ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION LEGRAND FRANCE v. Huot Gilbert Felicien Case No. D2023-5162 1. The Parties The Complainant is LEGRAND FRANCE, France, represented by Ebrand France, France. The Respondent is Huot Gilbert Felicien, France. 2. The Domain Name and Registrar The disputed domain name (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 December 12, 2023. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. Also on December 12, 2023, 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 (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 22, 2023, 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 amendment to the Complaint also on December 22, 2023. The Center verified that the Complaint together with the amendment to 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 December 28, 2023. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2024.
page 2 The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on January 23, 2024. 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 is an international group founded in 1904 and specialized in electrical and digital building infrastructures. The Complainant is the owner of several registered trademarks for LEGRAND to promote its activities and services (the “LEGRAND Trademarks”) including: - the French word trademark LEGRAND No. 1480003, registered on July 26, 1988, and regularly renewed for products and services in classes 16, 38, 41 and 42; - the French semifigurative trademark No. 1359109, registered on February 21, 1986, and regularly renewed for products in classes 6, 8, 9, 11, 17 and 20; - the European Union semifigurative trademark No. 004130861, registered on January 4, 2006, and regularly renewed for products and services in classes 6, 8, 9, 11, 16, 17, 19, 20, 35, 37, 38, 41 and 42; - the international word trademark LEGRAND No. 1243306, registered on November 27, 2014, for products in classes 9 and 11. The Complainant is also the owner of several domain names incorporating the LEGRAND Trademarks, such as and , both registered in 2020, as well as , registered in 2022. The Disputed Domain Name was registered on April 3, 2023, and resolves to a parking page displaying sponsored links. The record shows that the Disputed Domain Name was used to send at least one email as part of a phishing scheme, by purporting to be one of the Complainant’s corporate purchasing manager. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Name. Notably, the Complainant contends that the Disputed Domain Name is confusingly similar to a trademark in which it has rights. The Complainant submits that it is the owner of several registered trademarks and domain names that have been registered prior to the Disputed Domain Name’s registration. The Complainant highlights that the Disputed Domain Name is very similar to its LEGRAND Trademarks since it reproduces them with the addition of the letters “grps” which may be an abbreviation of the French word “groupes”. For the Complainant, the composition chosen by the Respondent creates a risk of confusion for Internet users who may think the Disputed Domain Name is owned by the Complainant. Then, the Complainant stands that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. For the Complainant, the Respondent is not commonly known under the Disputed Domain Name and has not registered any trademarks with it. Furthermore, the Complainant highlights that its LEGRAND Trademarks all predate the registration of the Disputed Domain Name. Therefore, the Respondent could not have been unaware of the existence of the Complainant. The Complainant also considers that there is no evidence that the Respondent has been using the Disputed Domain Name in connection with a bona fide offering of goods and services since it is used as part of a phishing attack to send email to third parties while purporting to be the Complainant’s corporate purchasing manager.
page 3 Finally, the Complainant submits that the Disputed Domain Name was registered and is being used in bad faith. For the Complainant, the Respondent has intentionally attempted to attract, for commercial purposes, Internet users to its website, by creating a likelihood of confusion since the Disputed Domain Name wholly reproduces the LEGRAND Trademarks. Furthermore, the Complainant underlines the fact the Disputed Domain Name is used as part of a phishing attack by sending email while purporting to be an employee of the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that the Complainant shall prove the following three elements: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the 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. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the Disputed Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the Disputed Domain Name. Accordingly, the Disputed Domain Name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms here, a hyphen and the letters “grps” which may be an abbreviation of the French word “groupes”, may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the Disputed Domain Name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a Disputed Domain Name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
page 4 Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the Policy or otherwise. Indeed, it appears the Respondent is not commonly known by the Disputed Domain Name or that the Respondent has the intent to use the Disputed Domain Name with a bona fide offering of goods or services. On the contrary, the Disputed Domain Name resolves to a parked page comprising sponsored links. In addition, Panels have held that the use of a domain name for illegal activity here, claimed as part of phishing scheme by impersonating an employee of the complainants, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. Indeed, it appears the Disputed Domain Name has been used to send an email to third parties by impersonating the Complainant’s corporate purchase manager. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the Respondent has registered the Disputed Domain Name well after the registration of the LEGRAND Trademarks. The Panel notes that the Respondent must have the Complainant in mind when registering the Disputed Domain Name since it is used to send phishing emails reproducing the Complainant’s LEGRAND Trademarks and logo. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. Panels have held that the use of a domain name for illegal activity here, as part of phishing scheme by impersonating to be an employee of the complainants, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the Disputed Domain Name constitutes bad faith under the Policy. The Panel finds that the Complainant has established the third element 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 be transferred to the Complainant. /Christiane Féral-Schuhl/ Christiane Féral-Schuhl Sole Panelist Date: February 6, 2024
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