Fidal Et Associes v Jaouad Laloum

WIPO Case No. D2025-1015

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

FIDAL ET ASSOCIES v. Jaouad Laloum

Case No. D2025-1015

1. The Parties

The Complainant is FIDAL ET ASSOCIES, France, internally represented.

The Respondent is Jaouad Laloum, France.

2. The Domain Name and Registrar

The disputed domain name <fidalavocats.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2025.
On March 13, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On March 13, 2025, 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 (“Domain Administrator / PrivacyGuardian.org LLC”) and contact
information in the Complaint. The Center sent an email communication to the Complainant on March 14,
2025, 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 on March 18, 2025.

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 March 26, 2025. In accordance with the Rules,
paragraph 5, the due date for Response was April 15, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on April 16, 2025.

The Center appointed Fabrice Bircker as the sole panelist in this matter on April 25, 2025. 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.

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4. Factual Background

The Complainant, Fidal et Associés, is a French Law firm with more than 1350 lawyers, and a turnover of

EUR 320 million in 2019.

The Complainant operates under the FIDAL brand and its business dates to 1922.

The Complainant’s activities are protected through trademarks registrations that it owns, such as the following ones:

FIDAL, French trademark registration No. 1434480 filed on November 9, 1987 as a renewal of the trademark registration No. 1035225 of December 7, 1977, regularly renewed since then, and designating services of classes 35, and 36;

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- the Complainant has never given any authorization or permission to the Respondent or any third-party whatsoever to register or to use the disputed domain name, or any domain name comprising the term “FIDAL”;

- as the disputed domain name directs to an inactive website, the Respondent is not using it in
connection with a bona fide offering of goods or services and is not making a legitimate
noncommercial or fair use of said disputed domain name.

Finally, the Complainant contends that the disputed domain name has been registered and is being used in bad faith, notably because:

- the Complainant’s trademarks were registered before the disputed domain name;

- a Google search for “fidal” shows results for the Complainant;

- the presence of the “avocats” element within the disputed domain name refers to the Complainant’s
activity and evidences that the Respondent was aware of the Complainant’s trademarks when he
registered said disputed domain name;

- the Complainant has a reputation in the field of legal services in France, in the European Union and in
several countries worldwide notably in the United States of America;

- the sign “fidal” has no meaning and is highly distinctive for designating legal services rendered by the
Complainant;

- the fact that the disputed domain name directs to an inactive page does not prevent a finding of bad
faith use under the ground of the passive holding doctrine;

- the Complainant is facing fraudulent activities through emails sent from domain names that are almost
identical to the disputed domain name.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing
(or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison
between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel

Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy
(in particular the FIDAL AVOCATS trademark registrations detailed in section 4 supra). WIPO Overview 3.0,
section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Indeed, it is well established that generic Top-Level Domain (“gTLD”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11.1

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

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Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized
that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task
of “proving a negative”, requiring information that is often primarily within the knowledge or control of the
respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or
legitimate interests, the burden of production on this element shifts to the respondent to come forward with
relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of
proof always remains on the complainant). If the respondent fails to come forward with such relevant
evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0,
section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

Indeed, based on the available record, the Complainant contends that it has not given its consent to the
Respondent to use its trademarks in a domain name registration or in any other manner.

Besides, there is nothing in the record of the case likely to indicate that the Respondent may be commonly known by the disputed domain name.

Furthermore, it seems that the disputed domain name is not used (it does not resolve to an active website) and nothing in the available record suggests that it may have been used or that the Respondent has made preparations to use it for legitimate purposes.

In addition, the Panel finds that the nature of the disputed domain name, in as far as it consists of the reproduction of one of the Complainant’s trademarks, constitutes further indication of the Respondent’s lack of rights and legitimate interests. Indeed, such a disputed domain name carries a high risk of implied affiliation with the Complainant and tends to suggest sponsorship or endorsement by the latter. WIPO Overview 3.0, section 2.5.1.

At last, the Respondent has not replied to the Complainant’s contentions.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

As far as bad faith registration is concerned, the Panel finds that:

- the disputed domain name identically reproduces the Complainant’s trademarks which predate the
registration of said disputed domain name, by more than 40 years for the oldest trademark;

- “fidal” is a coined term and therefore the corresponding trademark is intrinsically distinctive;

- it results from supporting evidence communicated by the Complainant that its trademarks designate a
well-known French law firm;

- the French word “avocats” within the disputed domain name means “lawyers / barristers” and
therefore, can be considered as referring to the Complainant’s field of activities;

- the Complainant has demonstrated that a mere Google search on “fidal” evidently reveals its rights;

- the Respondent is located in France, where the Complainant originates and is particularly active;

- the Respondent, while invited to defend its case, has been remaining silent in this procedure.

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In these circumstances, the Panel finds that the Respondent was more likely than not well aware of the
Complainant’s rights when he registered the disputed domain name.

Besides, Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3.

Having reviewed the available record, the Panel notes:

- the distinctiveness and the reputation of the Complainant’s trademarks, especially in France, where
the Respondent is located;

- the Respondent’s concealment of its identity,

- the failure of the Respondent to submit a response or to provide any evidence of actual or
contemplated good-faith use,

- the implausibility of any good faith use to which the disputed domain name may be put: not only the
disputed domain name merely consists in the reproduction of one of the Complainant’s trademarks
and therefore carries a high risk of implied affiliation with the Complainant, but one Mail Exchange
(“MX”) server is set up with the disputed domain name.[1] As a consequence, the disputed domain
name represents an unbearable threat hanging over the head of the Complainant.

[1] The Complainant has credibly put forward that several domain names very close to the disputed domain name have been used to

Therefore, the Panel finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

The Panel finds that the Complainant has established the third element 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 <fidalavocats.com> be transferred to the Complainant.

/Fabrice Bircker/
Fabrice Bircker
Sole Panelist
Date: May 6, 2025

, French trademark registration No. 4983372, filed on August 8, 2023, registered on

December 15, 2023, and protecting products and services of classes 9, 16, 35, 36, 38, 41, 42, and 45;

, International trademark registration No. 1786497 registered on January 12, 2024, filed

under priority of the above-mentioned French trademark, and designating notably the European Union,

United Kingdom, Morrocco and Tunisia, and protecting products and services of classes 9, 16, 35, 36, 38,
41, 42 and 45.

The Complainant has also an online presence, notably through the <fidal.com> domain name, which directs to its official website, and which is also used for its email addresses.

The disputed domain name, <fidalavocats.com>, was registered on January 7, 2025.

It does not resolve to an active website.

Very little is known about the Respondent, except that, based on the information disclosed by the Registrar, he is apparently located in France.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the disputed domain name reproduces identically its registered trademarks which therefore are recognizable within it.

Besides, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in substance because:

- the Respondent is not known under the name “fidal” or “fidal avocats”;

- the Respondent is not one of the Complainant’s distributors or business partners and does not carry
out any activity for or has any business with it;

fraudulently impersonate it. As a consequence, the Panel used its general powers as articulated inter alia in paragraphs 10 and 12 of the Rules, to undertake limited factual research into matters of public record, in this case to examine the technical configuration of the disputed domain name to determine whether it may be used to send emails (see WIPO Overview 3.0, section 4.8).