Société Anonyme des Galeries Lafayette v liu niu, ABSOLUTE

WIPO Case No. D2024-3866

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Société Anonyme des Galeries Lafayette v. liu niu, ABSOLUTE
SCREENPRINT, INC., Ondo I Chi, Lechmere000, lixiang lixiang

Case No. D2024-3866

1. The Parties

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

France.

The Respondents are liu niu, ABSOLUTE SCREENPRINT, INC., United States of America (“United States”),

Ondo I Chi, Lechmere000, United States, and lixiang lixiang, United States.

2. The Domain Names and Registrars

The disputed domain names <galeries-lafayetteivip.com>, <galeries-lafayettekvip.com>,
<galeries-lafayettenvip.com>, and <galeries-lafayettepvip.com> are registered with Alibaba.com Singapore
E-Commerce Private Limited; and the disputed domain names <galeries-lafayetteovip.com>,
<galerieslafayetteovip.com>, <galerieslafayettesvip.com>, <galeries-lafayettevip.com>,
<galerieslafayette-vip.com>, and <galerieslafayettevip.com> are registered with Gname.com Pte. Ltd.

(collectively the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2024 as regards the disputed domain names <galerieslafayettevip.com>, <galerieslafayette-vip.com>, <galerieslafayetteovip.com>, and <galerieslafayettesvip.com>. On September 23, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 24, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Not disclosed) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 24, 2024 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrar, requesting the Complainant to either file separate complaints for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control.

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The Complainant filed an amended Complaint on October 3, 2024 requesting addition of the disputed domain names <galeries-lafayettevip.com>, <galeries-lafayetteovip.com>, <galeries-lafayettepvip.com>, and <galeries-lafayettenvip.com> into the proceeding. On October 4, 2024, the Center transmitted by email to the Registrars a request for registrar verification in connection with the additional disputed domain names. On October 4 and 8, 2024, the Registrars transmitted by email to the Center the verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 8, 2024 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting the Complainant to either file separate complaints for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control.

On October 8, 2024, the Complainant sent an email to the Center requesting the addition of the disputed domain names <galerieslafayettekvip.com> and <galeries-lafayetteivip.com> into the proceeding. On October 8, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the additional disputed domain names. On October 10, 2024, the Registrar transmitted by email to the Center the verification response disclosing registrant and contact information for the disputed domain names.

The Center sent an email communication to the Complainant on October 10, 2024 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting the Complainant to either file separate complaints for the disputed domain names associated with different

underlying registrants 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 October 11, 2024.

The Center verified that the Complaint together with the amended Complaints 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 October 16, 2024. In accordance with the Rules, paragraph
5, the due date for Response was November 5, 2024. The Respondents did not submit any response.

Accordingly, the Center notified the Respondents’ default on November 6, 2024.

The Center appointed Marilena Comanescu as the sole panelist in this matter on November 11, 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.

4. Factual Background

Headquartered in France, the Complainant operates in the fashion retail industry. The Complainant has
department stores in France and internationally, and receives more than 60 million visitors every day in its
290 stores and e-commerce websites. The Complainant has built up international recognition of its brands,
including: Galeries Lafayette, BHV/MARAIS, La Redoute, Galeries Lafayette-Royal Quartz Paris, Louis
Pion, Guérin Joaillerie and BazarChic. The Complainant has nearly 14,000 employees, and is present in
Berlin, Germany, Beijing, China, Jakarta, Indonesia, Dubai, United Arab Emirates, Istanbul, Türkiye, Doha,
Qatar, Shanghai, China, and Luxembourg.

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The Complainant owns worldwide trademark registrations for the mark GALERIES LAFAYETTE, such as the following:

- the International trademark registration number 1523937 for the GALERIES LAFAYETTE (word stylized),

registered on January 10, 2020, covering goods and services in classes 3, 14, 16, 18, 25, 35, and 43;

- the United States trademark registration number 4086463 for GALERIES LAFAYETTE (word), filed on
December 9, 2010, and registered on January 17, 2012, covering services in classes 35; and

- the European Union trademark registration number 03798147 for GALERIES LAFAYETTE (word), filed on April 27, 2004, and registered on May 19, 2006, covering goods and services 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.

The Complainant operates, among many others, websites at the domain names <galerieslafayette.com> registered on August 1, 1997; and <galerieslafayettes.com> registered on September 13, 2002.

The disputed domain names were registered as follows:

- <galerieslafayettevip.com> and <galerieslafayette-vip.com> on July 30, 2024;

- <galerieslafayetteovip.com> and <galerieslafayettesvip.com> on September 12, 2024;

- <galeries-lafayettevip.com> and <galeries-lafayetteovip.com> on September 18, 2024;

- <galeries-lafayettepvip.com> and <galeries-lafayettenvip.com> on September 27, 2024; and

- <galeries-lafayettekvip.com> and <galeries-lafayetteivip.com> on October 4, 2024.

According to the Complaint, at the time of filing the Complaint, all the disputed domain names directed to a login page reproducing the Complainant’s trademark and logo and were used for fraud in a phishing scheme. The scheme involved email communications, purportedly sent by a chief executive of the Complainant, inviting customers to join fictitious “Galeries Lafayette VIP” groups, where some of such customers were induced to purchase goods using crypto assets with the promise of earning point upon completion of the mission.

Before commencing the present procedure, starting with August 5, 2024, up to October 2, 2024, the
Complainant contacted the Registrars and hosting companies for the disputed domain names, in order to
request the deactivation of the corresponding websites. Some of the disputed domain names were put on

“clientHold” status.

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 virtually identical, or at least confusingly similar to its well-known trademark, and corporate name GALERIES LAFAYETTE, in conjunction with the term “vip”, separated by a hyphen and the letters “s”, “o”, “n”, “p”, “i”, and “k”; that the Respondents have no rights or legitimate interests in the disputed domain names; and that the Respondents registered and are using the disputed domain names in bad faith to direct Internet users to a login page reproducing the Complainant’s logo, without any authorization; moreover, the disputed domain names were used to create revenue through fraudulent behavior and illicit practices by impersonating one of the Complainant’s chief

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executives, to contact customers inviting them to join fictitious “VIP groups”; the Complainant considers that
the Respondents’ contact information is false and that the disputed domain names are registered by the

same person.

B. Respondents

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

6. Discussion and Findings

6.1 Preliminary Procedural Issue: Consolidation of Multiple Respondents

The amended Complaint was filed in relation to nominally different disputed domain name registrants. The Complainant alleges that the disputed 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 Complaint 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 (i) were created in a similar manner, incorporating the Complainant’s trademark followed by the word “vip”, various letters (“s”, “o”, “n”, “p”, “i”, and “k”), and/or hyphen and the generic Top-Level Domain (“gTLD”) “.com”; (ii) according to the

Complainant and unchallenged by the Respondents, were used in a similar manner, namely for resolving to the same login page, reproducing the Complainant’s logo and for inviting the Internet users to join fictitious “Galeries Lafayette VIP” groups, and impersonating the Complainant’s chief executive; (iii) have been registered with the same two Registrars, and within a three-month distance from each other, grouped two by two in the same day; (iv) the Respondents have not objected to the consolidation claims made by the Complainant despite the email communications sent by the Center to them; and (v) all the Respondents seem to be provided false or incomplete contact information, in view of the information in the Complaint and inability to deliver the Center’s written notice of Complaint by courier.

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

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 Issue: Three Elements

Under the Policy, the Complainant is required to prove on the balance of probabilities that:

(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 the disputed domain names; and

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(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 names. 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.

Accordingly, each of the disputed domain names 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 and letters, here “vip”, “s”, “o”, “n”, “p”, “i”, and “k””, may bear on assessment of the second and third elements, the Panel finds the addition of such terms/letters do 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.

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 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.

According to the evidence provided in the Complaint, the Respondent has used all the disputed domain
names for scamming purposes, impersonating the Complainant and its representative in order to deceive its
Internet customers. UDRP panels have categorically held that the use of a domain name for illegal activity
(such as phishing, impersonation/passing off, or other types of fraud) can never confer rights or legitimate
interests on a respondent. WIPO Overview 3.0, section 2.13.1.

Further, the composition of the disputed domain names which combine the Complainant’s trademark with the term “vip” and/or various letters, suggests an affiliation with the trademark owner. UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. WIPO Overview 3.0, section 2.5.1.

The Panel finds the second element of the Policy has been established.

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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 finds that the disputed domain names were registered in bad faith, with knowledge of the Complainant and its trademark particularly because they are very similar to the Complainant’s distinctive mark registered years ago, its company name and domain names. Furthermore, the use of the disputed domain names enforces such finding.

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.

According to evidence in the Complaint, the Respondent used the disputed domain names in connection with fraudulent practices, for impersonating the Complainant’s offical login page, and deceiving the Complainant’s customers into joining fictitious groups and purchasing goods using crypto assets, also revealing sensitive information. UDRP Panels have held that the use of a domain name for phishing, impersonation/passing off, or other types of fraud establishes bad faith. WIPO Overview 3.0, section 3.4.

Paragraph 4(b)(ii) of the Policy provides another circumstance of bad faith registration and use when the respondent registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct. The Panel finds that registering for at least ten disputed domain names incorporating the Complainant’s distinctive trademark, within a three-month timeframe, can be considered a pattern of abusive conduct and registration of the disputed domain names in bad faith.

The Respondent has not participated in the present proceeding and provided inaccurate or incomplete contact information in the WhoIs. Such facts, together with all the other elements in this case, supports, in the eyes of this Panel, a finding of bad faith behavior.

The Panel finds the third element of the Policy has been established.

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 <galeries-lafayetteivip.com>, <galeries-lafayettekvip.com>,
<galeries-lafayettenvip.com>, <galeries-lafayetteovip.com>, <galerieslafayetteovip.com>,
<galeries-lafayettepvip.com>, <galerieslafayettesvip.com>, <galeries-lafayettevip.com>,

<galerieslafayette-vip.com>, and <galerieslafayettevip.com> be transferred to the Complainant.

/Marilena Comanescu/
Marilena Comanescu
Sole Panelist
Date: November 20, 2024