ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Société Anonyme des Galeries Lafayette v. Milen Radumilo Case No. D2023-3861 1. The Parties The Complainant is Société Anonyme des Galeries Lafayette, France, represented by Dreyfus & associés, France. The Respondent is Milen Radumilo, Romania. 2. The Domain Name and Registrar The disputed domain name is registered with Tucows Inc. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 15, 2023. On September 15, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 15, 2023, the Registrar transmitted by email to the Center its verification response disclosing the registrant's details and contact information for the disputed domain name, which differed from the named Respondent (Contact Privacy Inc. Customer 0168446882) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 18, 2023, providing the information as disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 19, 2023. 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 20, 2023. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 13, 2023. The Center appointed Iris Quadrio as the sole panelist in this matter on October 20, 2023. 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. page 2 4. Factual Background The Complainant is specialized in city-centre fashion retailing and has been the French market leader in department stores for the past 120 years and claims to be the undisputed expert in fashion with more than 60 million visitors every day in its 290 stores and e-commerce websites. The Complainant has also built international recognition upon its iconic brands BHV/MARAIS, La Redoutte, Galeries Lafayette-Royal Quartz Paris, Lafayette Plug and Play, among others. The Complainant is the owner of the trademark GALERIES LAFAYETTE in many jurisdictions including European Union Intellectual Property Office (EUIPO) Reg. No. 003798147 in cl. 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, 45; United States Patent and Trademark Office (USPTO) Reg. No. 4086463 in cl. 35; and international registration No. 1230007 in cl. 18, 25 and 35 (as per Annex 4). The Panel has confirmed that the referred registrations have been timely renewed. Likewise, the Complainant asserts to have presence in 8 major cities (Berlin, Beijing, Jakarta, Dubai, Istambul, Doha, Shangai, and Luxembourg) as well as online presence through, among others, its primary website "www.groupegalerieslafayette.com" registered in 2004. Lastly, the disputed domain name was registered in 2023 and resolves to a pay-per-click ("PPC") website - with active MX servers (as per annex 1) - containing links that redirect users to fraudulent webpages. 5. Parties' Contentions A. Complainant The Complainant states that the disputed domain name is confusingly similar to its trademark GALERIES LAFAYETTE and its associated domain names. The Complainant contends that the Respondent has no rights or legitimate interests with respect to the disputed domain name, and that it is not related in any way to the Complainant. Likewise, the Complainant claims that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. More specifically, the Complainant alleged that the Respondent has not used and/or has no demonstrable intention to use the disputed domain name except to create a likelihood of confusion with the Complainant's trademark. In fact, the Complainant claims that the Respondent has selected the disputed domain name only to intentionally lead Internet users to believe they are accessing the Complainant's website. Additionally, the Complainant demonstrated that the disputed domain name is associated with MX servers and that therefore the disputed domain name may be used for fraudulent purposes. Finally, the Complainant requests the Panel appointed in this administrative proceeding that the disputed domain name be transferred to the Complainant. B. Respondent The Respondent did not reply to the Complainant's contentions. page 3 6. Discussion and Findings According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that: (i) the disputed domain name is identical or confusingly similar with 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 was registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant has trademark rights in the GALERIES LAFAYETTE mark by virtue of various trademark registrations. As set forth in Section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the disputed domain name is confusingly similar to the trademark. The test involves a side-by-side comparison of the disputed domain name and the word components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. The Panel considers that the disputed domain name is confusingly similar to the Complainant's trademark GALERIES LAFAYETTE. The replacement of the letter "Y" by the letter "V" in "lafavette" and the inclusion of the French term "groupe" in the disputed domain name do not prevent a finding of confusing similarity and constitute a typosquatting intended to mislead Internet users. Moreover, the ".com" generic Top-Level Domain ("gTLD") is viewed as a standard registration requirement and is generally disregarded under the first element of the confusing similarity test, as set forth in section 1.11.1 of WIPO Overview 3.0. Based on the above, the Panel finds that the disputed domain name is confusingly similar to the trademark GALERIES LAFAYETTE on which the Complainant has rights and considers that the requirements of paragraph 4(a)(i) of the Policy have been fulfilled. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interest in a domain name by demonstrating any of the following non-exclusive defenses: (i) before any notice to it 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 (ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers. page 4 Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name (Section 2.1 of WIPO Overview 3.0). Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name and if the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). The Complainant has claimed not to have authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the trademark GALERIES LAFAYETTE nor is there any other evidence in the file suggesting that the Respondent has or could have rights or legitimate interests in the disputed domain name. Also, the Complainant has prior rights in the GALERIES LAFAYETTE trademark, which clearly precede the Respondent's registration of the disputed domain name. Likewise, it does not seem that the Respondent made nor is making a legitimate noncommercial or fair use of the disputed domain name. In this regard, the Complainant demonstrated that the disputed domain name is parked with PPC links to generate profits. The latter evidences the Respondent's intention to generate confusion among consumers as to the origin of the website, who may believe that the disputed domain name is related to the Complainant. Also, the existence of active MX records reinforces the fact that the disputed domain name is intended to misleadingly divert consumers to obtain commercial gain, unduly taking advantage of the Complainant's reputation and goodwill. Given these circumstances, the Panel finds that the Complainant has made out a prima facie case. Having made such prima facie case, the burden of production then shifted to the Respondent to refute Complainant's assertion or to demonstrate bona fide use of the disputed domain name. The Respondent has not submitted a formal reply to the Complaint, and the Panel is unable to consider any reasonable basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name (see Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and considers that the requirements of paragraph 4(a)(ii) of the Policy have been fulfilled. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy contains a non-exhaustive list of factors evidencing registration and use in bad faith. Among others, it states that it is sufficient to support a finding of bad faith the fact that 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 the website or location or of a product or service on the website or location. In such connection, the Complainant has submitted evidence to support that the trademark GALERIES LAFAYETTE is widely known and was registered and used decades before the Respondent registered the disputed domain name. It is clear that the Respondent registered a domain name, with a deliberate misspelling of the Complainant's trademark GALERIES LAFAYETTE in what appears to be a typosquatting registration, to generate confusion among Internet users and benefit from the Complainant's reputation. page 5 Even more, as referred to in Section B, the disputed domain name resolved to a PPC parking page with various links. The Panel finds therefore that the Respondent's use of the disputed domain name incorporating the Complainant's distinctive and well-known GALERIES LAFAYETTE trademark with a typo is intended to attract and mislead Internet users when searching for the Complainant's website and to redirect them to the links at the relevant PPC pages from which the Respondent most probably derives commercial revenue. Besides, the Complainant proved that MX records have been set up for the disputed domain name, which would enable the Respondent to send phishing emails, which only emphasize the Respondent's bad faith in the use and registration of the disputed domain name. See Tetra Laval Holdings & Finance S.A. v. Himali Hewage, WIPO Case No. D2020-0472. Lastly, the Panel has made some limited investigations on the Respondent and found that the Respondent was involved in more than 80 other UDRP cases where the Respondent registered several domain names infringing third parties' trademark rights (Carrefour v. Milen Radumilo / Privacy Inc.Customer 0151725578, WIPO Case No. D2018-2203; Teva Pharmaceutical Industries Limited v. Milen Radumilo, WIPO Case No. D2020-0658). This confirms that the Respondent has already engaged in similar illicit behaviour in the past. Based on the above, the Panel finds that the Respondent has registered and used the disputed domain name 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 be transferred to the Complainant. /Iris Quadrio/ Iris Quadrio Sole Panelist Date: November 3, 2023
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