The Complainant is Le Bon Marché, Maison Aristide Boucicaut (Société anonyme) of Paris, France, represented by TWELVE, France.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Jean Su, Domain Name Parking Corporation of San Jose, California, United States.
The disputed domain name <thegrandeepicerie.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2018. On June 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 5, 2018, 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 June 20, 2018, 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 amended Complaint on June 28, 2018.
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 July 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 22, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 23, 2018.
The Center appointed John Swinson as the sole panelist in this matter on August 1, 2018. 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 Complainant is Le Bon Marché, Maison Aristide Boucicaut (Société anonyme) of Paris, France. The Complainant operates Le Grande Epicerie Paris, which is a gourmet grocery store known for its high-end and luxury goods. The Complainant’s stores are found in three locations in Paris.
The Complainant owns several registered trade marks including LA GRAND EPICERIE DE PARIS (stylized), French registered trade mark number 1521689, registered on March 30, 1989 (the “Trade Mark”). The Complainant operates an online version of its grocery store at the domain name <lagrandeepicerie.com>.
The Respondent is Jean Su, an individual of the United States. The Respondent did not file a Response, and consequently little information is known about the Respondent.
The Respondent registered the Disputed Domain Name on November 27, 2014. At the time of this decision, the Disputed Domain Name redirects to a website at <thegourmetcorner.com>, which also appears to offer for sale gourmet food and wine.
According to the Complainant, at the time the Complaint was filed, the Disputed Domain Name was available for sale, and did not resolve to an active website.
The Complainant makes the following contentions.
Identical or Confusingly Similar
The Disputed Domain Name is identical, or at least strongly confusingly similar, to the Trade Mark for the following reasons:
- The Disputed Domain Name substitutes the generic prefix “la” in the Trade Mark for its English translation, “the”. This is not sufficient to distinguish the Disputed Domain Name from the Trade Mark.
- The Disputed Domain Name omits the geographical reference “Paris”. The addition of a city does not affect confusing similarity and does not distinguish the Disputed Domain Name from the Trade Mark.
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant enjoys exclusive rights in the Trade Mark. The Complainant has not licensed the Respondent to use the Trade Mark or the Disputed Domain Name, and there is no link between the Complainant and the Respondent.
The Disputed Domain Name is available for sale, which shows the Respondent’s lack of rights or legitimate interests in the Disputed Domain Name.
The Respondent registered and is using the Disputed Domain Name in bad faith for the following reasons:
- There is a strong similarity between the Trade Mark and the Disputed Domain Name.
- The Trade Mark has a strong reputation, so it is unlikely that the Respondent was not aware of the Trade Mark at the time it registered the Disputed Domain Name.
- The Disputed Domain Name is currently available for sale, which shows that the Respondent intended to profit from its registration of the Disputed Domain Name despite the Complainant’s earlier rights.
- There is no active website associated with the Disputed Domain Name.
The Respondent did not reply to the Complainant’s contentions.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.
The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default.
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Panel considers that the Disputed Domain Name is confusingly similar to the Trade Mark. As submitted by the Complainant, the Disputed Domain Name differs from the Trade Mark only by the substitution of the generic prefix “la” for its English translation (“the”), and the omission of the geographical descriptor “de Paris”.
These differences do not distinguish the Disputed Domain Name from the Trade Mark. The Trade Mark is recognizable within the Disputed Domain Name (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7).
The Complainant succeeds on the first element of the Policy.
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel considers the Complainant has made out a prima facie case. This finding is based on the following:
- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The Disputed Domain Name currently redirects to a website at the domain name <thegourmetcorner.com>, which appears to be an online store offering for sale gourmet or luxury food and wine. These are the same goods and services offered by the Complainant under the Trade Mark. It appears to the Panel that the Respondent is using the Disputed Domain Name to profit from the goodwill and reputation of the Trade Mark. This is not a bona fide use of the Disputed Domain Name.
- According to the Complainant, at the time the Complaint was filed, the Disputed Domain Name was available for sale. The Complainant has provided no evidence of this. The Annex to which the Complainant referred the Panel in support of this assertion had been mislabeled. The Complainant also stated that there was no active website associated with the Disputed Domain Name.
- The Panel accepts the Complainant’s submission that it has not licensed or otherwise authorized the Respondent to use the Trade Mark or the Disputed Domain Name.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name, or has registered or common law trade mark rights in relation to this name.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name, as the Disputed Domain Name currently redirects to a competing online store.
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Complainant has longstanding rights in the Trade Mark. Despite the fact that the Complainant operates only in Paris, the Panel is satisfied that the Trade Mark has a strong reputation internationally. The Complainant has provided some evidence of its reputation.
This, coupled with the fact that the Respondent is using the Disputed Domain Name to redirect Internet users to a competing gourmet grocery store, strongly suggests that the Respondent was aware of the Complainant and the Trade Mark at the time it registered the Disputed Domain Name. This is sufficient to show registration in bad faith.
Further, the Panel finds that, by using the Disputed Domain Name in this way, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Respondent is trading off the goodwill and reputation in the Trade Mark to divert Internet users to a competing store. This is evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
In light of the above, and in the absence of a Response and any evidence rebutting bad faith registration and use, the Panel finds that the Complainant has succeeded on the third element 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 <thegrandeepicerie.com> be transferred to the Complainant.
John Swinson
Sole Panelist
Date: August 15, 2018