ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION PEGASE v. Client Care, Web Commerce Communications Limited Case No. D2024-0013 1. The Parties The Complainant is PEGASE, France, represented by MIIP MADE IN IP, France. The Respondent is Client Care, Web Commerce Communications Limited, Malaysia. 2. The Domain Name and Registrar The disputed domain name is registered with Alibaba.com Singapore E-Commerce Private Limited (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2024. On January 4, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 5, 2024, 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 (Not disclosed) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 10, 2024, 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 January 15, 2024. 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 January 23, 2024. In accordance with the Rules, paragraph 5, the due date for Response was February 12, 2024. The Respondent sent an email communication to the Center on January 23, 2024. On February 13, 2024, the Center notified the Parties of the Commencement of Panel Appointment process.
page 2 The Center appointed Andrea Mondini as the sole panelist in this matter on February 16, 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 a company based in France which was founded in 1981 and has today more than 800 boutiques and 6400 employees. The Complainant holds since 1997 the domain name which resolves to its official website which today has 15.5 million visitors per year. The Complainant is active in the fashion industry and is a part of the Beaumanoir Group. The Complainant owns numerous trademark registrations in several jurisdictions, including: TRADEMARK JURISDICTION REGISTRATION NUMBER REGISTRATION DATE INTERNATIONAL CLASS LA HALLE AUX CHAUSSURES France 3821646 July 29, 2011 18, 25 LA HALLE AUX VETEMENTS International Registration 486315 July 6, 1984 25 LA HALLE Mode, Chaussures & Maroquinerie (word/design) International Registration 1213360 April 10, 2014 18, 25, 35 LA HALLE Fashion, Shoes & Bags (word/design) International Registration 1254519 March 19, 2015 18, 25, 35 Because the Respondent did not file a Response, not much is known about the Respondent. The disputed domain name was registered on December 19, 2023. According to the evidence submitted with the Complaint, the disputed domain name resolves to a mirror website of the company CAROLL INTERNATIONAL, which is a subsidiary of the Complainant. 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 as follows: The disputed domain name is confusingly similar to trademarks in which the Complainant has rights, because it incorporates the trademark LA HALLE in its entirety, and the trademark LA HALLE AUX VETEMENTS with a misspelling, because the omission of the letter “s” is not sufficient to avoid confusing similarity. The additional term “vetement” (“clothing” in French) in the disputed domain name would not
page 3 affect confusing similarity with its trademark LA HALLE, since this term is descriptive in relation to the Complainant’s products. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The trademarks LA HALLE and LA HALLE AUX VETEMENTS have been extensively used to identify the Complainant and its products / services. The Respondent has not been authorized by the Complainant to use these trademarks, is not commonly known by the disputed domain name and there is no evidence of the Respondent’s use, or demonstrable preparation to use, the disputed domain name in connection with a bona fide offering of goods and services. The disputed domain name was registered in bad faith because it is obvious that the Respondent had knowledge of both the Complainant and its well-known trademarks LA HALLE and LA HALLE AUX VETEMENTS at the time it registered the disputed domain name. The Respondent is using the disputed domain name in bad faith because the disputed domain name resolves to a mirror website impersonating Caroll International (an affiliate of the Complainant) and the Respondent thereby intentionally attempted, for commercial gain, to attract Internet users to its website by creating a likelihood of confusion as to the source, affiliation or endorsement of the Respondent’s website and the goods and services marketed thereon. Furthermore, the “À propos de nous” (About us) section of the website also refers to Grain de Malice, a competitor of the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. However, the Respondent sent an email communication on January 23, 2024, requesting further documentation. 6. Discussion and Findings According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements: (i) the disputed domain name is identical or confusingly similar to the 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 Panel finds the entirety of the mark LA HALLE AUX VETEMENTS is recognizable within the disputed domain name. The omission of the letter “s” does not prevent a finding of confusing similarity under the Policy. WIPO Overview 3.0, section 1.7.
page 4 The addition of the generic Top-Level Domain (“gTLD”) “.com” in the disputed domain names is a standard registration requirement and as such is disregarded under the confusing similarity test under the Policy, paragraph 4(a)(i). WIPO Overview 3.0, section 1.11.1. 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. 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 Complainant has shown that the Respondent posted a website under the disputed domain name offering branded products of Caroll International, an affiliate of the Complainant, at discounted prices. The Complainant suspects that the Internet users who will purchase Caroll items from this website will never receive them. The Panel cannot verify this allegation, but even if the Respondent were to indeed sell and deliver genuine Caroll products, its use of the disputed domain name does not meet the “Oki Data Test”, because this site does not disclose the lack of relationship between the Respondent and the Complainant, and because this site also offers products of Grain de Malice, a competitor of the Complainant. WIPO Overview 3.0, section 2.8. Panels have held that the use of a domain name for illegal activity, such as here impersonating the Complainant’s affiliate, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. 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. Based on the available record, 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. 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. In the view of the Panel, noting that the Complainant’s trademark is well-known and predates the registration of the disputed domain name, and considering that the disputed domain name resolves to a mirror website of Caroll International, an affiliate of the Complainant, which features the Complainant’s trademark and offers to sell Caroll items at lower prices (70% discount), it is inconceivable that the Respondent could have
page 5 registered the disputed domain name without knowledge of the Complainant’s well-known trademark. In the circumstances of this case, this is evidence of registration in bad faith. Panels have held that the use of a domain name for illegal activities, such as here to impersonate the Complainant’s affiliate by mirroring the content of its website, constitutes use in 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. Based on the available record, the Panel finds that the Complainant has established the third element of the Policy with regard to the disputed domain name. 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. /Andrea Mondini/ Andrea Mondini Sole Panelist Date: March 1, 2024
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