The Complainant is Laforet France, France, represented by Cabinet Bouchara, France.
The Respondent is WhoisGuard Inc., Panama / Guillaume Gontrand, France.
The disputed domain name <laforetfrance.com> is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2020. On December 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 21, 2020, 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 December 22, 2020 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 December 23, 2020.
On December 22 and 23, 2020, the Complainant sent informal emails to the Center in relation to the use of the mail servers associated with the disputed domain names.
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 January 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2021.
The Center appointed Benjamin Fontaine as the sole panelist in this matter on March 4, 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.
The Complainant operates a network of real estate agencies, through a franchising scheme. The Complainant has been active in France for thirty years and is present in all the territory with nearly 700 agencies. The Complainant’s trade mark LAFORET is highly reputed in this field of activity in France.
As a basis for this Complaint, the Complainant relies in particular on the following trade marks:
- French trade mark LAFORET (word) No. 3270835, of January 30, 2004;
- European Union trade mark LAFORET (word) No. 3714763 of March 15, 2004;
- French trade mark LAFORET (and logo) No. 4608837 of December 19, 2019.
In support of its activities, the Complainant also owns and uses the domain name <laforet.com>. In particular, the emails of its employees are set up using this domain name.
The disputed domain name was registered on November 5, 2020, through a privacy shield service. The identity of the Respondent was disclosed by the Registrar in the course of this UDRP proceeding. The actual Respondent is an individual domiciled in France.
In mid-December 2020, third parties exchanged emails with individuals who were allegedly employees of the Complainant, regarding an offer of long term rental of parking lots. The emails of these alleged employees were set up using the disputed domain name. The messages included in particular the registered trade mark and logo of the Complainant, as well as its company name. Enclosed to these emails were draft agreements to be completed and signed by these third parties. These drafts also reproduced the Complainant’s details and full address and companies’ registry. Eventually one of these potential clients alerted the Complainant and the very sophisticated fraud was discovered.
Shortly after, the Complaint filed a formal complaint with the French police, as well as the present Complaint.
The arguments of the Complainant can be summarized as follows:
On the confusing similarity, the Complainant indicates that the disputed domain name fully incorporates its trade mark LAFORET. Besides the additional element, “france”, corresponds to the second part of its company name.
On the rights and legitimate interests of the Respondent, the Complainant indicates that the former does not own any rights over the trade mark LAFORET, is not authorized by the Complainant to use its trade marks, and is not related to it. Besides, the operation of a fraudulent phishing scam cannot amount to a bona fide offering of goods and services.
On the registration and use of the disputed domain name in bad faith, the Complainant indicates that the Respondent uses the disputed domain name to set up emails and impersonate its identity, as part of the fraudulent scheme described above.
The Respondent did not reply to the Complainant’s contentions.
As a preliminary remark, the Panel notes that the Complainant has filed a complaint with the French police over the facts described above. In accordance with paragraph 18(a) of the Rules, “[i]n the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision”. In this case, the mere filing of a complaint with the police does not have an impact on this proceeding. Indeed, it does not open per se a specific judiciary proceeding and, more importantly, it does not directly concern the registration and use of the disputed domain name. Therefore, there is no cause for suspension or termination of the UDRP proceeding, and the Panel will take a decision on the merits of this case.
Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings:
(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 was registered and is being used in bad faith.
The Complainant, under the first requirement of paragraph 4(a) of the Policy, needs to establish that the disputed domain name is confusingly similar to a trade mark or a service mark in which it has rights.
It is generally accepted that the test of confusing similarity is reasonably straightforward and functions primarily as a standing requirement. As indicated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
This test is satisfied here, as the disputed domain name reproduces, identically and in first position, the trade mark LAFORET of the Complainant. This trade mark is immediately perceptible, as it is placed in first position. The addition of the geographical term “France” does not prevent a finding of confusing similarity between the disputed domain name and the trade mark LAFORET.
Therefore, the Panel finds that the first element of the Policy is satisfied.
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In this case, the Complainant has sufficiently argued that the Respondent is not commonly known by the disputed domain name, and has not been authorized by the Complainant to register and use the disputed domain name. What is more, the use of the disputed domain name in connection with a fraudulent phishing scheme does not qualify as fair use.
Accordingly and absent specific allegations of the Respondent, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
In order to prevail under the third element of paragraph 4(a) of the Policy, the Complainant must demonstrate that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances, which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
The Respondent has indeed registered and used the disputed domain name in bad faith. It chose a domain name highly similar to that of the Complainant, which combines its well-known trade mark LAFORET to the word “France”. This additional element reinforces the confusion as it refers to the company name of the Complainant and to the country where it is established and offers its services. The Respondent then set up emails using the disputed domain name to conduct its sophisticated fraudulent activities as described above. Clearly, the emails sent by the Respondent to third parties had the appearance of real communications emanating from the Complainant. The Respondent did attract these potential clients through this scheme to obtain illegitimate financial gains.
Accordingly, the Panel finds that the third criteria element set out in paragraph 4(a) of the Policy is also satisfied.
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 <laforetfrance.com> be transferred to the Complainant.
Benjamin Fontaine
Sole Panelist
Date: March 16, 2021