WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alain Afflelou Franchiseur v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / Penny Smith

Case No. D2021-2912

1. The Parties

The Complainant is Alain Afflelou Franchiseur, France, represented by Novagraaf France, France.

The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Penny Smith, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <afflellou.net> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2021. On September 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 3, 2021, 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 6, 2021, 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 7, 2021.

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 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 30, 2021.

The Center appointed Andrew F. Christie as the sole panelist in this matter on October 11, 2021. 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 was founded in 1972. It is a franchisor of optical products and services in Europe, particularly in France and Spain.

The Complainant is the owner of several trademark registrations for the word trademark AFFLELOU, including French Trademark Registration No. 4267761 and the corresponding International Trademark Registration No. 1305969, both registered on April 26, 2016. The Complainant owns the domain names <afflelou.com> (registered on September 13, 1999) and <afflelou.net> (registered on June 17, 1999).

The disputed domain name was registered on August 30, 2021. The Complainant sent the Respondent a cease and desist letter, dated September 2, 2021, informing the Respondent of the Complainant’s rights in the AFFLELOU trademark, and requesting the transfer of the disputed domain name, to which the Complainant did not receive a reply. The Complainant has provided a screenshot of a mail exchange (“MX”) record lookup, taken on September 2, 2021, showing that email servers were configured for the disputed domain name. The Complainant has also provided a screenshot, taken on September 3, 2021, showing that the disputed domain name resolved to a parking page that appears to contain links to various websites unconnected with the Complainant. At the time of this decision, it appears the disputed domain name does not resolve to an active webpage.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights because: (i) the disputed domain name consists of the Complainant’s trademark with an additional letter “l”, which is characteristic of typo squatting, and is a very minor modification of the Complainant’s trademark; (ii) Internet users will obviously think the disputed domain name belongs to the Complainant or has been registered in its name or for its account; and (iii) a likelihood of confusion is inevitable and is reinforced by the high notoriety enjoyed by the Complainant in France and all over the world in relation to optical products and services.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because the Respondent has no legitimate interests in holding the disputed domain name, has no registered right on this denomination, and the Complainant has never authorized registration of the disputed domain name.

The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the Complainant did not receive any response from the Respondent to its cease and desist letter; (ii) the disputed domain name is connected to a waiting page; (iii) mail servers are configured on the disputed domain name, and it is possible that the registrant has created an email address in order to send fraudulent emails to customers, service providers or suppliers pretending to be the Complainant so as to collect personal data, to place orders in the name of the company, or to share information about them; (iv) the Respondent could not have been unaware of the existence of the Complainant’s trademarks and domain names given its renown; and (v) a previous panel decision under the Policy has found proof of a respondent’s bad faith where the complainant’s trademark is well known, where there has been no response to the complaint, and where the respondent hides its identity.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

Once the generic Top-Level Domain (“gTLD”) extension “.net” is ignored (which is appropriate in this case), the disputed domain name consists of the Complainant’s registered word trademark AFFLELOU, with an additional letter “l” after the second “l”. The Complainant’s trademark is clearly recognizable within the disputed domain name. The inclusion of the additional “l” does not avoid the confusing similarity of the disputed domain name with the trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its AFFLELOU trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name was used to resolve to a webpage that appeared to contain links to other sites. Given the confusing similarity of the disputed domain name to the Complainant’s trademark, such a use of the disputed domain name is neither a bona fide use nor a legitimate noncommercial or fair use. The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has not rebutted this. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The disputed domain name was registered several years after the Complainant first registered its AFFLELOU word trademark. It is inconceivable that the Respondent registered the disputed domain name ignorant of the existence of the Complainant’s trademark, given the Complainant’s prior use of the trademark and the fact that the disputed domain name consists of the trademark and an additional letter. Furthermore, the evidence indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. Accordingly, 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, <afflellou.net>, be transferred to the Complainant.

Andrew F. Christie
Sole Panelist
Date: October 25, 2021