Société Anonyme des Galeries Lafayette v Alex Poluh

WIPO Case No. D2024-5081

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Société Anonyme des Galeries Lafayette v. Alex Poluh

Case No. D2024-5081

1. The Parties

The Complainant is Société Anonyme des Galeries Lafayette, France, represented by Dreyfus & associés,

France.

The Respondent is Alex Poluh, China.

2. The Domain Name and Registrar

The disputed domain name <galerieslafayette.best> is registered with Sav.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2024. On December 11, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 11, 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 (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 13, 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 December 16, 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 December 19, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 8, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 16, 2025.

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The Center appointed Gill Mansfield as the sole panelist in this matter on January 20, 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 retailer and well-known department store specialising in fashion retailing. It is receives more than 60 million visitors everyday via its 290 stores and online via its eCommerce websites.
one of France’s leading private employers with nearly 14,000 employees. It has a flagship store in Paris,
France which has been in operation for over 100 years, and it operates from a number of other cities in
France and internationally, with a presence in Berlin, Beijing, Jakarta, Dubai, Istanbul, Doha, Shanghai, and

The Complainant has numerous registrations for the GALERIES LAFAYETTE trademark, including (inter alia) the following:

• European Union trademark registration number 003798147 for GALERIES LAFAYETTE (word mark)

registered on May 19, 2006 in classes 3, 4, 5, 7, 8, 9, 11, 14, 15, 16, 18, 20, 21, 22, 23, 25, 26, 27, 28, 29,
30, 32, 33, 35, 36, 37, 38, 39, 41, 42, 43, 44, and 45;

• United States of America trademark registration number 4086463 for GALERIES LAFAYETTE (word mark) registered on January 17, 2012 in class 35;

• Hong Kong, China trademark registration number 300777583 for GALERIES LAFAYETTE (figurative mark) registered on December 11, 2006 in classes 3, 18, 25, and 35,

The Complainant’s domain name <galerieslafayette.com> was registered on August 1, 1997, and its

<galerieslafayettes.com> domain name was registered on September 13, 2002.

The disputed domain name was registered on October 15, 2024 and resolves to an inactive page.

The record shows that the Complainant made some efforts to resolve this matter by writing to the

Respondent but received no response from the Respondent.

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 is virtually identical to the Complainant’s GALERIES LAFAYETTE trademark and that it reproduces the Complainant’s trademark and corporate name in its entirety. The Complainant states that Internet users may be led into believing that the disputed domain name is used or endorsed by the Complainant, or is an official website of the Complainant. The Complainant submits that the addition of the Top-Level Domain (TLD) “.best” is a standard registration requirement and

not to be taken into account when examining the similarity between the Complainant’s mark and the disputed
domain name. It argues that the structure of the disputed domain name enhances the impression that the
disputed domain name is somehow related to the Complainant and may be perceived as an official domain
name of the Complainant.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant in any way, has not been authorised by

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the Complainant to use or to register its trademark, or to seek registration of any domain name incorporating
its trademark. The Complainant also submits that the Respondent cannot claim prior rights or legitimate
interests in the disputed domain name as the GALERIES LAFAYETTE trademarks precede the registration
of the disputed domain name. Further, the Respondent is not commonly known by the disputed domain
name or the name GALERIES LAFAYETTE. The Complainant states that the Respondent cannot assert
that it was using, or had made demonstrable preparations to use, the disputed domain name in connection
with a bona fide offering of goods or services. It notes that the disputed domain name resolves to an inactive
web page.

Finally, the Complainant contends that the disputed domain name was registered and used in bad faith. It submits that the Complainant and the GALERIES LAFAYETTE trademark enjoy a worldwide reputation and that it is implausible that the Respondent was unaware of the Complainant. It also submits that the composition of the disputed domain name, reproducing the Complainant’s trademark entirely, confirms that the Respondent was aware of the Complainant, its trademark and domain names. The Complainant also points to the fact that its trademark registrations significantly predate the registration date of the disputed domain name. In relation to use of the disputed domain name in bad faith, the Complainant refers to the fact that the disputed domain name is currently inactive and contends that passive holding does not preclude a finding of bad faith. The Complainant also points out that an email server has been configured in respect of the disputed domain name and that there may be a risk that the Respondent is engaged in a phishing scheme.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy the Complainant carries the burden of proving:

1. that the disputed domain name is identical or confusingly similar to a trademark or service mark in

which the Complainant has rights, and

1. that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and

2. that the disputed domain name has been 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 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.

The Panel notes that the disputed domain name comprises the entire GALERIES LAFAYETTE trademark
with the addition of the TLD “.best”. The TLD in a domain name 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.

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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 Respondent is not affiliated with the Complainant in any way, has not been authorised by the Complainant to use or to register its trademark, or to seek registration of any domain name incorporating its trademark. There is no evidence that the Respondent is commonly known by the disputed domain name. There is also no evidence of use, or demonstrable preparations to use, the disputed domain name for a bona fide offering of goods or services, or of any legitimate noncommercial or fair use of the disputed domain name.

The Panel notes that the disputed domain name consists of the Complainant’s GALERIES LAFAYETTE trademark in its entirety with only the addition of the TLD “.best”. This creates the impression that the disputed domain name is a domain name of the Complainant, or somehow endorsed by, linked to, or affiliated with the Complainant and its GALERIES LAFAYETTE trademark. This impression is added to by the fact that the disputed domain name closely matches the Complainant’s own domain name (with only the TLD differing).

As such the Panel finds that that the composition of the disputed domain name is such as to carry a high risk of implied affiliation which cannot constitute fair use, as it effectively impersonates the Complainant, or suggests affiliation with, or sponsorship or endorsement by, the Complainant (WIPO Overview 3.0, section 2.5.1)

Further, according to paragraph 14(b) of the Rules, the Panel may draw from the lack of response of the Respondent such inference as it considers appropriate. The Panel is of the view that the lack of response from the Respondent corroborates the absence of any rights or legitimate interests of the Respondent in the disputed domain name.

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.

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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.

In the present case, the Panel notes that the Complainant has a long trading history dating back over 100 years and a significant international presence both online and via its physical stores. Having reviewed the available record, the Panel finds that the Complainant’s mark is widely known and has achieved significant worldwide recognition and reputation. The Panel also notes that the Respondent registered the disputed

domain name over 20 years after the registration of the Complainant’s widely-known GALERIES
LAFAYETTE trademark.

Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4.

The Panel notes the composition of the disputed domain name, which consists of the Complainant’s trademark in full with only the addition of the “.best” TLD. The disputed domain name is therefore identical to the Complainant’s registered trademark and directly corresponds to the Complainant’s own domain name.

In view of the significant worldwide reputation in the Complainant’s trademark and the composition of the
disputed domain name, the Panel finds that it is highly implausible that the Respondent was unaware of the
Complainant and the Complainant’s trademark when the disputed domain name was registered, and that it
registered the disputed domain name with the Complainant’s GALERIES LAFAYETTE trademark in mind.
The Panel notes that although the disputed domain name resolves to an inactive webpage an email server
has been configured in respect of the disputed domain name which would allow emails to be sent using the
GALERIES LAFAYETTE name.

As noted above, the record shows that the disputed domain name resolves to an inactive web page. 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 name, 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 <galerieslafayette.best> be transferred to the Complainant.

/Gill Mansfield/
Gill Mansfield
Sole Panelist
Date: February 3, 2025