Gerflor v mee tessy

WIPO Case No. D2024-4012

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

GERFLOR v. mee tessy

Case No. D2024-4012

1. The Parties

The Complainant is GERFLOR, France, represented by Cabinet Germain & Maureau, France.

The Respondent is mee tessy, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <gerflorr.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2024. On September 30, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 1, 2024, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 9, 2024. In accordance with the Rules, paragraph
5, the due date for Response was October 29, 2024. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on November 1, 2024.

The Center appointed Clive Duncan Thorne as the sole panelist in this matter on November 11, 2024. 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 which is a French simplified joint-stock company trades as part of a group of companies formed over 70 years ago specializing in flooring design and manufacture. Originally based in the Rhone- Alpes region of France it is now established in over 100 countries worldwide.

The name Gerflor not only represents the name of the Gerflor group of companies but is also the brand name for a variety of innovative and quality flooring products. This is evidenced by its 2022-2023 product brochure; “Solutions pour professionels” which is exhibited to the Complaint and which bears prominently the trade mark GERFLOR.

In 2023 the Complainant achieved a turnover of EUR 1.5 billion, with more than 70 percent of its sales in international markets, supported by a workforce of 5,000 employees, 24 manufacturing plants, 5 research and development centers, and 30 subsidiaries. This global presence enables the Complainant to provide design-driven, innovative, and environmentally-friendly solutions in over 120 countries.

The Complainant owns trade marks for GERFLOR in several countries world wide. It relies upon marks registered in France, United Kingdom, Canada, United States, European Union, and International registrations set out in the Complaint. Copies of the registration certificates are exhibited to the Complaint and include the following registrations:

GERFLOR	France No. 1713234	Registered June 25,1973	Classes 17, 27
GERFLOR	International No. 448867	Registered November 8,1979	Class 27
GERFLOR	United Kingdom No.1125826	Registered December 18,1979	Class 27

All of the trade mark registrations relied upon predate the date of registration of the disputed domain name on May 27, 2024.

The Complainant also lists a large number of domain names which it owns and operates incorporating the GERFLOR trade mark and GERFLOR together with a geographic term. Examples include: <gerflor.com>, <gerflorusa.com>, <gerflor.fr> and <gerfloramericalatina.com>. WhoIs extracts in relation to these domain names are exhibited to the Complaint.

In the absence of a Response nothing is known about the Respondent save for details of the registration and use of the disputed domain name and other domain name registrations. The Complainant relies upon the result of investigations that it has made of domain names previously or currently registered with the same registrant email address as the Respondent. 45 of these are listed in a table within the Complaint and annexed to the Complaint including, domain names purportedly incorporating typo variations of well-known third party trademarks.

The disputed domain name resolves to an inactive webpage.

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:

i. the disputed domain name is confusingly similar to the Complainant’s trade mark GERFLOR in which it has
prior rights, as well as its main domain name <gerflor.com>;

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ii. the Respondent has no rights or legitimate interests in respect of the disputed domain name, in particular there is no business affiliation between the parties and no licence to utilize its trade marks has been given by the Complainant;

iii. the selection of the disputed domain name, its lack of use by the Respondent, and the fact that it has
been registered as a “pattern of concerning registrations” by the Respondent, establishes registration and

use in bad faith.

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 trade mark 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 trade mark or service mark for the purposes of the Policy.
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 confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

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.

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.

In particular the Panel takes into account that there is no evidence that the Respondent is trading so that there is no business affiliation between the Parties and there is no evidence of any consent or licence given to the Respondent by the Complainant to use its trade marks GERFLOR in any manner.

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

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel finds from the evidence produced by the Complainant that the Respondent has engaged in a pattern of registering a large number of domain names which the Complainant describes as contentious and which show a consistency in the choice of registrar and an identical email set-up. All were registered, as in the case of the disputed domain name, using the same email address. Examples include domain names which the Panel notes are similar to the trading names of the well-known third party companies. The same applies to the registration of the disputed domain name which incorporates the Complainant’s trade mark GERFLOR.

The Complainant submits that this is evidence of the Respondent’s bad faith and of potential phishing activity, and that the Respondent has engaged in a consistent pattern of targeting well-known companies. The Respondent has systematically registered domain names that closely resemble the official websites of large corporations, utilizing slight typographical alterations. The Panel finds in these circumstances that there is a significant risk that the disputed domain name may be used for illegitimate activity, such as phishing.

In any event, Panels have found that the non-use of a domain name (including a blank 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 reputation and distinctiveness of the Complainant’s trade mark, the composition of the disputed domain name which is almost identical to the Complainant’s trade mark, and the Respondent’s pattern of targeting well-known third party companies, and 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 <gerflorr.com> be transferred to the Complainant.

/Clive Duncan Thorne/
Clive Duncan Thorne
Sole Panelist
Date: November 25, 2024