Société Anonyme des Galeries Lafayette v Galeries Lafayette Galeries

WIPO Case No. D2025-1135

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Société Anonyme des Galeries Lafayette v. Galeries Lafayette Galeries
Lafayette

Case No. D2025-1135

1. The Parties

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

France.

The Respondent is Galeries Lafayette Galeries Lafayette, France.

2. The Domain Names and Registrar

The disputed domain names <galerieslafayetteecommerce.com>, <galerieslafayettemarketplace.com>,
<galerieslafayetteremote.com>, and <workatgalerieslafayette.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 March 19, 2025. connection with the disputed domain names. On March 20, 2025, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and its 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 March 27, 2025. In accordance with the Rules, paragraph
5, the due date for Response was April 16, 2025. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on April 17, 2025.

The Center appointed William Lobelson as the sole panelist in this matter on April 28, 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.

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4. Factual Background

The Complainant is Société Anonyme des Galeries Lafayette, a French based company that runs the department stores “Galeries Lafayette” on a worldwide scale.

It owns multiple trademark registrations for GALERIES LAFAYETTE:

International Trademark No. 1718969 dated Oct 13, 2022,

European Union Trademark No. 003798147 dated May 19, 2006.

It also owns and uses the domain name <galerieslafayette.com>, registered on August 1, 1997.

The disputed domain names are:

<galerieslafayetteecommerce.com>, <galerieslafayettemarketplace.com>, <galerieslafayetteremote.com>, and <workatgalerieslafayette.com>

all registered on March 10, 2025.

Before the present Complaint was filed, the domain names were resolving to identical websites presenting themselves as a retail platform operating under the Complainant’s mark GALERIES LAFAYETTE, displaying a copyright notice “© 2025 Galeries Lafayette …” and inviting Internet users to create an account to sign in, by entering their personal details.

The Complainant obtained the deactivation of the said web pages, and the disputed domain names now resolve to an error page. The Complainant has also shown that mail exchange (“MX”) servers had been set up in relation with the disputed domain names.

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 earlier trademark, that the Respondent has no rights or legitimate interests in the disputed domain names, and that the disputed domain names have been registered and used in bad faith.

The Complainant puts the emphasis on the fact that the disputed domain names were used in relation to an impersonating web page, for phishing purposes.

B. Respondent

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

6. Discussion and Findings

Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the conditions set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:

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(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the

Complainant has rights (paragraph 4(a)(i));

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names (paragraph

4(a)(ii)); and

(iii) the disputed domain names have been registered and are being used in bad faith (paragraph 4(a)(iii)).

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.

Based on the available record, the Panel finds 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.

Although the addition of other terms (here “commerce”, “marketplace, “remote”, and “work at”) may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain names and the mark for the purposes of the

Policy. WIPO Overview 3.0, section 1.8.

Based on the available record, 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 names particularly by asserting that the Respondent is not affiliated with it in any way and that it never authorized the Respondent to use its trademark as part of the disputed domain names. The Complainant contends that the Respondent does not make any bona fide or legitimate noncommercial or fair use of the disputed domain names.

In addition, the disputed domain names were used in connection with a website that presented itself as a retail platform operated by the Complainant.

Panels have held that the use of a domain name for illegitimate activity, here impersonation/passing off,
likely for phishing purposes, can never confer rights or legitimate interests on a respondent.
WIPO Overview 3.0, section 2.13.1.

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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.

Based on the available record, 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.

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 held that the use of a domain name for illegitimate activity, here claimed impersonation/passing off, constitutes bad faith. WIPO Overview 3.0, section 3.4.

Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain names constitutes bad faith under the Policy.

In the present case, the Panel notes that the Complainant claims that the Respondent has registered the disputed domain names and uses the same in bad faith, even though the said domain names do not presently resolve to any active webpage.

It is a consensus view among UDRP panels that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (which constitutes passive holding), does not as such prevent a finding of bad faith. The Panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith.

Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the respondent’s concealment of its identity. UDRP panels may draw inferences about whether a domain name was used in bad faith given the circumstances surrounding the registration.

The Complainant has substantiated the fact that its trademark, which has been registered and used for years, now benefits from a high level of public awareness.

Earlier UDRP decisions have acknowledged the Complainant’s trademark notoriousness.

It is also established that that the Respondent falsely identifies itself in the WhoIs records as “Galeries Lafayette”. Rather, it appears most likely that such details were specifically chosen to falsely suggest an affiliation with the Complainant, possibly in connection to a planned fraudulent use of the disputed domain names.

Lafayette”, thus providing inaccurate details at the time of registration, as there is no evidence before the

In light of the above, this Panel finds hard to believe that the Respondent did not have the Complainant’s trademark in mind when it registered the disputed domain names.

Taking into account the confusing similarity of the disputed domain names with the Complainant’s trademark and their prior use, it is highly unlikely that the disputed domain names could have been registered in good faith.

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The disputed domain names are currently not directed to any active web page. However, the Complainant has shown that the Respondent had been previously using the disputed domain names to impersonate the Complainant, which is a clear indication that the Respondent knew about the Complainant and had its

trademark in mind when it registered the disputed domain names.

The Panel also notes that the Respondent did not reply to the Complaint. The Panel infers from the above that the Respondent acted in bad faith when it registered the disputed domain names, and still acts in bad faith.

The fact that the disputed domain names were used to impersonate the Complainant, most likely for phishing purposes, as they resolved to websites that presented themselves as a retail platform operated by the Complainant and provided opportunities for unsuspecting Internet users to contact the Respondent by entering their email addresses, demonstrates a use in bad faith of the disputed domain names.

The disputed domain names currently resolve to inactive pages, which does not alter the finding that the disputed domain names were registered and used in bad faith. 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.

Further, the Complainant has filed evidence showing that the Respondent had set up MX servers in relation with the disputed domain names, thus revealing a possible intention to use the same as email addresses.

Although no evidence of such fraudulent acts has been brought in the present proceedings, the Panel is not
unaware of the common practice whereby hackers register domain names consisting of well-known
brand names or company names, in order to use email addresses imitating the same, with the aim of

engaging in acts of deception and extortion of Internet users.

The creation of an email address - based on the disputed domain name – used for sending emails that could
lead the recipient of a message sent from this address to believe that it is from the Complainant would
constitute bad faith use of the disputed domain name (See Credit Industriel et Commercial S.A. v. Zabor

Mok, WIPO Case No. D2015-1432).

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 <galerieslafayetteecommerce.com>, <galerieslafayettemarketplace.com>, <galerieslafayetteremote.com>, and <workatgalerieslafayette.com> be transferred to the Complainant.

/William Lobelson/
William Lobelson
Sole Panelist
Date: May 2, 2025