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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Societe Anonyme des Galeries Lafayette and Galeries Lafayette Voyages v. Domains By Proxy, Inc./Reinhard Herrmann

Case No. D2009-0904

1. The Parties

The Complainants are Societe Anonyme des Galeries Lafayette, and Galeries Lafayette Voyages, both of Paris, France, represented by Hirsch & Associés, France.

The Respondent is Domains By Proxy, Inc./ Reinhard Herrmann of Scottsdale, Arizona, United States of America and of Ockenheim, Germany, respectively.

2. The Domain Name and Registrar

The disputed domain name <lafayettevoyage.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 7, 2009. On July 7, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On July 7, 2009, GoDaddy.com, Inc. 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 Complainants on July 14, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on July 15, 2009. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent`s default on August 8, 2009.

The Center appointed Gökhan Gökçe as the sole panelist in this matter on August 20, 2009. 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 first Complainant is Societe Anonyme des Galeries Lafayette is a holding company for four major retail chains, including Nouvelles Galeries, Bazar Hotel de Ville, and Monoprix. Its namesake chain of department stores boasts Europe`s largest department store, the historic, ten-story flagship location in Paris, Galeries Lafayette Voyages.

The second Complainant is Galeries Lafayette Voyages located in Paris, France and is a globally known department store. The department store started as a fashion store in a small haberdasher`s shop at the corner of rue La Fayette and the Chaussée d`Antin, Paris opened in 1893. In 1896, the company expanded and purchased the entire building at n°1 rue La Fayette and in 1905 the buildings at n°38, 40 et 42, boulevard Haussmann and n°15 rue de la Chaussée d`Antin. This has since become the company`s flagship store and celebrated its 100^th anniversary in 1996.

The first Complainant is the registered owner of trademarks relied on in this Complaint and the second Complainant actively uses the trademarks.

The second Complainant offers a wide range of different goods and services to consumers including fashion, wedding lists, birthday lists and travel agency. Hereinafter both Complainants shall be jointly referred to as a single Complainant.

The Complainant has made several trademark registrations containing the word LAFAYETTE in France and other jurisdictions.

On July 1, 2008 the Complainant renewed its French registered trade mark LAFAYETTE, originally registered in 1998 and registered the same trademark as a Community Trademark before the OHIM on June 12, 2006. On December 30, 2008 the first Complainant renewed its French registered trademark GALERIES LAFAYETTE VOYAGES, originally registered in 1999.

On February 19, 1999, the Complainant registered the domain name <lafayettevoyages.com> amongst several other variations of this domain name.

The Respondent is Domains By Proxy, Inc. / Reinhard Herrmann. Domains by Proxy, Inc. provides a service to keep personal information private when registering a domain name, known as a "private registration". Reinhard Herrmann is an individual who appears to be residing in Germany. The Respondent registered the disputed domain name <lafayettevoyage.com> on February 28, 2007.

5. Parties` Contentions

A. Complainant

In accordance with Paragraph 4(b)(i) of the Policy, the Complainants requests that the domain name <lafayettevoyage.com> be transferred to the Complainant.

The Complainants submit the grounds for these proceedings are listed in Paragraph 4(a) of the Policy.

Identical or Confusingly Similar

The Complainant owns several registered trademarks and details those relevant to this dispute, namely its trademark LAFAYETTE and GALERIES LAFAYETTE VOYAGES. The Complainant registered its French trademark LAFAYETTE on December 4, 1998 and renewed its registration on July 1, 2008 as evidenced at Annex 5. The Complainant also registered the trademark LAFAYETTE as a community trademark with the OHIM on June 12, 2006 as evidenced at Annex 6.

The Complainant registered the French trademark GALERIES LAFAYETTE VOYAGES on January 8, 1999 and renewed its registration on December 30, 2008.

The Complainant contends that the disputed domain name <lafayettevoyage.com> is identical or confusingly similar to its trademarks which were registered prior to the Respondents registration of the disputed domain name on February 28, 2007.

The Complainant submits that it extensively uses the trademarks to offer a wide range of services in the field of travel booking and tourism and exhibits evidence of use at Annex 8. The Complainant notes that it is the owner of numerous domain names, among which it lists:

- <lafayettevoyages.com> created on February 19, 1999 as evidenced at Annex 9.

- <lafayette-voyages.com> created on March 24, 2004 as evidenced at Annex 10.

- <lafayette-voyages.fr> created on March 25, 2004 as evidenced at Annex 11.

- <lafayette-voyages.net> created on March 24, 2004 as evidenced at Annex 12.

- <lafayette-voyages.org> created on March 24, 2004 as evidenced at Annex 13.

- <lafayettevoyages.fr> created on March 25, 2004 as evidenced at Annex 14.

- <lafayettevoyages.net> created on March 23, 2004 as evidenced at Annex 15.

- <lafayettevoyages.org> created on March 24, 2004 as evidenced at Annex 16.

The Complainant also owns numerous domain names including the terms "galeries lafayette voyages" which are listed in Annex 17.

The Complainant contends that the disputed domain name is almost identical to the Complainant`s trademark LAFAYETTE save for the addition of the word VOYAGE, which the complainant submits is a generic word related to travel services.

It is submitted that the distinctive part of disputed domain name reproduces the Complainant`s LAFAYETTE trademark and that there is a likelihood of confusion with its trademark GALERIES LAFAYETTE VOYAGES.

The Complainant submits that its trademark is a well-known trademark both in France and internationally. Furthermore, the Complainant asserts that the disputed domain name is also confusingly similar to its domain names listed in annex 9 – 17, which creates an increased level of confusion and likelihood that Internet users will assume that the disputed domain name is hosted by the Complainant offering travel related services and products.

Rights or Legitimate Interests

The Complainant submits that the Respondent when registering the domain name deliberately chose a "private registration" which delayed the complainant in identifying the Respondent, Reinhard Herrmann. The Complainant asserts that it is obvious the name Reinhard Herrmann has nothing to do with the terms LAFAYETTE and VOYAGE and that the disputed domain name is not necessary for the online business of Reinhard Herrmann.

The Complainant contends that the trademarks LAFAYETTE and GALERIES LAFAYETTE VOYAGES are used solely by the Complainant to offer travel services from its own website and places of business.

The Complainant contends that the Respondent is not using the disputed domain name for legitimate non-commercial or fair use of the domain name, without intent for commercial gain or to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant asserts that the Respondent registered the disputed domain name with the intention of creating a parking page with commercial links related to travel services which are identical to the services offered by the Complainant as evidenced in Annex 5 to 8.

The Complainant notes the disputed domain name automatically diverts the Internet user to "http://ndparking.com/lafayettevoyage.com" and exhibits a screen shot at Annex 21. Furthermore, this webpage contains advertising links related to travel services which generate income for the Respondent, therefore the Respondent is misleadingly diverting Internet users searching for the Complainant`s website and travel services.

Registered and Used in Bad Faith

The Complainant notes that the disputed domain name is re-directed to a webpage that contains links written in French which it submits this demonstrates that it is intended for French consumers.

The Complainant submits that its trademarks LAFAYETTE and GALERIES LAFAYETTE VOYAGES are well known trademarks and that the Respondent, must have had prior knowledge of this when he registered the disputed domain name in 2007. Furthermore, the fact that the Respondent uses French as French Internet users will be especially attracted to the disputed domain name in the belief that it is associated or affiliated with the Complaint and its trademarks.

The Complainant notes that when one of the links on the Respondents parking page are clicked, the Internet user is diverted to a new parking page containing further links to hotels which when clicked divert the users to various sites related to travel services as evidenced in Annex 21. The Complainant submits that the website that Internet users are diverted to offer services in the travel industry which is in direct competition with services offered by the Respondent.

The Complainant submits that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to the respondent`s web site or other on-line location, by creating a likelihood of confusion with the Complainant`s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent`s web site or location or of a product or service on the Respondent`s web site or location.

The Complainant contends that the disputed domain name was registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant`s contentions. Pursuant to Paragraph 5(e) of the Rules, if a respondent does not submit a response, in the absence of exceptional circumstances, the panel shall decide the dispute based upon the complaint.

However, failure to respond in a Policy proceeding does not constitute an admission of any pleaded matter. The Panel will proceed to evaluate Complainant`s evidence and its own examination of the Respondent`s website against the requirements of Paragraph 4(a) of the Policy, Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Policy simply requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

The Panel is satisfied that the Complainant is the owner of the trademarks LAFAYETTE and GALERIES LAFAYETTE VOYAGES. The disputed domain name is <lafayettevoyage.com>. The Panel finds that the disputed domain name is confusingly similar to the Complainant`s trademarks as the LAFAYETTE trademark is fully incorporated within the Domain Name and comprises the dominant portion thereof. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson Sr., WIPO Case No. D2000-1525 "when a domain name wholly incorporates a complainant`s registered mark, which is sufficient to establish identity or confusing similarity for the purposes of the Policy".

The Panel finds that the addition of the generic word "voyage" meaning travel in both French and English does not distinguish the Respondent`s domain name from Complainant`s mark because the domain contains Complainant`s LAFAYETTE mark in its entirety. It is also well-established under the Policy that a domain name composed of a trademark coupled with a generic term is still confusingly similar to the trademark, Veuve Clicquot Ponsardin v. Net-Promotion, Inc., WIPO Case No. D2000-0347. Furthermore the generic term, "voyage" is directly related to Complainant`s business and the addition of generic word is especially confusing where the generic words bear an obvious relationship to Complainant`s business.

In passing, the Panel also notes the Complainant operates the website "www.lafayettevoyages.com" which is identical to the disputed domain names, save the absence of ‘s` in the disputed domain name.

In view of the foregoing, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights, and therefore, the Complainants have succeeded on this first element under the Policy.

B. Rights or Legitimate Interests

In accordance with Paragraph 4(a)(ii), the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain names. Although the Policy states that the Complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative and it has therefore generally accepted under the Policy that, once a Complainant has presented a prima facie case of a Respondent`s lack of rights or legitimate interests in a domain name, the burden shifts to the Respondent. The Policy at Paragraph 4(c) provides various ways in which a Respondent may demonstrate rights or legitimate interests in the domain name.

The Complainant contends that the Respondent is not using the disputed domain name for a legitimate noncommercial or fair use of the domain name, without intent for commercial gain or to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Complainant asserts that the Respondent registered the disputed domain name with the intention of creating a parking page with commercial links related to travel services which are identical to the services offered by the Complainant as evidenced in Annex 5 to 8. The Panel finds registering a domain name incorporating a well-known trade mark and using it to misdirect Internet users to websites offering competing products and services, with the apparent intention of earning click-through revenue, does not by itself give rise to a legitimate interest. Although other panels have found use of the domain name in this manner may be considered proper use of domain names the general consensus is that the it must not conflict with another`s trademark rights, as is the case in this dispute, Volvo Trademark Holding AB v. Unasi, Inc. WIPO Case No. D2005-0556.

The Complainant has submitted evidence at Annex 21 that demonstrates that the Respondent is using the disputed domain names to attract Internet users to its own website for commercial gain. The Panel is of the opinion that such use cannot be considered a bona fide use, or fair or noncommercial use.

Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the disputed domain name. The Complainant has established a prima facie case that the Respondent lacks a right or legitimate interest in the disputed domain name. As the Respondent failed to submit a response and rebut the allegations made against him the Panel accepts the Complainants contentions as true, De Agostini S.p.A v. Marco Cialone, WIPO Case No. DTV2002-0005.

In the absence of a response, the Respondent was unable to demonstrate a legitimate interest or right in the disputed domain names and therefore the Panel accepts the Complainants` contentions as true. The Panel therefore concludes that the Respondent has not satisfied Paragraph 4(c) of the Policy and concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

The requirements of 4 (a)(ii) are fulfilled and consequently the Panel finds in favour of the Complainants on the second element of the Policy.

C. Registered and Used in Bad Faith

According to Paragraph 4(a)(iii) of the Policy, the Complainant must prove is that the disputed domain names have been registered and are being used in bad faith.

The Complainant`s trademarks LAFAYETTE and GALERIES LAFAYETTE VOYAGES were registered long before the Respondent`s registration of the disputed domain name.

The Panel finds that in all likelihood the Respondent was aware of the Complainant`s trademark, which reflects the Complainant`s commercial name, before registering the disputed domain name. Therefore the Respondent, at the time of registration, must have been aware that any legitimate commercial use of the domain name would result in a violation of the Complainant`s trademark rights, suggesting that there was never an intention of good faith use, Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Complainant submits that the disputed domain name is re-directed to a webpage that contains links written in French and that Internet users will be especially attracted to the disputed domain name in the belief that it is associated or affiliated with the Complaint and its trademarks. The Panel finds parking a domain name in such a manner for financial gain demonstrates bad faith on the part of the registrant. Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584.

There is no reply from the Respondent, while this not conclusive of bad faith it is a consideration to be taken into account to support the Complainants contentions of bad faith. The Respondent did not provide full contact details and initially tried to conceal his identity with a private registration which in this case is also an indication of bad faith.

As in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Ladbroke Group Plc v. Sonnoma International LDC, WIPO Case No. D2002-0131 after examining all circumstances surrounding the registration and use of the domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Accordingly the Panel finds in favour of the Complainant on the third element of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <lafayettevoyage.com> be transferred to the Complainant.

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Gökhan Gökçe
Sole Panelist

Dated: September 3, 2009