The Complainant is Holding Le Duff “HLD”, France, represented by Scan Avocats AARPI, France.
The Respondent is Sarah Hampton, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2021. On January 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 27, 2021, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on February 1, 2021 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 on February 2, 2021. 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 February 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 18, 2021. The Center appointed Richard C.K. van Oerle as the sole panelist in this matter on March 23, 2021. 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, which was established in 1976, is specialized in restaurants and bakeries worldwide, inter alia under the brand name BRIOCHE DOREE. Under this name, it has today 443 restaurants and bakeries around the world, serves 270,000 customers every day and is expanding both in France and abroad. According to the evidence submitted the Complainant holds various national and international registrations for the trademark BRIOCHE DOREE, inter alia European Union trademark No. 001424290 filed on December 15th, 1999, and registered on November 27, 2000, for goods and services in classes 29, 30 and 42. It concerns a figurative mark in which the words BRIOCHE DOREE are written in a special script: The trademark will be referred to hereunder as “the Trademark”. The disputed domain name The Complainant asserted that the Trademark is well-known in France and worldwide. According to the Complainant, the disputed domain name reproduces identically its “BRIOCHE DOREE” Trademark, without any other element so that it inevitably creates a likelihood of confusion with the Trademark. The addition, for technical reasons, of the country code top-level domain (“ccTLD”) “.co” at the end of the disputed domain name is irrelevant in the comparison of the signs at stake. The Complainant therefore claims that the disputed domain name is identical or confusingly similar to the Trademark. The Respondent is not currently and has never been known under the name “BRIOCHE DOREE”. The Complainant has never licensed, authorized, or otherwise permitted the Respondent to register a domain name incorporating its Trademark, nor to make any use of the Trademark in order to distinguish its own business and ascertains that the Respondent is not in any way related to its business and does not carry out any activity for or has any business with it. The Complainant therefore claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant asserted the strong reputation and the leading position of the Trademark in France and abroad in the field of restaurant and bakery café market. Therefore, it is highly likely that the Respondent knew of the existence of the Complainant’s prior intellectual property rights at the time the disputed domain name was registered. Considering the identity between the disputed domain name and the Complainant’s Trademark and the offering for sale of the disputed domain name by the Respondent, it is most likely that the Respondent registered the disputed domain name having the Complainant’s Trademark in mind. Therefore, registering the disputed domain name reproducing the Trademark cannot be considered accidental and proves that the Respondent has registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant or to a competitor, for valuable consideration in excess of the Complainant’s costs, which is a proof of bad faith. The Complainant therefore claims that the disputed domain name has been registered and is being used in bad faith. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; The Complainant has established that it has registered trademark rights in the Trademark. The Trademark is figurative in nature and consists of a stylized representation of the letters BRIOCHE DOREE. The textual element BRIOCHE DOREE is, however, dominant. The non-textual elements of the Trademark do not detract in any way from the prominence of the word element of the Trademark, which is the most prominent element. The disputed domain name incorporates the entire dominant part of the Trademark. The ccTLD “.co” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 3.0, section 1.11). The Panel therefore finds that the disputed domain name is confusingly similar to the Trademark in which the Complainant has rights. The first condition of the Policy is met. B. Rights or Legitimate Interests While 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 often impossible 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see WIPO Overview 3.0, section 2.1). There is no evidence suggesting that the Respondent has any rights or legitimate interests in the disputed domain name. The Complainant has not granted any authorization to the Respondent. The disputed domain name redirects to a website where the domain name is offered for sale. There is no evidence of any bona fide use in the case file. The Panel did not find any indications that the Respondent has rights to or legitimate interests in the disputed domain name in any other way. The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith In the absence of any explanation from the Respondent for its choice of the disputed domain name, the Panel accepts the Complainant’s submission that the Respondent is likely to have registered the disputed domain name with the Complainant’s distinctive Trademark in mind and with the intention of taking unfair advantage of the Complainant’s rights in that Trademark. In addition, the panel ex officio further established that the Respondent has been respondent in UDRP procedures six times.1 The Respondent never filed a response, and in all of the cases, the transfer of the domain name was ordered. It is also striking that the domain names in all of these proceedings were filed on July 31 and August 1, 2020. On the latter date, the disputed domain name in this case was also registered. The registration of the disputed domain name was clearly abusive, targeting the Complainant’s famous BRIOCHE DOREE trademark, which was well known long before the registration of the disputed domain name. The Panel also accepts the Complainant’s unrebutted submissions and evidence that the Respondent registered the disputed domain name with the intention of selling it for a sum in excess of its out-of-pocket costs of registration (paragraph 4(b)(i) of the Policy), given that the disputed domain name has a minimum indicated price of USD 688 without any evidence from the Respondent as to its expenses. It is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the disputed domain name. The circumstances of this case justify a finding of registration and use in bad faith. The Panel concludes that the disputed domain name was registered and is being used in bad faith, within the meaning of the paragraph 4(a)(iii) 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, Richard C.K. van Oerle 1 See: Biofarma v. Sarah Hampton,WIPO Case No. DCO2020-0062; Expanscience v. Sarah Hampton,WIPO Case No. DCO2020-0064; Koninklijke Douwe Egberts B.V. v. Sarah Hampton,WIPO Case No. DCO2020-0068; Teva Pharmaceutical Industries Limited v. Sarah Hampton, WIPO Case DCO2020-0070; Vente-privee.com and Vente-privee.com IP S.à.r.l. v. Sarah Hampton,WIPO Case No. DCO2020-0073; and Compagnie Générale des Etablissements Michelin v. Sarah Hampton,WIPO Case No. DCO2020-0084.
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Sole Panelist
Date: March 24, 2021
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