ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Société Anonyme des Galeries Lafayette v. BOWEN LLIU Case No. D2024-1478 1. The Parties Complainant is Société Anonyme des Galeries Lafayette, France, represented by Dreyfus & associés, France. Respondent is BOWEN LLIU, Hong Kong, China. 2. The Disputed Domain Names and Registrar The disputed domain names , , , , and (the “Domain Names”) are registered with Gname.com Pte. Ltd. (the “Registrar”). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2024. On April 9, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 11, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent (N/A, unknown) and contact information in the Complaint. The Center sent an email communication to Complainant on April 18, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint in English on April 22, 2024. On April 18, 2024, the Center informed the Parties in Chinese and English, that the language of the Registration Agreement for the Domain Names is Chinese. On April 22, 2024, Complainant confirmed its request that English be the language of the proceeding. Respondent did not submit any comment on Complainant’s submission. 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”).
page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent in Chinese and English of the Complaint, and the proceedings commenced on April 24, 2024. In accordance with the Rules, paragraph 5, the due date for Response was May 14, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 16, 2024. The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on May 24, 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 Complainant is in the fashion retail industry, with department stores in France, where it is headquartered, and internationally. Complainant receives over 60 million visitors every day in its 290 stores and e-commerce websites. Complainant has built up the international recognition of its brands, including: Galeries Lafayette, BHV/MARAIS, La Redoute, Galeries Lafayette-Royal Quartz Paris, Louis Pion, Guérin Joaillerie and BazarChic. It supports the brands in their asset, digital and creative transformation through Citynove, Lafayette Plug and Play and Lafayette Anticipations - Galeries Lafayette Corporate Foundation, with nearly 14,000 employees, and is present in Berlin, Beijing, Jakarta, Dubai, Istanbul, Doha, Shanghai, and Luxembourg. Complainant owns several registered trademarks with the GALERIES LAFAYETTE mark, including: - International registered trademark number 1230007 for the GALERIES LAFAYETTE word mark, registered on August 7, 2014, designating various countries including: Australia, Iran (Islamic Republic of), and Japan; - International registered trademark number 1718969 for the GALERIES LAFAYETTE word mark, registered on October 13, 2022; and - Chinese trademark number G1291058 for the GALERIES LAFAYETTE word and design mark registered on December 23, 2015. Complainant also owns and operates several domain names with its GALERIES LAFAYETTE trademark, including: - registered on August 1, 1997. - registered on March 19, 2004. The Domain Names and were registered on March 13, 2024 and the Domain Names , and were registered on April 3, 2024. At the time of filing of the Complaint, the Domain Names resolved to a login page named “Galeries Lafayette Partners Online” that attempted to impersonate Complainant. Between March and April, 2024, Complainant sent a notification to the Registrar requesting it to block the Domain Names , , , and . In response to the Registrar’s request, Complainant sent a Power of Attorney and thereafter, these two Domain Names and were blocked. At the same time, Complainant sent a separate notification to the hosting company requesting a deactivation of the websites related to the Domain Names. Despite several reminders, no reply was received. Complainant then initiated the current UDRP proceeding. At the time of the Decision, the Domain Names resolve to an inactive page.
page 3 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Names. Complainant contends that (i) the Domain Names are confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Names; and (iii) Respondent registered and are using the Domain Names in bad faith. In particular, Complainant contends that it has a trademark registration and rights for GALERIES LAFAYETTE and that Respondent registered and is using the Domain Names with the intention to confuse Internet users looking for bona fide and well-known GALERIES LAFAYETTE products and services. Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant’s trademarks, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Names. Rather, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Names, when Respondent clearly knew of Complainant’s rights. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the Domain Names are 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 Domain Names; and (iii) the Domain Names were registered and are being used in bad faith. Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that failure to respond to the complainant’s contentions would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. 6.1 Preliminary Issue: Language of the Proceeding The Rules, in paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
page 4 Complainant submitted its Complaint in English. In its Complaint and amended Complaint, Complainant submitted its request that the language of the proceeding should be English. According to the information received from the Registrar, the language of the Registration Agreements for the Domain Names is Chinese. Complainant submits that English should be the language for the current proceeding mainly because: Complainant is located in France and has no knowledge of Chinese; each of the Domain Names is composed of Latin characters; and that English is the primary language for international relations and is one of the working languages of the Center. Complainant further submitted that if the proceeding were conducted in Chinese, Complainant would have to incur significant translation expenses, which would add considerable costs to Complainant, cause undue burden on Complainant. In exercising its discretion to use a language other than that of the Registration Agreements for the Domain Names, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time, and costs. The Panel accepts Complainant’s submissions regarding the language of the proceeding. The Panel also notes that the Domain Names do not have any specific meaning in the Chinese language, and that the Domain Names contain Complainant’s trademark GALERIES LAFAYETTE in its entirety and the addition of a hyphen “-” and/or English terms “the” and/or “vip”, and that the Domain Names resolved to the websites in the English language; all of which indicate that Respondent understands English. The Panel further notes that the Center notified the Parties in Chinese and English of the language of the proceeding as well as notified Respondent in Chinese and English of the Complaint. Respondent chose not to respond to the language of the proceeding, nor did Respondent choose to file a Response in Chinese or English. The Panel is also mindful of the need to ensure that the proceeding is conducted in a timely and cost-effective manner. Complainant may be unduly disadvantaged by having to translate the Complaint into Chinese and to conduct the proceeding in Chinese. Having considered all the circumstances of this case, the Panel determines that English be the language of the proceeding. 6.2 Substantive Issues A. Identical or Confusingly Similar A preliminary issue in the current proceeding is whether Complainant has protectable rights in the mark to which it contends Respondent’s Domain Names are confusingly similar. Complainant has provided evidence of its rights in the GALERIES LAFAYETTE trademarks, as noted above. Complainant has also submitted evidence which supports that the GALERIES LAFAYETTE trademarks are widely known and a distinctive identifier of Complainant’s products and services. Complainant has therefore proven that it has the requisite rights in the GALERIES LAFAYETTE trademarks. With Complainant’s rights in the GALERIES LAFAYETTE trademarks established, the remaining question under the first element of the Policy is whether the Domain Names, typically disregarding the Top-Level Domain (“TLD”) in which it is registered (in this case, “.com” and “.top”), are identical or confusingly similar to Complainant’s trademark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. Here, the Domain Names are confusingly similar to Complainant’s GALERIES LAFAYETTE trademarks. These GALERIES LAFAYETTE trademarks are recognizable in the Domain Names.
page 5 Domain Name Added Term(s) to the GALERIES LAFAYETTE Mark in the Respective Domain Name “the-” “the-” “the-” and “vip” “-” “vip” In particular, the Domain Names’ inclusion of Complainant’s trademark GALERIES LAFAYETTE in its entirety, in each case, with an addition of “the” and/or “-” and/or “vip” as noted in the chart above does not prevent a finding of confusing similarity between each of the Domain Names and the GALERIES LAFAYETTE trademarks. See section 1.8 of the WIPO Overview 3.0. Thus, the Panel finds that Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant must make a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with relevant evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. From the record in this case, it is evident that Respondent was, and is, aware of Complainant and its GALERIES LAFAYETTE trademarks, and does not have any rights or legitimate interests in the Domain Names. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the GALERIES LAFAYETTE trademarks or to seek registration of any domain name incorporating the trademarks. Respondent is also not known to be associated with the GALERIES LAFAYETTE trademarks and there is no evidence showing that Respondent has been commonly known by the Domain Names. In addition, Respondent has not used the Domain Names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, at the time of filing of the Complaint, Complainant asserts that each of the Domain Names resolved to a website which prominently displayed “Galeries Lafayette Partners Online” with a link to “customer service” which redirected to a Telegram account which attempted to impersonate Complainant’s Galeries Lafayette brand, and a link to a page which enabled Internet users to create an account on the site at each of the Domain Names, which generated a risk of phishing, impersonation, and collection of personal and financial identification data. Such use does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Names. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration, WIPO Case No. D2013-0875. At the time of the Decision, all Domain Names resolve to an inactive page. Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Names. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Names. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Names and Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Names in bad faith.
page 6 Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a respondent, namely: “(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 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 your website or location or of a product or service on your website or location.” The Panel finds that Complainant has provided ample evidence to show that registration and use of the GALERIES LAFAYETTE trademarks long predate the registration of the Domain Names. Complainant is also well established and known. Indeed, the record shows that Complainant’s GALERIES LAFAYETTE trademarks and related products and services are widely known and recognized. Therefore, Respondent knew or should have known of the GALERIES LAFAYETTE trademarks when it registered the Domain Names. See section 3.2.2 of the WIPO Overview 3.0; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973. Further, the registration of the Domain Names incorporating Complainant’s GALERIES LAFAYETTE trademark in its entirety and use of Complainant’s GALERIES LAFAYETTE trademark with the aim to impersonate Complainant suggest Respondent’s actual knowledge of Complainant’s rights in the GALERIES LAFAYETTE trademarks at the time of registration of the Domain Names and its effort to opportunistically capitalize on the registration and use of the Domain Names. The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; and BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007. In addition, the evidence provided by Complainant has shown that at the time of filing of the Complaint, Complainant asserts that each of the Domain Names resolved to a website which prominently displayed “Galeries Lafayette Partners Online” with a link to “customer service” which redirected to a Telegram account which attempted to impersonate Complainant, and a link to a page which enabled Internet users to create an account on the site at each of the Domain Names, which generated a risk of phishing, impersonation, and collection of personal and financial identification data, each of which has not been rebutted by Respondent. Such use of the Domain Names is disruptive to Complainant’s business and potentially damaging to Complainant’s reputation and good will, and is evidence of bad faith. See Lennar Pacific Properties Management, Inc. et al v. IAutomation Contractors, WIPO Case No. D2022-1768; see also WIPO Overview 3.0, section 3.4. At the time of the Decision, all the Domain Names resolve to an inactive webpage, which does not change the Panel’s finding of Respondent’s bad faith. Further, the Panel also notes the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and the implausibility of any good-faith use to which the Domain Names may be put.
page 7 Accordingly, the Panel finds that Respondent registered and is using the Domain Names in bad faith and Complainant succeeds under the third element of paragraph 4(a) 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 Domain Names , , , , and be transferred to Complainant. /Kimberley Chen Nobles/ Kimberley Chen Nobles Sole Panelist Date: June 7, 2024
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