Pegase v Client Care, Web Commerce Communications Limited

WIPO Case No. D2024-0010

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

PEGASE v. Client Care, Web Commerce Communications Limited

Case No. D2024-0010

1. The Parties

The Complainant is PEGASE, France, represented by MIIP MADE IN IP, France.

The Respondent is Client Care, Web Commerce Communications Limited, Malaysia.

2. The Domain Name and Registrar

The disputed domain name <lahallechaussures.com> is registered with Alibaba.com Singapore E-

Commerce Private Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 3, 2024.
On January 3, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On January 4, 2024, 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 (Not disclosed) and contact information in the Complaint. The
Center sent an email communication to the Complainant on January 4, 2024, 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 January 9, 2024.

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 January 16, 2024. In accordance with the Rules, paragraph
5, the due date for Response was February 5, 2024. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on February 8, 2024.

The Center appointed Iris Quadrio as the sole panelist in this matter on February 26, 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 is a French-based company operating in the fashion industry since 1981, owner of the female and children brand LA HALLE.

LA HALLE products are sold throughout France, and notably through its more than 800 boutiques, thanks to the support of its 6,400 employees The Complainant is also owner of other fashion brands sold in LA HALLE stores, such as, LH, LIBERTO, CREEKS, and MOSQUITOS.

The Complainant is the owner of the trademarks containing the term “La Halle” in many jurisdictions, international registration No. 486315, LA HALLE AUX VETEMENTS, registered on July 6, 1984, for class 25.
including France Reg. No. 3821646, LA HALLE AUX CHAUSSURES, registered on April 7, 2011, for classes
18 and 25; International registration No. 1254519, LA HALLE FASHION, SHOES & BAGS, registered on

March 19, 2015, for classes 18, 25, and 35; International registration No. 1213360, LA HALLE MODE,

Likewise, the Complainant asserts to have an online presence through, among others, its primary website
“ which receives 15.5 million visitors a year. In addition, the Complainant promotes its
goods through social media having 500,000 followers on Facebook and 106,000 followers on Instagram.

Lastly, the disputed domain name was registered in December 2023, and resolves to an active website that reproduces almost the same content as the Complainant’s official 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.

The Complainant states that the disputed domain name is confusingly similar to its trademark LA HALLE, and its associated domain names.

The Complainant contends that the Respondent has no rights or legitimate interest in respect of the disputed domain name, nor is he related in any way to the Complainant. Neither license nor authorization has been granted to the Respondent to make any use of the Complainant’s trademark LA HALLE or apply for registration of the disputed domain name.

More specifically, the Complainant alleged that the Respondent has not used and/or has no demonstrable intention to use the disputed domain name except to create a likelihood of confusion with the Complainant’s trademark. In fact, the Complainant claims that the Respondent has selected the disputed domain name only to intentionally lead internet users to believe they are accessing the Complainant´s website.

Finally, the Complainant has requested the Panel to issue a decision ordering the transfer of the disputed domain name to the Complainant.

B. Respondent

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

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6. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:

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

(ii)     the Respondent has no rights or legitimate interest in respect of the disputed domain name; and

(iii)    the disputed domain name was registered and is 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 Complainant’s mark LA HALLE AUX CHAUSSURES is reproduced within the disputed domain name except for the element “AUX”. The dominant part of the Complainant’s marks is clearly recognizable 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.

The Complainant has claimed not to have authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the trademarks containing the term “La Halle” nor is there any other evidence in the file suggesting that the Respondent has or could have rights or legitimate interests in the disputed domain name. Also, the Complainant has prior rights in the above-referenced trademarks which contain the term “La Halle” and clearly precede the Respondent’s registration of the disputed domain name.

Likewise, it does not seem that the Respondent made nor is making a legitimate noncommercial or fair use of the disputed domain name. In this regard, the Complainant has demonstrated that the content found in the disputed domain name is merely the same as the one in the Complainant’s official website. Specifically,

the disputed domain name reproduces the Complainant’s trademarks, pack shots and publicity photographs, as well as the entire “About us” section from the Complainant’s website. The impersonating website cannot confer upon the Respondent rights or legitimate interests pursuant to section 2.13 of the WIPO Overview 3.0.

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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 such connection, the Complainant has submitted evidence to support that its trademarks are widely known and registered and used many years before the Respondent registered the disputed domain name. Thus, when registering the disputed domain name, the Respondent most likely knew of and has targeted the Complainant’s trademarks to generate confusion among the Internet users. Indeed, the Complainant has demonstrated that when searching for “La Halle” on Google, all the results led to the Complainant or to content related to the Complainant.

Therefore, the Panel is satisfied that the Respondent must have been aware of the Complainant and the Complainant’s trademarks when it registered the disputed domain name. Consequently, and in accordance with section 3.1.4 of WIPO Overview 3.0, the Panel considers that the inclusion of the Complainant’s trademarks in the disputed domain name creates a presumption that the disputed domain name was registered in bad faith.

Likewise, the disputed domain name resolves to a commercial website that reproduces the same content of
the Complainant’s official website and markets the Complainant’s products. This is clearly intended to attract
and mislead internet users when searching for the Complainant’s website and to redirect them to a website
from which the Respondent most probably derives commercial revenue by creating a likelihood of confusion
with the Complainant’s trademark. Clearly, the Respondent knew the existence of the Complainant and
intended to target the Complainant and its trademarks when registering and using the disputed domain

name.

Even more, the Respondent has been involved in over 100 previous UDRP proceedings where the domain
names were transferred to the trademark owner. This confirms that the Respondent has already engaged in
similar illicit behavior in the past. See, for example, Hunza G Limited v. Client Care, Web Commerce
Communications Limited, WIPO Case No. D2024-0430, and Prada S.A. v. Client Care, Web Commerce

Communications Limited, WIPO Case No. D2023-4002.

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 <lahallechaussures.com> be transferred to the Complainant.

/Iris Quadrio/ Iris Quadrio Sole Panelist Date: March 11, 2024