WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Les Parfumeries Fragonard v. Sunny Elemba

Case No. D2020-1648

1. The Parties

Complainant is Les Parfumeries Fragonard, France, represented by Inlex IP Expertise, France.

Respondent is Sunny Elemba, Nigeria.

2. The Domain Name and Registrar

The Disputed Domain Name <fraqonard.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2020. On June 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 24, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the 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 Respondent of the Complaint, and the proceedings commenced on June 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 16, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 17, 2020.

The Center appointed Richard W. Page as the sole panelist in this matter on August 2, 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 is the owner of numerous rights composed of or including the denomination FRAGONARD, filed all over the world relating to the cosmetics field of activity and particularly perfume products (hereinafter the “FRAGONARD Mark”). Among other trademark registrations, Complaint has registrations for the FRAGONARD Mark in France: Registration No. 1327342 (registered on October 18, 1985) and Registration No. 1661663 (registered on May 14, 1991). Complainant has also registered numerous domain names worldwide incorporating the FRAGONARD Mark.

Complainant has made significant investments in developing and protecting its intellectual property rights over many years, including through many trademarks using the denomination FRAGONARD.

The Disputed Domain Name was registered on June 11, 2020. The Disputed Domain Name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Disputed Domain Name is confusingly similar to the FRAGONARD Mark because it only replaces the “g” in FRAGONARD with a “q”, which two letters are phonetically and visually similar. Complainant further contends that the Disputed Domain Name is a form of typosquatting. See Marlink SA v. Sam Hen, Elegant Team, WIPO Case No. D2019-1215.

Complainant alleges that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Complainant further alleges that Respondent has no filed or registered trademarks containing “fraqonard” and is not authorized or licensed by Complainant to use the FRAGONARD Mark. Complainant further alleges that the Disputed Domain Name resolves to an error page with no content. See Natixis v. Sylvia Postler, WIPO Case No. D2015-0916.

Complainant asserts that Respondent has registered and is using the Disputed Domain Name in bad faith. Complainant further asserts that the FRAGONARD Mark is well-known throughout the world. Complainant further asserts that it distributes its fragrances worldwide through retail outlets, hotels, and online in French, English, German, Spanish and Italian. Complainant further asserts that it has expended substantial amounts in advertising and promoting the FRAGONARD Mark.

Complainant avers that Respondent has established a mail exchanger record (“MX record”) which allows Respondent to use email addresses with the suffix “@fraqonard.com”. Complainant further avers that Respondent is in a position to email, spam, or phish with email addresses appearing to be related to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”

Respondent is not obliged to participate in a UDRP proceeding, but when Respondent fails to do so, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. See Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441.

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the FRAGONARD Mark; and

ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

iii) that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant argues that it is the owner of the FRAGONARD Mark, as evidenced by trademark registrations in France and other jurisdictions and by long and continuous use. Section 1.2.1 of the WIPO Overview 3.0 states that registration of a trademark is prima facie evidence of Complainant having enforceable rights in the FRAGONARD Mark.

Respondent has not contested Complainant’s trademark rights.

The Panel finds that, for purposes of this proceeding, Complainant has enforceable rights in the FRAGONARD Mark.

Complainant contends that the Disputed Domain Name is identical with and confusingly similar to the FRAGONARD Mark pursuant to paragraph 4(a)(i) of the Policy.

Complainant contends that the Disputed Domain Name is confusingly similar to the FRAGONARD Mark because it only replaces the “g” in FRAGONARD with a “q”, which two letters are phonetically and visually similar. Complainant further contends that the Disputed Domain Name is a form of typosquatting. See Marlink SA v. Sam Hen, Elegant Team, WIPO Case No. D2019-1215.

The Panel finds that the replacement of the letter “g” with the letter “q” in the Disputed Domain Name is non‑distinguishing. Therefore, the Disputed Domain Name essentially incorporates the entirety of the FRAGONARD Mark. See sections 1.7 and 1.11.1 of the WIPO Overview 3.0 (incorporating entire trademark with non-distinctive elements) shows confusing similarity. Section 1.7 of the WIPO Overview 3.0 says that inclusion of the entire trademark in a domain name will be considered confusingly similar. Section 1.11.1 of the WIPO Overview 3.0 instructs that generic Top‑Level Domains (“gTLDs”) such as (“.net”) may be disregarded for purposes of assessing confusing similarity. See also, section 1.9 of the WIPO Overview 3.0 which says that a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by UDRP panels to be confusingly similar to the relevant mark for purposes of the first element.

Respondent has not contested the assertions by Complaint that the Disputed Domain Name is confusingly similar to the FRAGONARD Mark.

The Panel finds that the Disputed Domain Name is confusingly similar to the FRAGONARD Mark and that Complainant has demonstrated the required elements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.

Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights or legitimate interests in the Disputed Domain Name. Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the FRAGONARD Mark.

Complainant alleges that Respondent has no filed or registered trademarks containing “Fraqonard” and is not authorized or licensed by Complainant to use the FRAGONARD Mark. Complainant further alleges that the Disputed Domain Name resolves to an error page with no content. See Natixis v. Sylvia Postler, WIPO Case No. D2015-0960.

Because Respondent has posted no content to the website to which the Disputed Domain Name resolves, Respondent has made no bona fide offering of goods or services and is not making a legitimate noncommercial use of the Disputed Domain Name. Furthermore, there is no evidence that Respondent has been commonly known by the Disputed Domain Name.

Therefore, Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy.

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:

(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the FRAGONARD Mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or

(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the FRAGONARD Mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the FRAGONARD Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.

The four criteria set forth in the Policy paragraph 4(b) are nonexclusive. See, Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003 (“Telstra”). In addition to these criteria, other factors alone or in combination can support a finding of bad faith.

One such factor is that Respondent has made no active use of the Disputed Domain Name. Complainant alleges that Respondent has not developed any active website. See Telstra.

In Telstra it was established that registration together with “inaction” or “passive use” and other facts can constitute bad faith use, and the Telstra decision has since been cited for that proposition and followed by subsequent UDRP panels. Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; Guerlain, S.A. v. Peikang, WIPO Case No. D2000-0055; Compaq Computer Corporation v. Boris Beric, WIPO Case No. D2000-0042; Sanrio Company Ltd. and Sanrio, Inc. v. Neric Lau, WIPO Case No. D2000-0172; 3636275 Canada, dba eResolution v. eResolution.com, WIPO Case No. D2000-0110; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; Strålfors AB v. P D S AB, WIPO Case No. D2000-0112; InfoSpace.com, Inc. v. Tenenbaum Ofer, WIPO Case No. D2000-0075. Here, the circumstances of the case, including the implausibility of any good faith use to which the domain name may be put, support a finding of bad faith. See section 3.3. of the WIPO Overview 3.0.

The only potential use of the Disputed Domain Name was that Respondent has established a mail exchanger record (“MX record”) which allows Respondent to use email addresses with the suffix “@fraqonard.com”. Complainant further avers that Respondent is in a position to email, spam, or phish with email addresses appearing to be related to Complainant. Any such use would only support the conclusion that Respondent registered and used the Disputed Domain Name in bad faith.

Furthermore, the nature of the disputed domain name, containing a typo of Complainant’s widely-known trademark, supports a finding of bad faith. See, section 3.2.1 of the WIPO Overview 3.0.

Therefore, the Panel finds that Complainant has satisfied the requirements of paragraph 4(b) and paragraph 4(a)(iii) 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 <fraqonard.com> be transferred to Complainant.

Richard W. Page
Sole Panelist
Date: August 12, 2020