaged in a pattern of hijacking trademarks as domain names. The Respondent’s engagement in pattern of bad faith registration and use of domain names indicates also for the Panel that the disputed domain name has been registered in bad faith. There is indeed ample authority in the previously decided cases that a pattern of abusive behaviour following registration in bad faith is by itself indicative of bad faith (see Citigroup, Inc v. Party Night Inc. aka Peter Carrington,WIPO Case No. D2003-0480, and Match.com, L.P. v. Amjad Kausar,WIPO Case No. D2003-0510). As for the use of the disputed domain name, the Complainant has shown that the configuration of a webmail server linked to the disputed domain name was used to send phishing emails pretending to be sent by the Complainant’s employees and creating a confusion with their genuine email addresses in order to deceive the recipients and obtain sensitive confidential information to divert substantial payments. This clearly qualifies as bad faith use of the disputed domain name. By incorporating the disputed domain name into the email-address to commit fraudulent actions impersonating employees of the Complainant, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent, by creating a likelihood of confusion with the Complainant’s trademark within paragraph 4(b)(iv) of the Policy. In light of the above, this Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith under 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 Benoit Van Asbroeck
Sole Panelist
Date: July 15, 2021
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