The Complainant is Holding Le Duff "HLD" of Rennes, France, represented by AARPI Clairmont Avocats, France.
The Respondent is VistaPrint Technologies Ltd of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 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 June 29, 2016. On June 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 29, 2016, 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 July 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 26, 2016.
The Center appointed Zoltán Takács as the sole panelist in this matter on August 3, 2016. 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.
The language of this administrative proceeding is English, that being the language of the Registration Agreement. 4. Factual Background
The Complainant, known as the "Group Le Duff" is a French restaurant conglomerate, with holdings in Europe and the Americas, consisting of over 1,658 restaurants and bakeries. The company was founded in 1976 by Louis Le Duff and as of 2014 had 28,000 employees and sales of over EUR 2 billion.
The Complainant owns European Union Trade Mark ("EUTM") registration No. 001146851 for the word mark GROUPE LE DUFF, registered on June 20, 2000, for goods and services of Classes 29, 30, 32, 35 and 42 of the Nice Agreement Concerning the International Classification of Good and Services for the Purpose of the Registration of Marks (hereinafter: the "Nice Classification").
The Complainant also owns French Trade Mark Registration No. 99786142 for the word mark GROUPE LE DUFF, registered on April 13, 1999, for goods and services of Classes 29, 30, 32, 41, 42, 43 and 45 of the Nice Classification.
The Complainant owns the domain name , the registration date for this domain name being October 22, 2003.
The disputed domain name was registered on March 21, 2016.
Both at the time of filing of the Complaint and rendering of this administrative decision the disputed domain name resolved to a website displaying the Respondent's logo and the message: "WEBSITES ARE FREE AT VISTAPRINT.COM/WEBSITES. Create Your Website in Minutes. Grow your business with an online presence. Coordinate your brand-online and offline. No programming skills needed." 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name reflects its GROUPE LE DUFF trademark in its entirety.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii) or (iii) of the Policy.
The Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith. Given the uniqueness and strong distinctive character of the Complainant's GROUPE LE DUFF trademark, the Respondent most likely knew of it at the time of registering the disputed domain name.
The fact that the disputed domain name resolves to a website of the Respondent indicates that the disputed domain name was obtained with intent to ride on reputation of the Complainant's GROUPE LE DUFF trademark. In addition, the Respondent has already been involved in great number of UDRP proceedings leading to transfers and it appears that the Respondent is familiar with registration of domain names reproducing third parties' prior rights. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel's decision be made "on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".
It has been a consensus view in UDRP panel decisions that a respondent's default does not automatically result in a decision in favor of the complainant. See paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;
(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
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
It has been a consensus view among UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced adequate evidence that it holds registered rights in the trademark GROUPE LE DUFF, and for the purpose of this proceeding, the Panel establishes that the Complainant's EUTM Registration No. 001146851 and French Trade Mark Registration No.99786142 for the mark GROUPE LE DUFF satisfy the requirement of having trademark rights for the purpose of the Policy.
Having determined that the Complainant has trademark rights in the GROUPE LE DUFF mark, the Panel next assessed whether the disputed domain name is identical or confusingly similar to the GROUPE LE DUFF mark of the Complainant.
According to paragraph 1.2 of the WIPO Overview 2.0, the threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, negative terms in the domain name typically being regarded as insufficient to prevent threshold Internet user confusion. In addition, the applicable top-level suffix in the domain name would also be usually disregarded under the confusing similarity test, as it is a technical requirement of registration.
The applicable top-level suffix in the disputed domain name, ".co", country code Top-Level Domain ("ccTLD") for Colombia should in relation to this administrative proceeding be disregarded. Hence the relevant part of the disputed domain name is "groupeleduff" and without doubt it is identical to the Complainant's GROUPE LE DUFF trademark.
The Panel finds that the disputed domain name is identical to the GROUPE LE DUFF trademark of the Complainant and that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds
well-established rights in the trademark GROUPE LE DUFF.
The Complainant has never authorized the Respondent to use its GROUPE LE DUFF trademark in any way, and the Complainant's prior rights in the GROUPE LE DUFF trademark long preceded the date of registration of the disputed domain name.
It has been a consensus view among UDRP panels, that although the burden of proof rests with the complainant, this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. If a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production then shifts to the respondent.
The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant's prima facie case.
On the basis of all these facts and circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
"(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 Complainant presented undisputed evidence which convinces the Panel that the Respondent has registered and is using the disputed domain name in bad faith.
The Complainant's GROUPE LE DUFF trademark is highly distinctive, and the disputed domain name is reproducing it in its entirety. These facts lead this Panel to conclude that the Respondent must have been aware of the Complainant's trademark at the time of obtaining the disputed domain name.
In the Panel's opinion the only plausible explanation for the Respondent's choice to register the disputed domain name that matches the widely reputed trademark of the Complainant is to exploit the reputation behind the GROUPE LE DUFF trademark without any authorization or rights to do so.
The Respondent is a business enterprise and the fact that disputed domain name resolves to its website that advertises its services in view of the Panel support applicability of paragraph 4(b)(iv) of the Policy in this case.
The Respondent had already been involved in a number of UDRP cases because of registering domain names reproducing or incorporating trademarks of third parties, such as inter alia First American Financial Corporation v. VistaPrint Technologies Ltd,WIPO Case No. DCO2016-0008; Haas Food Equipment GmbH v. VistaPrint Technologies Ltd,WIPO Case No. D2015-2050; Statoil ASA v. VistaPrint Technologies Ltd,WIPO Case No. D2014-1949; Koc Holding A.S. v. VistaPrint Technologies Ltd.,WIPO Case No. D2015-0886 .
All of these proceedings resulted in transfers of the corresponding domain names registered by the Respondent, since all Panels found bad faith registration and use of the domain names by the Respondent.
The Panel finds that the Respondent has engaged in a pattern of conduct of bad faith registration of domain names incorporating trademarks of third parties. Moreover, the Panel cannot conceive of any legitimate use that the Respondent could plausibly make of the disputed domain name, which incorporates the Complainant's trademark in its entirety.
In light of the above the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied. 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.
Zoltán Takács
Sole Panelist
Date: August 15, 2016
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