WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Holding Le Duff “HLD” v. Online Admin, DotBadger Domains

Case No. D2019-3035

1. The Parties

Complainant is Holding Le Duff “HLD”, France, represented by SCAN Avocats AARPI, France.

Respondent is Online Admin, DotBadger Domains, Czech Republic.

2. The Domain Name and Registrar

The disputed domain name <groupeleduff.net> is registered with Rebel Ltd (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2019. On December 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 2020, 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 Complainant on December 20, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 26, 2020.

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 Respondent of the Complaint, and the proceedings commenced on January 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 23, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 29, 2020.

The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on February 6, 2020. 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

Complainant was established in 1976 and specializes in restaurants and bakeries worldwide. Complainant has over 1,658 restaurants and bakeries in 80 countries. Complainant’s total turnover is more than EUR 2 billion. Complainant’s restaurant brands include BRIOCHE DOREE, DEL ARTE, FOURNIL DE PIERRE, LA MADELEINE, BRIDOR, FB SOLUTION, and GOURMING. Complainant plans to open 2,000 new franchised restaurants worldwide in the next five years. Complainant regularly launches massive investment plans and acquires well-known restaurant and bakery chains. In 2016, Complainant announced EUR 400 million of new investments over five years.

Complainant has received several awards for the quality of its products and for its business success, notably the “Palmes de la Restauration 2015” for its work over the past 20 years (1995-2015) and the award for the best retail chain of the year 2018-2019 for the BRIOCHE DOREE brand, for the second year in a row.

Complainant uses its GROUPE LE DUFF and LE DUFF trademarks on its website and on its commercial buildings as well as on its business documents.

Google searches for the LE DUFF brand reveal Complainant’s marks as the first hits. Prior UDRP decisions have held that Complainant holds well-established rights in the GROUPE LE DUFF and LE DUFF marks and that its trademarks are highly distinctive. See, e.g., Holding Le Duff “HLD” v. Franck James, WIPO Case No. D2019-0150, HOLDING LE DUFF “HLD” v. Xianfeng Hu,WIPO Case No. D2018-0590, and Holding Le Duff “HLD” v. Wang Lian Feng, WIPO Case No. D2018-1002. In addition, other UDRP decisions have found that Complainant has a strong presence on the Internet using these marks. See e.g., Holding Le Duff “HLD” v. Maria Nobree, Maria S.A, WIPO Case No. D2019-2199, and Holding Le Duff “HLD” v. Whoisguard Protected, WhoIsGuard, Inc. / Ryan Sowders, Ryan Inc, WIPO Case No. D2019-2186.

Complainant is the owner of the following registered trademarks:

European Union GROUPE LE DUFF No. 01146851 registered on June 20, 2000
France GROUPE LE DUFF No. 99786142 registered on April 13, 1999
European Union LE DUFF No. 010685816 registered on July 31, 2012
European Union LE DUFF and Design No. 010685873 registered on July 31, 2012

In addition, Complainant owns numerous domain names, including <groupeleduff.com>, <groupeleduff.eu> and many others including the marks GROUPE LE DUFF and LE DUFF.

The disputed domain name was registered on July 14, 2016 and resolves to a website with pay-per-click links.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s mark, that Respondent has no rights or legitimate interests in the disputed domain name and that the disputed domain name was registered and is being used in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

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

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

(iii) the disputed domain name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules instructs the Panel to 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”.

A. Identical or Confusingly Similar

Complainant has demonstrated that it has strong rights in the trademarks GROUPE LE DUFF and LE DUFF in connection with restaurant and bakery services, and investment opportunities related thereto. The disputed domain name incorporates Complainant’s mark in its entirety. The addition of the generic Top-Level Domain (“gTLD”) “.net” does not add any distinguishing feature.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.

B. Rights or Legitimate Interests

Complainant contends that Respondent is not affiliated with or connected to Complainant in any way. At no time has Complainant licensed or otherwise endorsed, sponsored or authorized Respondent to use Complainant’s marks or to register the disputed domain name. The record is devoid of any facts that establish any rights or legitimate interests of Respondent in the disputed domain name. There is no evidence that Respondent has been commonly known by the disputed domain name or that it has any rights that might predate Complainant’s adoption and use of the GROUPE LE DUFF and LE DUFF marks and associated domain names. Complainant’s first use of the GROUPE LE DUFF and LE DUFF marks dates back to as early as 1976, well before the registration of the disputed domain name on July 14, 2016.

Respondent has not made, and is not making, a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name resolves to a domain parking page displaying several links written in French, which lead to third parties’ sponsored links related to various categories of interest. Respondent has not used the disputed domain name in connection with the bona fide offering of goods or services.

The Panel finds that Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant has demonstrated that it has strong trademark rights in the marks GROUPE LE DUFF and LE DUFF and that it has a strong presence on the Internet. The record therefore indicates that it is highly likely that Respondent knew of Complainant’s prior trademark rights at the time of registering the disputed domain name. Indeed, Respondent’s registration and use of a domain name, which is so clearly connected with Complainant and incorporates Complainant’s mark in its entirety, is evidence of Respondent’s opportunistic bad faith.

The disputed domain name resolves to a domain parking page (a) displaying several links written in French, which lead to third parties’ sponsored links related to various categories of interest and (b) referring to a generic privacy policy which is not linked to Respondent. The record indicates that Respondent is using the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark.

On September 19, 2016, Complainant sent a cease and desist letter to Respondent demanding transfer of the disputed domain name. Despite many reminders during the past three years, Respondent failed to answer the letters.

The Panel finds that the disputed domain name was 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 <groupeleduff.net> be transferred to Complainant.

Lynda J. Zadra-Symes
Sole Panelist
Date: February 20, 2020