GERFLOR v Tain Chein, PWC and sav don

WIPO Case No. D2025-3248

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

GERFLOR v. Tain Chein, PWC and sav don

Case No. D2025-3248

1. The Parties

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

The Respondents are Tain Chein, PWC, Canada, and sav don, Antarctica.

2. The Domain Names and Registrar

The disputed domain names <gerfllor.com> and <gerflorus.com> are registered with NameCheap, Inc. (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2025. On August 14, 2025, the Center transmitted by email to the Registrar requests for registrar verification in connection with the disputed domain names. On August 14, 2025, the Registrar transmitted by email to the Center its verification responses, disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Unknown / Redacted for Privacy, Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 18, 2025 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrar, requesting the Complainant to either file a separate complaint for the disputed domain name associated with a different underlying registrant or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. The Complainant filed an amended Complaint on August 18, 2025.

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 Respondents of the
Complaint, and the proceedings commenced on August 22, 2025. In accordance with the Rules, paragraph
5, the due date for Response was September 11, 2025. The Respondents did not submit any response.
Accordingly, the Center notified the Respondents’ default on September 17, 2025.

page 2

The Center appointed Olga Zalomiy as the sole panelist in this matter on September 22, 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.

4. Factual Background

The Complainant is a French group of companies that designs, manufactures and markets products for floors and peripheries. The Complainant owns a number of trademark registrations for the GERFLOR trademark, such as:

- United Kingdom trademark No. UK00001125826 for the GERFLOR mark, registered on
December 18, 1979;

- International Trademark No. 448867 for the GERFLOR mark, registered on November 8, 1979; and

- United States of America trademark No. 3862516 for the GERFLOR mark, registered on
October 19, 2010.

The Complainant also owns multiple domain names incorporating its trademark, such as ˂gerflor.com˃ and

˂gerflorusa.com˃.

The Respondents registered the disputed domain name ˂gerflorus.com˃ on July 23, 2025, and the disputed domain name <gerfllor.com> on August 11, 2025. Both disputed domain names have active Mail Exchange (“MX”) records. Each disputed domain name contains a Google Site Verification TXT record. When the

Complainant filed the Complaint, the disputed domain name ˂gerflorus.com˃ resolved to a website containing pay-per-click (“PPC”) links to third-party websites offering competing products. At present, however, both disputed domain names resolve to “page not found” error pages.

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 names.

Notably, the Complainant contends that the disputed domain names are confusingly similar to its well-known trademark GERFLOR because they wholly incorporate the Complainant’s trademark, combined with either a geographic term “us” or a minor typographical variation, such as addition of the second “l”. According to the Complainant, such additions or alterations are insufficient to prevent a finding of confusing similarity between the disputed domain names and the Complainant’s trademark. The Complainant alleges that the disputed

domain name ˂gerflorusa.com˃ also imitates its primary domain name, which is operated in the United
States of America.

The Complainant contends that the Respondents have no rights or legitimate interest in respect of the disputed domain names because it is not affiliated with the Complainant and has not been given any license to use the Complainant’s trademark in any manner. In the Complainant's view, because its trademark and domain name registrations predate the Respondents’ registration of the disputed domain names, it may lead to the likelihood of consumer confusion as to the relationship between the disputed domain names and the Complainant. The Complainant alleges that there is no known homonymy involving the Complainant’s trademark, and any domain name that is identical or similar to it and registered by an unauthorized third party should be regarded as illegitimate.

page 3

The Complainant argues that given its trademark’s well-known status and the composition of the disputed domain names, it is implausible that the Respondents registered the disputed domain names without knowing about the Complainant’s rights in the GERFLOR mark. The Complainant contends that the Respondents’ use of the disputed domain name ˂gerflorus.com˃ to redirect users to a webpage containing pay-per-click advertising links related to the Complainant’s industry further supports the conclusion that the disputed domain name was registered to take advantage of its association with the Complainant’s brand. In the Complainant's view, such use shows that the Respondents registered and use the disputed domain name in bad faith.

The Complainant alleges that the Respondents’ activation of MX records for the disputed domain names – thereby enabling them to send and receive emails – along with the Respondents’ verification of Site TXT records, indicates an intent to use the disputed domain names for fraudulent, email-based activities. The Complainant contends that the Respondents’ provision of false registrant details at the time of the disputed domain names registration is another indication of the bad faith registration of the disputed domain names.

B. Respondents

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

6. Discussion and Findings

6.1. Consolidation: Multiple Respondents

The amended Complaint was filed in relation to nominally different domain name registrants. The Complainant alleges that the domain name registrants are the same entity or mere alter egos of each other, or under common control. The Complainant requests the consolidation of the disputes against the multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules.

The disputed domain name registrants did not comment on the Complainant’s request.

Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.

In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or
corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable
to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”), section 4.11.2.

As regards common control, the Panel notes that the disputed domain names were registered with the same information which prevented the Center from dispatching its written communication and further concealed their identities through privacy protection services. Each disputed domain name incorporates the Complainant’s trademark — or a misspelling thereof — and shares the same generic Top-Level Domain “.com”. Both disputed domain names also have MX record configurations and the same name servers. Moreover, each contains a Google Site Verification TXT record, indicating that they have been actively verified within the same Google Search Console environment. Finally, the Respondents did not dispute the Complainant’s assertion that the disputed domain names are under common control. Based on the totality of the circumstances, the Panel finds that the Complainant has established, on balance, that the disputed domain names are subject to common control.

As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party.

page 4

Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding.

6.2. Substantive Issues

Pursuant to paragraph 4(a) of the Policy, to succeed in these proceedings, the Complainant must prove each of the following elements with respect to each of the disputed domain names:

(i)        the disputed domain names are 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 names; and

(iii)      the disputed domain names have been registered and are being used in bad faith.

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.
WIPO Overview 3.0, section 1.2.1.

The Panel finds the mark is recognizable within the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. It is well-established that “a domain name which consists of a common, obvious, or intentional

misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for

purposes of the first element”. WIPO Overview 3.0, section 1.9.

Here, the disputed domain name ˂gerfllor.com˃ includes the Complainant’s GERFLOR trademark with the
second letter “l” letter placed after the first “l”. The inclusion of the gTLD “.com” is typically disregarded in the
context of the confusing similarity assessment, being a technical requirement of registration. WIPO
Overview 3.0., section 1.11.1.

Although the addition of other terms here, the term “us” in the ˂gerflorus.com˃ disputed domain name, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

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.

page 5

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 names. 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 names such as those enumerated in the Policy or otherwise.

The evidence on record shows that the Respondent is not commonly known by the disputed domain names, nor has it been authorized by the Complainant to use the Complainant’s trademark in a domain name. the Panel finds that the composition of the disputed domain names, in one case consisting of a misspelling of the Complainant’s trademark, and, in the second case, incorporating the Complainant’s trademark together with the term “us” which refers to the country in which the Complainant operates, signals an intention on the part of the Respondent to confuse users seeking or expecting the Complainant, which negates finding of fair use of the disputed domain names.

The Respondent is making neither legitimate noncommercial use of the disputed domain names, nor is the

Respondent using them for a bona fide offering of goods or services. In the past, the disputed domain name

˂gerflorus.com˃, which incorporates the Complainant’s GERFLOR trademark, resolved to a parking page

comprising PPC links to third-party websites offering competing products. Prior UDRP panels have found
that the use of a domain name for a webpage comprising PPC links does not represent bona fide offering of
goods and services where such links compete with the reputation and goodwill of the complainant's mark.

WIPO Overview 3.0, section 2.9.

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 notes that the Respondent registered the disputed domain names incorporating the Complainant’s GERFLOR trademark many years after the Complainant’s first trademark registration. In addition, the disputed domain names are nearly identical to the Complainant’s domain names <gerflor.com> and <gerflorusa.com> respectively. Considering the Respondent’s lack of rights or legitimate interests in the disputed domain names and the absence of a credible explanation for choosing the disputed domain names, the Panel finds that the disputed domain names were registered 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.

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 or reputation of the Complainant’s trademark, and the composition of the disputed domain names, and finds that in the circumstances of this case the passive holding of the disputed domain names does not prevent a finding of bad faith under the Policy. As regards the domain name <gerflorus.com>, the Panel finds that the change in use (from prior commercialization to current passive holding) rather reinforces the finding that there was no good faith intention behind the registration and prior use of the disputed domain name.

The Panel also finds that the presence of MX records indicates that mail servers have been configured, which may suggest that the Respondent intends to, or has already, engaged in phishing or other fraudulent activities. The fact that the Respondent failed to respond to the Complainant’s contentions and has provided no evidence of his actual or contemplated good faith use of the disputed domain names supports such finding.

page 6

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 names <gerfllor.com> and <gerflorus.com> be transferred to the
Complainant.

/Olga Zalomiy/ Olga Zalomiy Sole Panelist Date: October 3, 2025