The Complainant is The City of Paris of Paris, France and Carré des Champs Elysées of Paris, France, represented by Alain Bensoussan SELAS, France.
The Respondent is Arnaud Nicolas Courte, Europe Duty Free of London, United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <pavillonledoyen-epicerie.com> is registered with Network Solutions, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2016. On October 10, 2016, the Center transmitted to the Registrar by email a request for registrar verification in connection with the disputed domain name. On October 11, 2016, the Registrar transmitted its verification response to the Center by email confirming that the Respondent is listed as the registrant and providing the registrant’s 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 October 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 14, 2016.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on November 23, 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 Complainants are The City of Paris and Carré des Champs Elysées of Paris.
The City of Paris is the owner of the French trademark LEDOYEN No. 92408957, filed on March 6, 1992 registered and regularly renewed for “alcoholic beverages (except beers)” in class 33 of the International classification of Nice, and also for food products in classes 29 and 30 and for non-alcoholic drinks in class 32.
By an agreement for occupation of publicly-owned property of June 26, 2013, Carré des Champs Elysées was allowed by the City of Paris to operate the restaurant “Pavillon Ledoyen” in the eponymous mansion, including an exclusive license agreement covering the French Trademark LEDOYEN No. 92408957. Since then, Carré des Champs-Elysée operates the restaurant “Pavillon Ledoyen”, which has been run since July 2014 by chef Yannick Alléno.
The Complainant served notice to the Respondent to cease and desist from using the terms “Pavillon Ledoyen” or “Ledoyen” as a trademark in the future, as well as using the terms as a shop name, trade name, company name or domain name, and to stop infringing the intellectual property rights of the City of Paris and Carré des Champs-Elysées in any manner whatsoever, on February 18, 2015.
The Respondent had registered the domain name <pavillonledoyen-epicerie.com> on September 18, 2015.
The Complainant claims that the domain name <pavillonledoyen-epicerie.com> is similar to the trademark LEDOYEN. Indeed, it reproduces the predominant and distinctive element “Ledoyen” of the trademark LEDOYEN and adds the words “pavillon” and “epicerie”, which means “grocery” in French. The Complaint claims that those two terms are unable to reduce the likelihood of confusion given that they are purely descriptive of:
- the nature of the building, i.e. a detached building in a property or a park or a private house, located on the outskirts of a large town, which correspond to the situation of the Pavillon Ledoyen in the Ledoyen square of the Champs-Elysées gardens. Moreover, the terms “Pavillon Ledoyen” and “Ledoyen” are used equally by the public to describe the eponymous building and restaurant, so that the addition of “pavillon” in the Disputed Name matches with a current use of prior trademark LEDOYEN;
- the nature of the goods sold by the company through the website “www.pavillonledoyen-epicerie.com”, i.e. retail trade foodstuffs, grocery products and other food and drink products.
Furthermore, the Complainant claims that there is an identity of the goods and services as the trademark LEDOYEN No. 92408957 designates alcoholic beverages and the website “www.pavillonledoyen-epicerie.com” is used to sell Champagne.
The Complainant claims that the Respondent has no rights or legitimate interests in respect of the domain name <pavillonledoyen-epicerie.com>.
In fact, the Respondent does not hold any protected trademark in France or in in the European Union composed of the term “Ledoyen”. In addition, there is no link, legal, commercial or otherwise, between the Respondent and the Complainant, which have strictly different activities. The Complainant did not at any time authorize the Respondent to use the sign “Ledoyen” or any other nearly identical sign which might be claimed by the Respondent to justify the registration of the domain name <pavillonledoyen-epicerie.com>.
The Respondent has deliberately chosen to imitate the LEDOYEN sign to designate goods and services related to restaurant and delicatessen products, in conditions likely to create a risk of confusion with the trademark LEDOYEN and the restaurant “Pavillon Ledoyen”. The Respondent seeks to take unfair advantage of the reputation of Pavillon Ledoyen and the related trademark in order to divert consumers and benefit from the image of quality and excellence related to the restaurant “Pavillon Ledoyen”.
Finally, the Complainant claims that the domain name was registered and is being used in bad faith.
The Complainant put the Respondent on notice to cease and desist from using the terms “Pavillon Ledoyen” or “Ledoyen” in the future as a trademark, shop name, trade name, company name or domain name, and to stop infringing the intellectual property rights of the City of Paris and Carré des Champs-Elysées in any manner whatsoever, on February 18, 2015. Despite these formal notices, the Respondent pursued illegal actions and registered the domain name <pavillonledoyen-epicerie.com> on September 18, 2015. Moreover, the Respondent did not answer these formal notices.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy requires the Complainant to prove that:
a) the domain name is identical or confusingly similar to a service mark to which the Complainant has rights;
b) the Respondent has no legitimate interest in respect of the domain name;
c) the domain name has been registered and is being used in bad faith.
The City of Paris is the owner of the French trademark LEDOYEN No. 92408957, filed on March 6, 1992 registered and regularly renewed for “alcoholic beverages (except beers)” in class 33 of the International classification of Nice, and also for food products in classes 29 and 30 and for non-alcoholic drinks in class 32 and for services for providing food and drinks in class 43.
The domain name <pavillonledoyen-epicerie.com> is confusingly similar to the French trademark LEDOYEN and creates a risk of confusion with the prior trademark.
In making the comparison between the trademark and the disputed domain names the generic Top-Level Domain (“gTLD”) suffix “.com” is usually disregarded, because it has no legal significance (see Diageo p.l.c. v. John Zuccarini, WIPO Case No. D2000-0541; Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698).
The term “Ledoyen” is entirely replicated in the domain name as well as the word “Pavillon” which is often combined with the term “Ledoyen” to identify the restaurant owned by the City of Paris. Furthermore, the term “epicerie” which means “grocery” in French creates a risk of confusion because the nature of the goods understood by this term are similar to the products for which the prior trademark LEDOYEN has been registered.
Therefore, the Panel finds that the Domain Name is identical with and confusingly similar to the French trademark LEDOYEN owned by the Complainant, pursuant to the Policy, paragraph 4(a)(i).
The Respondent is in default and has failed to respond in this action.
The evidence available contains nothing that may prove a link, legal, commercial or otherwise, between the Respondent and the Complainant. The Complainant has never authorized the Respondent to use or exploit its French trademark LEDOYEN No. 92408957.
Furthermore, the Respondent does not hold any trademark with the terms “Ledoyen” or “Pavillon Ledoyen”.
Therefore, the Panel finds that the Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy, paragraph 4(a)(ii).
The Complainant submits that the Respondent is the Chief Executive Officer of a company called EAOC. EAOC has previously been found to infringe the rights of the Complainant by registering and exploiting the domain names <pavillonledoyen.com> and <pavillonledoyen.net> (Commune de Paris et SAS Le Carré des Champs-Elysées v. EAOC, WIPO Case No. D2015-0808, <pavillonledoyen.com> and <pavillonledoyen.net>).
Hence, this Panel believes that the Respondent could not ignore the existence of the prior trademark LEDOYEN as well as the existence of “Pavillon Ledoyen” and the restaurant “Ledoyen”. The addition of the words “Pavillon” to the term “Ledoyen” was made knowingly in order to take advantage of the reputation of the sign “Ledoyen”. Furthermore, the addition of the term “epicerie” was meant to create a risk of confusion with the trademark LEDOYEN and the products and services related.
Finally, despite the formal notice sent by the Complainant on February 18, 2015, the Respondent pursued illegal actions and registered the domain name <pavillonledoyen-epicerie.com> on September 18, 2015.
Moreover, the evidence shows that the Respondent used the term “Ledoyen” on the packaging of the products sold on the website “www.pavillonledoyen-epicerie.com” and took unfair advantage of the reputation and image associated with the sign LEDOYEN and the restaurant “Pavillon Ledoyen”.
For the reasons set forth above, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, and that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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, <pavillonledoyen-epicerie.com> be transferred to the Complainant the City of Paris.
Nathalie Dreyfus
Sole Panelist
Date: December 2, 2016