WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alain Afflelou Franchiseur v. Benson E Ashley S.L.

Case No. D2021-3053

1. The Parties

The Complainant is Alain Afflelou Franchiseur, France, represented by Novagraaf France, France.

The Respondent is Benson E Ashley S.L., Spain.

2. The Domain Name and Registrar

The disputed domain name <alainaflelou.com> is registered with Acens Technologies, S.L.U. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 21, 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 September 23, 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 also on September 23, 2021.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2021.

On October 25, 2021, the Center sent an email communication regarding the language of the proceeding as the Complaint was submitted in English, and the Registrar confirmed that the language of the Registration agreement was Spanish. The Complainant submitted a Complaint translated in Spanish on October 26, 2021. The Respondent did not reply to the Center’s communication.

The Center appointed Daniel Peña as the sole panelist in this matter on November 5, 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 was founded in 1972 and has become, in the last decades, one of the leading franchisors of optical products and services in Europe. The group is therefore very well established in its sector of activity in France, Spain and worldwide.

The Complainant is the owner of several intellectual property rights on the denomination AFFLELOU and notably the following:

- International trademark AFFLELOU No. 1305969, registered on April 26, 2016 in classes 03, 05, 09, 10, 35, 36, 37, 38 and 44;

- International trademark AFFLELOU No. 1221743 registered on August 22, 2014 in class 09;

- International trademark ALAIN AFFLELOU No. 1302914, registered on March 10, 2016 in classes 03, 05, 09, 10, 35, 36, 37, 38 and 44;

- International trademark ALAIN AFFLELOU No. 555412, registered on June 21, 1990 in classes 05, 09, 10, 14, 18, 20, 24, 25, 35 and 38;

The Complainant owns the following domain names:

<afflelou.com> registered on September 13, 1999;

<afflelou.net> registered on June 17, 1999;

<alainafflelou.com> registered on May 2, 1998.

By the date the Complaint was filed, the disputed domain name referred to an inactive website.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name <alainaflelou.com> is confusingly similar to its Complainant’s commercial name Alain Afflelou Franchiseur, as well as its domain names and trademarks ALAIN AFFLELOU, because one of the “f” is absent on said disputed domain name. The Complainant also states that this is characteristic of typosquatting, knowing that this misspelling is hardly noticeable and results in a very minor modification of its trademark.

The Complainant asserts that due to the misspelling of the Complainant’s company name, prior well known trademarks and domain names, Internet users will obviously think the disputed domain name <alainaflelou.com> belongs to the Complainant or have been registered in its name or for its account. A likelihood of confusion is thus inevitable and is reinforced by the high notoriety enjoyed by the Complainant in France and all over the world in relation to optical products and services.

According to the Complainant’s view, the Respondent has no legitimate interests in the disputed domain name <alainaflelou.com>, has no registered rights on this denomination, and the Complainant has never authorized registration of the latter disputed domain name.

On August 31, 2021, the Complainant sent a cease and desist letter to the Respondent. This letter was meant to inform the Respondent that the Complainant held several intellectual property titles revolving around the name AFFLELOU, requesting the transfer of the disputed domain name <alainaflelou.com> to the Complainant. The Respondent replied on September 3, 2021 through a communication whereby it admitted having made an error in registering the domain name. However, despite this response, the Respondent did not transfer the disputed domain name to the Complainant and by the date of this decision, still uses this domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the proceedings

Pursuant to paragraph 11 of the UDRP Rules, unless otherwise agreed by the parties, the default language of the proceeding is the language of the registration agreement, subject to the authority of the panel to determine otherwise. In this case, the Registrar confirmed that the language of the registration was Spanish and the Complainant submitted its first Complaint in English and the translated into Spanish.

Noting that the Respondent did not participate to the proceeding and did not request Spanish to be the language of the proceeding the Panel has decided to issue its decision in English.

6.2 On the substance

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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.

Considering these requirements, the Panel rules as follows:

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s AFFLELOU trademarks. The Respondent’s incorporation of the Complainant’s trademark almost in full in the disputed domain name is evidence that the disputed domain name is confusingly similar to the Complainant’s trademarks. The mere fact of deleting the letter “f” does not prevent a finding of confusing similarity with the Complainant’s trademarks. Furthermore, the addition of the generic Top-Level Domain “(gTLD”) “.com” is not sufficient to prevent the confusing similarity either.

The Panel is satisfied that the disputed domain name is identical or confusingly similar to the Complainant’s trademark and the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant bears the burden of proof in establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainant to establish a prima facie case which, if not rebutted by sufficient evidence from the Respondent, will lead to this ground being set forth.

Refraining from submitting any Response, the Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that the Respondent has rights or legitimate interests in the disputed domain name.

The Panel will now examine the Complainant’s arguments regarding the absence of rights or legitimate interests of the Respondent in connection with the disputed domain name.

The Complainant claims that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademarks in a domain name or in any other manner.

The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b). Rather, the Respondent admitted in response to the Complainant’s cease and desist letter that he had mistakenly registered the domain name. It evidences its recognition of the lack of legitimate interests regarding the registration of the disputed domain name.

The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location.

In the Panel’s view, a finding of bad faith may be made where the Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the disputed domain name. In this case, the Complainant submits that at the date of registration of the disputed domain name the Respondent would have had constructive, if not actual knowledge of the Complainant’s trademark ALAIN AFFLELOU.

The Panel takes into account the evidence of the use being made of the disputed domain name. It is apparent, as it is pointed out by the Complainant, that the Respondent registered the disputed domain name deleting a letter “f” in an attempt to cause a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites.

The Complainant also relies upon the fact that the Respondent response to a cease and desist letter sent by the Complainant’s lawyers, in which the Complainant requested the Respondent should stop using and transfer the disputed domain name. The Respondent admitted in response to the Complainant’s cease and desist letter that he had mistakenly registered the domain name. However, the Respondent did not take any action or activity to correct his error, much less to mitigate its harmful effects. The above confirms the bad faith of the Respondent.

The Panel notes that the disputed domain name does not resolve to an active website. Previous UDRP decisions have found that under specific circumstances passive holding does not prevent a finding of bad faith. See section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

In the absence of a rebuttal of these submissions in a full Response, the Panel finds that the disputed domain name was registered and is being used in bad faith.

Consequently, the Panel finds that the disputed domain name was registered and used by the Respondent in bad faith within 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 <alainaflelou.com> be transferred to the Complainant.

Daniel Peña
Sole Panelist
Date: November 19, 2021