Société Anonyme des Galeries Lafayette v TR1 Agencia Digital, ClicRegistro

WIPO Case No. D2025-1886

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION
Société Anonyme des Galeries Lafayette v. TR1 Agencia Digital, ClicRegistro

Case No. D2025-1886

1. The Parties

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

France.

The Respondent is TR1 Agencia Digital, ClicRegistro, Brazil.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2025. On May 12, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 12, 2025, 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 (PR, BR) and contact information in the Complaint. The Center sent an email communication to the Complainant on May 14, 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 15, 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 16, 2025. In accordance with the Rules, paragraph 5, the due date for Response was June 5, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 10, 2025.

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The Center appointed Mireille Buydens as the sole panelist in this matter on June 13, 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 based company that runs for 120 years, with department stores under the brand GALERIES LAFAYETTE in France and on a worldwide scale. The Complainant has nearly 14,000 employees and receives more than 60 million visitors every day in its 290 stores and e-commerce websites.

The Complainant owns several registered trademarks with the GALERIES LAFAYETTE mark, including:

- International registered trademark no. 1230007 for the GALERIES LAFAYETTE word mark, registered on August 7, 2014, designating various countries including Australia, Norway, and Japan;

- International registered trademark no. 1718969 for the GALERIES LAFAYETTE word mark, registered on October 13, 2022, designating the United States of America; and

- International trademark no. 1523937 for GALERIES LAFAYETTE (word and device mark), registered on January 10, 2020, designating, inter alia, Canada, Singapore, China, Indonesia, Malaysia, Thailand.

The Complainant also owns and operates several domain names with its GALERIES LAFAYETTE trademark
(“the Trademark”), including <galerieslafayette.com> registered on August 1, 1997, and
<galerieslafayettes.com> registered on September 13, 2002.

The disputed domain name was registered on July 25, 2024. The disputed domain name directs to a website offering perfumes and related products (under the brand LAFAYETTE) and depicting a logo which is very similar to the Complainant’s logo (also registered as a trademark under the International trademark no. 1523937). The Mail Exchange (“MX”) records are activated. The website does not display any contact address nor company’s information (it only mentions an email address).

The Complainant sent a message to the Registrar via email and online form, on December 3, 2024 and on
April 14, 2025, requesting to deactivate the disputed domain name. The Registrar refused to comply with the
request and referred the Complainant to the UDRP proceedings. The Complainant also sent on December
3, 2024 a notification to the hosting company, requesting the deactivation of the website. The Complainant

asserts that the website under the disputed domain name was deactivated but then reactivated.

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.

First, the Complainant asserts that the disputed domain name is confusingly similar to the Trademark as it reproduces its distinctive element “Lafayette” followed by the descriptive term “parfum”, which is misleading for Internet users as the Complainants is widely known for selling luxury perfumes and related products. The addition of a generic term referring to the Complainant’s core business increases the confusing similarity between the disputed domain name and the Complainant’s Trademark. The Complainant further contends that the extension “.com” is not to be taken into consideration when examining the similarity between the Complainant’s trademarks and the disputed domain name.

Second, the Complainant asserts that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent is neither affiliated with the Complainant in any way nor has it been authorized by the Complainant to seek registration of any domain name incorporating its Trademark. There

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is no evidence that Respondent may be commonly known by the name “Galeries Lafayette” or “Lafayette”.
Moreover, the Complainant asserts that the Respondent has neither used nor made any demonstrable
preparation to use the domain name in connection with a bona fide offering of goods or services. The
registration and use of the disputed domain name, which is similar to the Complainant’s Trademark, creates
confusion among Internet users about affiliation or sponsorship by the Complainant, and cannot be seen as
a bona fide. Furthermore, several email servers have been configured on the disputed domain name and
thus, there might be a risk that Respondent is engaged in a phishing scheme. Finally, the Complainant
explains that, given the reputation of the Complainant’s Trademark worldwide, and the fact that the disputed
domain name is confusingly similar to the Complainant’s Trademark, it is not possible to conceive a plausible
circumstance in which the Respondent could pretend to have any rights or legitimate interests in the disputed
domain name, as its use would invariably result in misleading Internet users and taking unfair advantage of

the Complainant’s Trademark.

Third, the Complainant asserts that the disputed domain name was registered and is being used in bad faith.
The Complainant submits that the Respondent should have known the Complaint’s Trademark when
registering the disputed domain name given the worldwide reputation of the Trademark and the fact that the
registration of the Trademark significantly predates the registration of the disputed domain name. Besides,
given the composition of the disputed domain name, reproducing the main distinctive element of the
GALERIES LAFAYETTE Trademark and adding the generic term “parfum” (referring to one of the
Complainant’s key businesses), the Respondent was obviously aware of the Complainant and its Trademark.
A quick trademark search would have revealed to the Respondent the existence of the Complainant and its
Trademark. The Complainant further contends that the website associated with the disputed domain name
is actively engaging in the sale of perfumes and related products and depicts a logo which is very similar to
the Complainant’s logo. The Respondent tried to mislead Internet users into believing that the website
operated under the disputed domain name is an official website from the Complainant. The Respondent has

thus tried to capitalize on or otherwise take advantage of the Complainant’s Trademark and reputation.

B. Respondent

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

6. Discussion and Findings

Dealing with the Respondent’s failure to file a formal Response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission, as it considers appropriate.

Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:

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

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

(iii)      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.

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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 Trademark is recognizable within the disputed domain name. In cases where the disputed domain name incorporates a dominant feature of the relevant trademark, the domain name will normally be considered confusingly similar to that trademark for purposes of UDRP standing. WIPO Overview 3.0, section 1.7. In the present case, the disputed domain name includes a dominant feature of the Complainant’s Trademark. Accordingly, the disputed domain name is confusingly similar to the Trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms, here “parfum” (the French word for perfume) 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 Trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

Further, the generic Top-Level Domain (“gTLD”) “.com” is a standard registration requirement and is typically disregarded in the confusing similarity test.

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 Respondent is not licensed by, nor affiliated with, the Complainant in any way. There is no evidence
that the Respondent is commonly known by the disputed domain name, nor is there any evidence of use or
demonstrable preparations to use the disputed domain name for a bona fide offering of goods or services.
There is no evidence of legitimate noncommercial or fair use of the disputed domain name, either. The
Panel notes that the website at the disputed domain name depicts a logo which is very similar to the design
part of the Complainant’s Trademark International trademark registration no. 1523937. Such similarity
cannot be a coincidence and denotes the Respondent’s intention to mislead Internet users. This creates and
reinforces the likelihood of confusion with the Complainant. Panels have held that the use of a domain name
for illegitimate activity, here, claimed impersonation/passing off, can never confer rights or legitimate

interests on a respondent. WIPO Overview 3.0, section 2.13.1.

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.

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 notes that the Respondent has composed the disputed domain name by combining a dominant feature of the Complainant’s Trademark (the word “Lafayette”), deleting the word “Galeries” (descriptive for a department store), and adding the term “parfum” (descriptive of one of the Complainant’s products) for resolving to a website which sells perfumes and where the Respondent has depicted a logo which is very similar to the Complainant’s logo (also registered as a trademark). A quick search for the term “Lafayette” online (and/or in a trademark database) would have revealed to the Respondent the existence of the Complainant and its Trademark in the field of perfumes. As a result, the Panel finds that the Respondent was more likely than not aware of the Complainant’s Trademark at the time of the registration of the disputed domain name. WIPO Overview 3.0 section 3.2.2.

Moreover, panels have held that the use of a domain name for illegitimate activity, here claimed impersonating or passing off, constitutes bad faith. In the present case, the disputed domain name resolves to a website offering perfumes (the Complainant also offering perfumes on its own official website). The Respondent’s website also depicts a logo which is very similar to the Complainant’s logo (also registered as a trademark under the International trademark registration no. 1523937). This website does not contain any information allowing Internet users to identify the company operating the website, nor any disclaimer explaining the absence of link with the Complainant. In light of this, it seems inconceivable that the Respondent would have registered and used the disputed domain name for a reason other than seeking to unduly benefit from the Complainant, its Trademark, and associated goodwill. Such use constitutes bad faith under the paragraph 4(b)(iv) of the Policy.

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 <lafayetteparfum.com> be transferred to the Complainant.

/Mireille Buydens/
Mireille Buydens
Sole Panelist
Date: June 20, 2025