WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
La Redoute SAS v. Muhammad Ashraf, Soomro
Case No. D2019-2249
1. The Parties
The Complainant is La Redoute SAS, France, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Muhammad Ashraf, Soomro, Pakistan.
2. The Domain Name and Registrar
The disputed domain name <laredoute.site> is registered with Mesh Digital Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2019. On September 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 18, 2019, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on September 18, 2019, 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 September 20, 2019.
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 September 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 14, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 15, 2019.
The Center appointed Frank Schoneveld as the sole panelist in this matter on October 17, 2019. 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 Complaint is registered as the trademark owner of LA REDOUTE at:
- International trademark WIPO No. 471825, Registered October 08, 1982
- Singapore No. T8406551J, Registered December 28,1984
- United States of America No. 1389593, Registered April 15, 1986
- European Union No. 000659151, Registered August 16, 1999
- France No. 3447315, Registered August 24, 2006
The Complainant is the owner of the domain names <laredoute.fr> first registered on April 5, 1998, and <laredoute.com> first registered on June 1, 2001.
The disputed domain name <laredoute.site> was first registered on July 14, 2019.
On September 24, 2019, the webpage to which the disputed domain name resolves had a number of links, one of which was “Redoute”, while the remaining seven links were in German made no mention of “Redoute” or “La Redoute”. On an earlier (undetermined) date, at the bottom of the webpage to which the disputed domain name resolved there appears the words: “This webpage was generated by the domain owner using Sedo Domain Parking” and at the top of this webpage there appears: “BUY THIS DOMAIN The owner of laredoute.site is offering it for sale for an asking price of 299 USD.”
On three occasions, on July 31, 2019, August 12, 2019, and August 22, 2019, the Complainant (via the Registrar’s abuse contact email) addressed to the Respondent a letter stating that “use of the LA REDOUTE trademark as part of the Domain Name may create the false and misleading impression that you, or the person on whose behalf you manage the Domain Name, are authorized, licensed, or endorsed by La Redoute. Such confusion may be damaging to La Redoute. [and] … kindly requests that you transfer the Domain Name to La Redoute”. The Complainant received no response to these letters.
5. Parties’ Contentions
A. Complainant
The Complainant contends that La Redoute was founded in 1837 and produced its first mail order catalog in 1928 and for over 180 years, and that the Complainant has developed a lifestyle brand based on the French way of life, and is now a leading online retailer specializing in fashion and home decoration, to its millions of customers around the world. The Complainant asserts that in France it is the third retail website for apparel and the fourth in home decoration and has a brand awareness score of 99% in France among those aged 18-65. The Complainant submits that its’ websites <laredoute.fr> and < laredoute.com> are visited by more than 7 million unique visitors every month and that it is the only online retailer in France able to create, distribute and deliver its products to more than 10 million customers in France and to more than 150 countries globally. The Complainant contends that 70 per cent of La Redoute’s total turnover is reached with its own internal brands whilst the remaining 30 per cent of its turnover is reached internationally with a presence in the United Kingdom, Belgium, Switzerland, Russian Federation, Spain, and Portugal and other markets such as Pakistan and has a physical presence in 26 countries through subsidiaries and partnerships.
The Complainant maintains that it has a strong Internet and retail presence through its primary websites < laredoute.fr> and < laredoute.com>, as well as its various social medial platforms including Facebook, Pinterestand Twitter, with its Facebookpage having over 3 million followers around the globe, whilst its Twitterpage has more than 482K followers, as well as its Pinterestpage has more than 58K followers. The Complainant asserts that in addition to its strong social media presence, “www.Alexa.com ” ranks < laredoute.fr> as 5,252nd globally and 159th in France, and that according to “ www.Similarweb.com ”, ranks < laredoute.fr> as 2,049th globally and received 16.35 million total visits in the six-month period March to August 2019. The Complainant argues that this shows that the Complainant has spent substantial time, effort, and money advertising and promoting the LA REDOUTE brand worldwide, and has thus developed substantial goodwill in the LA REDOUTE brand, and through such extensive efforts, the LA REDOUTE brand has become distinctive and is uniquely associated with the Complainant and its products.
The Complainant contends that the Respondent is not commonly known by the disputed domain name, which evinces a lack of rights or legitimate interests, and the Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s trademark, and in the absence of any license or permission from the Complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed. The Complainant notes that the relevant Whois information identifies the Registrant as “Muhammad Ashraf” which does not resemble the disputed domain name in any manner. The Complainant argues that there is no evidence, including in the Whois record for the disputed domain name, suggesting that the Respondent is commonly known by the disputed domain name, so that the Respondent cannot be regarded as having acquired rights to or legitimate interests in the disputed domain name.
The Complainant contends that the Respondent is using the disputed domain name to redirect internet users to a website featuring links to third-party websites and the Respondent’s website features a link that directly references the Complainant and its business, i.e., “Redoute”. The Complainant asserts that, presumably, the Respondent receives pay-per-click fees from the linked websites that are listed at the disputed domain name’s website. The Complainant notes that prior UDRP decisions have consistently held that respondents that monetize domain names using pay-per-click links have not made a bona fide offering of goods or services that would give rise to rights or legitimate interests in a disputed domain name, and, as such, the Respondent is not using the disputed domain name to provide a bona fide offering of goods or services as allowed under the Policy paragraph 4(c)(i), nor a legitimate noncommercial or fair use as allowed under the Policy paragraph 4(c)(iii). The Complainant refers to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview3.0”) at 2.9 which states (in part) that “panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”. The Complainant notes that the disputed domain name is being offered for sale for USD 399, an amount that far exceeds the Respondent’s out-of-pocket expenses in registering the domain, which serves as further evidence of the Respondent’s lack of rights and legitimate interests and notes that past Panels have consistently upheld this view. The Complainant also notes that the Respondent registered the disputed domain name on July 14, 2019, which is significantly after the Complainant’s registration of its <laredoute.fr> domain name on April 05, 1998, and its <laredoute.com> domain name on June 1, 2001, respectively. The Complainant argues that these factors indicate the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant contends that the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business, and that the composition of the domain name makes it illogical to believe that the Respondent was not specifically targeting the Complainant at the time the disputed domain name was registered, and in light of the facts set forth by the Complainant, it is not possible to conceive of a plausible situation in which the Respondent would have been unaware of the Complainant’s brands at the time the disputed domain name was registered. The Complainant argues that its trademark LA REDOUTE is so closely linked and associated with the Complainant that the Respondent’s use of this trademark, or any minor variation of it, strongly implies bad faith and where a domain name is so obviously connected with such a well-known name and products, its very use by someone with no connection with the products suggests opportunistic bad faith.
The Complainant argues further that at the time of registration of the disputed domain name, the Respondent knew, or at least should have known, of the existence of the Complainant’s trademarks and that registration of the disputed domain name containing a well-known trademark constitutes bad faith per se. The Complainant asserts that performing searches across a number of Internet search engines for “laredoute” returns multiple links referencing the Complainant and its business, and given the Complainant’s worldwide reputation and presence on the Internet, indicates that the Respondent was or should have been aware of the Complainant’s trademarks prior to registering the disputed domain name.
The Complainant says that the Respondent creates a likelihood of confusion with the Complainant and its trademarks by registering a domain that incorporates the Complainant’s trademark in its entirety, which demonstrates that the Respondent is using the disputed domain name to confuse unsuspecting Internet users looking for the Complainant’s services, and to mislead Internet users as to the source of the disputed domain name and website. The Complainant says that by creating this likelihood of confusion between the Complainant’s trademarks and the disputed domain name, this leads to misperceptions as to the source, sponsorship, affiliation, or endorsement of the disputed domain name, and the Respondent has demonstrated a nefarious intent to capitalize on the fame and goodwill of the Complainant’s trademarks in order to increase traffic to the disputed domain name’s website for the Respondent’s own pecuniary gain, as evidenced by the presence of multiple pay-per-click links posted to the Respondent’s website, some of which directly reference the Complainant.
The Complainant submits that the disputed domain name can only be taken as intending to cause confusion among Internet users as to the source of the disputed domain name, and thus, the disputed domain name must be considered as having been registered and used in bad faith pursuant to the Policy paragraph 4(b)(iv), with no good faith use possible. The Complainant states that where the disputed domain name incorporates the Complainant’s trademark in its entirety, there is no plausible good-faith reason or logic for Respondent to have registered the disputed domain name and rather it is indicative of an intention to hold the disputed domain name for some future active use in a way which would be competitive with or otherwise detrimental to Complainant. The Complainant asserts that further, considering these circumstances, any use of the disputed domain name whatsoever, whether actual or theoretical, would have to be in bad faith as it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.
The Complainant contends that the Respondent currently holds registrations for six other domain names that misappropriate the trademarks of well-known brands and businesses, and that this fact demonstrates that the Respondent is engaging in a pattern of cybersquatting/typosquatting, which is evidence of bad faith registration and use of the disputed domain name.
The Complainant says that the Respondent is currently offering to sell the disputed domain name, which constitutes bad faith under the Policy paragraph 4(b)(i) because the Respondent has demonstrated an intent to sell, rent, or otherwise transfer the disputed domain name for valuable consideration in excess of his out-of-pocket expenses, and that it is well established that seeking to profit from the sale of a confusingly similar domain name that incorporates a third party’s trademark demonstrates bad faith. The Complainant notes that the Respondent has ignored the Complainant’s attempts to resolve this dispute outside of this administrative proceeding and that past Panels have held that failure to respond to a cease-and-desist letter may properly be considered a factor in finding bad faith registration and use of a domain name.
The Complainant concludes by stating that, on balance of the facts set forth by the Complainant above, it is more likely than not that the Respondent knew of and targeted the Complainant’s trademark, and the Respondent should be found to have registered and used the disputed domain name in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to UDRP paragraph 4(a), in order to have a domain name transferred or cancelled the Complainant must prove that each of the following three elements is present:
(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.
The Rules at paragraph 15(a) require that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. In the absence of any response by the Respondent to the Complaint, the Panel proceeds on the basis of the Complaint submitted by the Complainant and in accordance with the Policy, the Rules and any rules and principles of law that are applicable.
A. Identical or Confusingly Similar
The Complainant has provided evidence showing it is the holder of the LA REDOUTE trademark registered as an international trademark since at least 1982 and also as the registered holder of the same trademark in the European Union, France, Singapore and in the United States of America. The Complainant therefore clearly has rights in the trademark LA REDOUTE. The Respondent does not challenge such evidence or respond to the contentions the Complainant has submitted with regard to the Complainant’s trademark.
It is clear that the disputed domain name (other than the “.site” generic Top Level Domain (gTLD)) is exactly the same spelling as the Complainant’s LA REDOUTE trademark but with no space between “la” and “redoute”. In the Panel’s view the gTLDs “.site” in the disputed domain name does not in this case affect the disputed domain name for the purpose of determining whether it is the same as, or is confusingly similar to, the Complainant’s trademark.
In view of the above, the Panel finds that the disputed domain name uses the same word as the Complainant’s trademark, and this results in the disputed domain name being at least confusingly similar to the Complainant’s trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
It is noted that “La Redoute” in French means “the redoubt” or “the fortification” in English. There seems to be no indication that the Respondent would have any particular rights or legitimate interests in respect of the word “La Redoute” in its dictionary meaning (other than that which any person would have in a word with a dictionary meaning).
The evidence provided by the Complainant indicates that its LA REDOUTE trademark is well-known in Europe particularly in France, and there is also evidence that the LA REDOUTE trademark appears to be well-known with significant recognition of the brand “LA REDOUTE” as shown by the millions of followers on social networks and the millions of hits on its Internet domain name websites in various countries. The Respondent does not rebut this evidence or the assertions of the Complainant in that regard. The Panel therefore accepts that the LA REDOUTE trademark is well-known, including in Pakistan where the Complainant has a presence and where the Respondent at least has his registration address.
There is evidence that:
(i) the Respondent is not affiliated with the Complainant in any way;
(ii) international registration by the Complainant of the LA REDOUTE trademark, and registration by the Complainant in the United States of America and Singapore of the LA REDOUTE trademark, preceded by some thirty years the registration of the disputed domain name by the Respondent;
(iii) registration of the LA REDOUTE trademark by the Complainant in the European Union preceded by nearly ten years the registration of the disputed domain name by the Respondent;
(iv) the Respondent’s name does not bear any resemblance to the disputed domain name and there is nothing in the evidence before the Panel, including in the Whois record for the disputed domain name, that suggests the Respondent might be known by the disputed domain name or any part of it.
The use in the disputed domain name of the Complainant’s well-known trademark suggests that the Respondent has a right to use this mark in the disputed domain name or that the disputed domain name is associated with the Complainant. However, the Complainant makes it very clear that it has never licensed the Respondent or authorized the Respondent to use its LA REDOUTE trademark in any domain name, and that its use in the disputed domain name without the Complainant’s permission would likely violate the Complainant’s rights in its trademark. All the above indicates that it is more likely than not that the Respondent has no right or legitimate interests in the disputed domain name.
There is no submission by the Respondent that the disputed domain name is being used in connection with a bona fide offering of goods or services. The webpages to which the disputed domain name resolved had at different times various links to other websites, the majority of which have no apparent relationship to the Complainant. The Complainant contends, and the Panel accepts, that such use could not be a bona fide offering of goods or services since any such links do not bear any dictionary meaning of the term and could potentially mislead Internet uses into falsely believing that the offering at those links was being made by, or was sponsored or approved by, the Complainant when clearly it was not.
The Respondent does not respond to the Complainant’s assertion that the links on the webpages to which the disputed domain name devolves is a parked page of Pay Per Click (PPC) links to other websites that compete with the reputation and goodwill of the Complainant’s mark and misleads Internet users. The use of “Redoute” and other words as links on the webpage to which the disputed domain name resolves is clearly a parked page and seems likely (as is typical for parked pages) to be PPC links to other websites. Since at least three of these links use the word “Redoute” it is clear the links and the disputed domain name compete with the reputation and goodwill of the Complainant’s mark and could well mislead Internet users into believing that the Respondent had some claim to the Complainant’s name. However, the evidence indicates that the Respondent has no rights or legitimate interest in the disputed domain name.
WIPO Overview 3.0 at paragraph 2.9 notes that Panels have recognized that the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the disputed domain name consists of a dictionary word and is used to host PPC links genuinely related to the dictionary meaning of the word comprising the disputed domain name, and not to trade off the complainant’s trademark. While the word “la Redoute” has a dictionary meaning in the French language, it is reasonably clear from the links to webpages to which the disputed domain name resolves, that in this case the Respondent is seeking to trade off the Complainant’s LA REDOUTE trademark. This is because most, if not all, of the links (e.g., “Catalogue”, “Promo”, “Autoversicherung”, “Handyvertag”, “Bons reduction”) refer to things that have no apparent connection to the dictionary meaning of “La Redoute”, but rather have a clear commercial significance in trade.
The evidence provided by the Complainant, together with the conclusion that the LA REDOUTE trademark is well-known, means there is likely to be limited circumstances in which the Respondent might have any rights or legitimate interests in the disputed domain name. In the absence of any submission from the Respondent on this element of the Policy, paragraph 4(a)(ii), a prima facie case has been established that the Respondent has no rights or legitimate interests in the disputed domain name. In the Panel’s view it is more likely than not the Respondent has no rights or legitimate interests in respect of the disputed domain name. Given that the Respondent has failed to provide any rebuttal of this prima facie case, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant has submitted that the Respondent currently holds registrations for six other domain names that misappropriate the trademarks of well-known brands and businesses, and that this fact demonstrates that the Respondent is engaging in a pattern of cybersquatting/typosquatting, which is evidence of bad faith. However, the Complainant provides only copies of the registration details of the domain names as evidence of misappropriation of the trademarks. Except for the Complainant’s bare assertion, there is no evidence (such as a UDRP Panel determination or a complaint by the relevant brand or business), of misappropriation of the listed trademarks. There is therefore, no prima facie evidence of a pattern of cybersquatting/typosquatting (to date). This finding however, does not mean that the Respondent has not registered and is not using the disputed domain name in bad faith.
The Complainant’s well-known trademark is easily found on the Internet through an Internet search engine and the existence for over thirty years of the Complainant’s registered trademarks (both internationally and in a number of countries) in “LA REDOUTE”, together with the significant recognition on the Internet of the brand “LA REDOUTE”, means it is unlikely the Respondent was not aware of the Complainant’s trademark rights when registering the disputed domain name.
The use with PPC of links to other sites offering goods and services, indicates that the Respondent has likely, for commercial gain, intentionally attempted to attract Internet users to the Respondent’s website to which the disputed domain name resolves. The Respondent has done so by using the Complainant’s trademark LA REDOUTE in the disputed domain name and the links in the webpage marked “Redoute”, to create a likelihood of confusion that the disputed domain name, and website to which the disputed domain name resolves, were sponsored, affiliated or endorsed by the owner of the LA REDOUTE trademark (i.e. the Complainant), when clearly they are not. There is very likely a commercial gain in doing so since many parking webpage providers such as Sedo (the parking webpage provider in this case) typically do so on a PPC basis.
The Respondent has failed to respond to any of the above. The Panel therefore finds that, within the meaning of the Policy paragraph 4(b)(iv), by using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website to which the disputed domain name resolves, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on that website. In such a case, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
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, <laredoute.site> be transferred to the Complainant.
Frank Schoneveld
Sole Panelist
Date: October 29, 2019
