GERFLOR v Yurii Shykoriak

WIPO Case No. D2025-1999

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

GERFLOR v. Yurii Shykoriak

Case No. D2025-1999

1. The Parties

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

The Respondent is Yurii Shykoriak, United States of America.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2025. On May 20, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on May 21, 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 amended Complaint on May 22, 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 Respondent of the Complaint, and the proceedings commenced on May 23, 2025. In accordance with the Rules, paragraph 5, the due date for Response was June 12, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 13, 2025.

The Center appointed Nayiri Boghossian as the sole panelist in this matter on June 18, 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

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4. Factual Background

The Complainant is a French company that offers flooring solutions and owns many trademark registrations for the trademark GERFLOR such as:

- International Registration No. 448867, registered on November 8, 1979;

- United Kingdom Trademark Registration No. 1125826, registered on December 18, 1979; and

- French Trademark Registration No. 1713234, registered on December 16, 1991.

The Complainant’s domain name is <gerflorgroup.com>.

The disputed domain name was registered on March 11, 2011 and resolved to a website which purports to offer business consulting services. Previously, the disputed domain name redirected to a website that was explicitly associated with GERFLOR.

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 name is confusingly similar to a trademark in which the Complainant has rights. The disputed domain name incorporates the Complainant’s trademark in its entirety together with a generic term, which does not prevent a finding of confusing similarity. GERFLOR is a fancy name that is inherently distinctive and well-known. The disputed domain name is almost identical to the Complainant’s domain name <gerflorgroup.com>.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. There is no affiliation between the Respondent and the Complainant, and the latter did not license the Respondent to use its trademark. The Complainant has prior rights in the trademark.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. The selection of the disputed domain name, incorporating the Complainant’s trademark and mimicking the Complainant’s domain name <gerflorgroup.com> demonstrate an intention to attract Internet users by

misleading them. The Respondent was under the duty to verity that the registration of the disputed domain name does not infringe the rights of a third party. The Respondent was aware or should have been aware of the Complainant’s trademark. A simple online search would reveal the Complainant’s trademark.

Previously, the disputed domain name redirected to a website associated with GERFLOR. This is a case of expired domain auction. Following the acquisition of the disputed domain name, steps have been taken to set an active website as indicated by the installation of an SSL certificate and the addition of TXT and MX records. The website to which the disputed domain name currently resolves offers the option of subscribing to a newsletter by entering an email address. This would allow unlawfully collection personal data.

B. Respondent

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

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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.
WIPO Overview 3.0, section 1.2.1.

The entirety of the GERFLOR 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.

Although the addition of other terms here, “groupe” 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.

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.

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 must have been aware of the Complainant’s trademark as the websites to which the disputed domain name previously resolved purported to offer flooring solutions, which is the Complainant’s line of business and displayed the Complainant’s trademark. Also, the registration of the Complainant’s trademark predates the creation of the disputed domain name by 32 years.

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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.

The Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes 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 <gerflorgroupe.com> be transferred to the Complainant.

/Nayiri Boghossian/
Nayiri Boghossian
Sole Panelist
Date: June 26, 2025