Decision for dispute CAC-UDRP-107439

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant is, inter alia, a registered owner of the following trademarks containing the word element "LAGARDERE":

(i) LAGARDERE (word), International Trademark, registration date 18 October 2000, registration no. 751186, registered for goods and services in classes 09, 16, 35, 38, 41, and 42;

(ii) LAGARDERE (word), EU Trademark, registration date 21 November 2008, trademark no. 006529747, registered for goods and services in classes 05, 07, 10, 12, 27, 30, 32 and 37;

besides other national trademarks consisting of or containing the "MAGIMIX" wording.

(Collectively referred to as "Complainant's trademarks").

The Complainant has also registered several domain names under generic Top-Level Domains ("gTLD") and country-code Top-Level Domains ("ccTLD") containing the term „LAGARDERE" such as <lagardere.com> and others.

The Complainant, LAGARDERE SA, is an international group with operations in more than 45 countries worldwide. It employs more than 33,000 people and generated revenue of €8,942 million in 2024. The Group is structured around two main business lines:

a) Lagardère Publishing is the world’s third-largest book publisher for the general public and educational markets, and the leader in France.

b) Lagardère Travel Retail is the world’s third-largest travel retail merchant and number two in airports, with operations in three business segments: Travel Essentials, Duty Free & Fashion, and Dining.

The disputed domain name was registered on 1 December 2024 and is held by the Respondent.

The disputed domain name website (i.e. website available under internet address containing the disputed domain name) resolves to the Complainant’s official website www.lagardere.com.

Moreover, an MX record for the disputed domain name specifies the mail server responsible for accepting e-mail messages on behalf of the disputed domain name. This indicates that the disputed domain name can be used for e-mail purposes.

The Complainant seeks transfer of the disputed domain name to the Complainant.

COMPLAINANT:

A) CONFUSING SIMILARITY

The Complainant asserts that:

• The disputed domain name incorporates the word element “LAGARDERE” in its entirety, which is identical to the Complainant’s registered trademarks, thereby creating confusing similarity.
• The addition of the generic term “GLOBAL” does not distinguish the disputed domain name from the Complainant’s trademarks or eliminate confusing similarity.
• The generic Top-Level Domain (“gTLD”) suffix “.com” is a technical requirement of domain registration and is not considered when assessing confusing similarity.

Accordingly, the Complainant submits that the disputed domain name is clearly confusingly similar to its trademarks.

1. B) NO RIGHTS OR LEGITIMATE INTERESTS

The Complainant submits that:

• The Respondent is not commonly known by the disputed domain name, but rather by the name “Oxana Gavrilov.”
• The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its trademarks in any way, nor is there any connection or affiliation between the parties.
• The disputed domain name has not been used for any legitimate or fair purpose, as it merely redirects users to the Complainant’s official webpage for its ELLE brand (https://www.lagardere.com/societes-et-marques/elle-international/).

Therefore, the Complainant argues that the Respondent is neither making a bona fide offering of goods or services nor engaging in legitimate non-commercial or fair use of the disputed domain name.

1. C) BAD FAITH REGISTRATION AND USE

The Complainant contends that:

• The Complainant’s trademark rights predate the registration of the disputed domain name, and the trademarks in question are well known in the relevant business sectors.
• The Respondent must have been aware of the Complainant’s trademarks at the time of registering the disputed domain name.
• Since the disputed domain name redirects to an official page of the Complainant, the Respondent evidently had knowledge of the Complainant’s rights, which is indicative of bad faith.
• At no point has the disputed domain name been used for bona fide offerings of goods or services.
• Furthermore, the disputed domain name is configured with MX records, suggesting that it could be used for email communications. The Complainant argues that any email sent from this domain could only be used for purposes in bad faith, given the circumstances.

RESPONDENT

The Respondent did not submit a response to the Complaint.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

A) RIGHTS

Since the disputed domain name and the Complainant’s trademarks are not identical, the central issue before the Panel is whether the domain name—comprising the term “LAGARDERE” accompanied by the suffix “GLOBAL”—is confusingly similar to the Complainant’s trademarks.

The threshold test for confusing similarity under the UDRP requires a comparison between the trademark and the domain name to determine the likelihood of confusion among Internet users. To meet this test, it is generally sufficient if the relevant trademark is readily recognizable within the domain name. The addition of common, dictionary, generic, or otherwise descriptive terms to a trademark in a domain name is typically insufficient to prevent a finding of confusing similarity. This test is normally based on a straightforward visual and aural comparison between the trademark and the domain name.

Applying these principles, the Panel finds that the inclusion of the dominant “LAGARDERE” element—which is itself highly distinctive—in the disputed domain name is sufficient to establish confusing similarity with the Complainant’s trademarks. The addition of the non-distinctive term “GLOBAL” does not dispel the association between the disputed domain name and the Complainant’s trademarks; on the contrary, it may even reinforce a misleading impression that the domain name is used by the Complainant as part of its global or worldwide presence.

For the sake of completeness, the Panel notes that the top-level domain suffix (i.e., “.com”) is disregarded in the assessment of confusing similarity, as it is a technical requirement for registration.

Therefore, since the Panel has decided that there is confusing similarity in this case, it also concludes that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B) NO RIGHTS OR LEGITIMATE INTERESTS

The Complainant’s assertions that (i) the Respondent is not commonly known by the disputed domain name and (ii) is neither affiliated with nor authorized by the Complainant are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

Based on these facts and in the absence of any response from the Respondent, the Panel finds that merely redirecting the disputed domain name to the Complainant’s official website does not constitute use in connection with a bona fide offering of goods or services, as required under the UDRP.

Accordingly, the burden of proof shifts to the Respondent to demonstrate, with concrete evidence, that it has rights or legitimate interests in the disputed domain name. The Respondent, however, has not submitted any information or evidence to support the existence of such rights or legitimate interests in accordance with paragraph 4(a)(ii) of the Policy.

C) BAD FAITH

Panels have held that passively linking to the Complainant's site, without more, does not automatically mean bad faith. In fact, it might even support an argument that the Respondent (i.e. disputed domain name owner) wasn't trying to profit improperly from the Complainant’s trademarks.

However, this issue is nuanced, and the following factors are relevant when assessing bad faith:

a) If the Respondent uses the disputed domain name in a manner that confuses consumers—for example, by creating a false impression of affiliation with the Complainant—even mere redirection can amount to bad faith.

b) If the Respondent is holding the domain name to block the trademark owner from registering it, or with the intention to sell it to the trademark owner for profit, this may also constitute bad faith, irrespective of the current use.

c) If the disputed domain name is inherently misleading—such as by employing typosquatting techniques or by combining the trademark with descriptive or suggestive terms (e.g., “official-brandname.com”)—this may also be evidence of bad faith, even if the site only redirects to the Complainant’s page.

In this case, the Panel finds that at least the elements outlined in (a) and (c) are present.

The redirection of the disputed domain name to the Complainant’s website could confuse consumers into believing that the disputed domain name is legitimately connected with or authorized by the Complainant. Should the domain at any point resolve to original or unauthorized content, Internet users may also be led to believe—wrongly—that such content is endorsed by the Complainant.

Furthermore, the use of the term “GLOBAL” in the disputed domain name reinforces a misleading impression that the domain name is used by the Complainant as part of its global (or worldwide) business activities.

Additionally, given the distinctive nature of the Complainant’s trademarks and the widespread reputation of its business, it is reasonable to infer that the Respondent—who is a resident of France—registered the domain name with knowledge of the Complainant’s trademark rights, which predate the registration of the disputed domain name.

Finally, the disputed domain name is configured with MX records, which could enable use for email communications. The Panel considers it highly unlikely that the Respondent could use the disputed domain name for legitimate email purposes, given the overall circumstances of this case.

For all these reasons, the Panel concludes that the disputed domain name was registered and is being used in bad faith, within the meaning of Paragraph 4(a)(iii) of the Policy.