The Complainant is Groupe Adeo of Ronchin, France, represented by Coblence & Associés, France.
The Respondent is Peter Garcia, Leroy Merlin of Paris, France.
The disputed domain name <leroymerlin-fr.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2016. The Complainant filed an amendment to the Complaint on the same day. On July 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 19, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On July 19, 2016, the Complainant filed an amended Complaint.
The Center verified that the Complaint together with the amendment to the Complaint and 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 July 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 17, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2016.
The Center appointed Alexandre Nappey as the sole panelist in this matter on August 25, 2016. 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.
The Complainant is the French company Groupe Adeo.
Groupe Adeo is specialized in hardware shops and has 32 affiliate companies.
The pioneer company in Groupe Adeo is composed LEROY MERLIN, created in 1923.
LEROY MERLIN is nowadays the leading major “do-it-yourself” (DIY) retail outlet in home and lifestyle improvement market with 78,000 employees and over 400 stores located in 12 countries.
The Complainant is the owner of numerous international and European trademarks and especially:
- LEROY-MERLIN international trademark registered on July 15, 1992 under No. 591251 in classes 1, 2, 3, 4 , 5, 6, 7, 8, 9, 11, 16, 17, 19, 20, 21, 22, 25, 27, 28, 31, 37;
- LEROY-MERLIN international trademark registered on May 6, 1994 under No. 618818 in classes 9, 12, 14, 18, 24, 26, 35, 36, 37, 38, 39, 40, 41, 42;
- LEROY MERLIN European trademark registered on December 7, 2012 under No. 010843597 in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 11, 12, 14, 16, 17, 18, 19, 20, 21, 22, 24, 25, 26, 27, 28, 31, 35, 36, 37, 40, 41, 42, 44.
The Complainant is also the owner of numerous domain names comprising the element “Leroy Merlin” under several different Top-Level Domain (“TLD”) extensions, such as <leroymerlin.com>, <leroymerlin.eu>, <leroymerlin.asia>, <leroymerlin.fr>, <leroy-merlin.eu>, <leroy-merlin.asia> or <leroy-merlin.fr>.
The disputed domain name <leroymerlin-fr.com> was registered on March 7, 2016 and is not currently under use.
1. The Complainant first alleges that the disputed domain name <leroymerlin-fr.com> is very similar to its earlier marks, to the point of creating confusion.
The mark LEROY MERLIN must be considered as highly distinctive.
The domain name is composed of an exact reproduction of the Complainant’s trademarks LEROY MERLIN in the exact same order, with the geographic indication “fr” with a dash and of the TLD suffix “.com”.
Therefore, the only difference between the trademark LEROY MERLIN and the disputed domain name <leroymerlin-fr.com> lays on the addition of the TLD suffix “.com” and the geographic indication “fr” with a dash before it.
The adjunction of the TLD suffix “.com” does not matter and the addition of a dash and the geographic indication “fr” are insufficient to avoid a confusing similarity with the trademark LEROY MERLIN.
2. Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent has never registered LEROY MERLIN as a trademark and has never acquired any common law right on this wording. Hence, the Respondent has no right in and to the disputed domain name <leroymerlin-fr.com>.
The Complainant has neither authorized nor licensed the Respondent in any way to use or exploit the LEROY MERLIN trademarks, to register the disputed domain name, or to associate itself with the Complainant.
As the disputed domain name is not used, the Respondent has not made a legitimate noncommercial of fair use of the disputed domain name.
And by not using the disputed domain name, the Respondent definitely tarnishes the brand image of LEROY MERLIN trademark and of its owner in the public mind because it can believe confusingly that Groupe Adeo is not even able to use its domain name.
3. Finally, the Complainant alleges that the disputed domain namewas registered and is being used in bad faith.
- Registered in bad faith:
By registering and using LEROY MERLIN trademarks and numerous “Leroy Merlin” domain names in a large range of generic and country extensions, the Complainant has shown its rights, its goodwill and its reputation linked to the trademarks LEROY MERLIN.
Nevertheless, the Respondent has neither rights nor legitimate interests to register the disputed domain name.
Therefore, the disputed domain name <leroymerlin-fr.com> has been registered in bad faith by the Respondent perfectly knowing other rights anteriorly existed over the mark LEROY MERLIN.
Moreover, the Respondent has registered the disputed domain name with a false address and by using a “ghostmail” email address. The disputed domain name has been intentionally registered with this incorrect address and a “ghostmail” email address to avoid any disclosure of the Respondent identity, fearing any action of the Complainant.
It has been previously ruled by UDRP panels that displaying wrong contact information to hide the domain holder’s true identity is a sign of bad faith registration.
- Used in bad faith:
The disputed domain name was registered on March 7, 2016. Currently, the disputed domain name does still not resolve to a website or other online presence.
The passive holding of a domain name can constitute a bad faith use in certain conditions, such as the particular circumstances in the present case:
- The Respondent has still not started to use the disputed domain name after its registration. Moreover, there is no evidence of any intent to use the disputed domain name or of any beginning of use.
- The Respondent could not be unaware of the worldwide strong reputation of LEROY MERLIN and consequently of the trademark LEROY MERLIN.
By these elements, it is clear that the Respondent has not intended to use the disputed domain name in good faith.
The Respondent did not reply to the Complainant’s contentions.
Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:
(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.
However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.
Having consideration to the parties’ contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel’s findings on each of the above mentioned elements are the following.
The Panel is satisfied that the Complainant owns exclusive trademark rights in LEROY MERLIN, which predate the registration of the disputed domain name.
The Panel finds that the disputed domain name <leroymerlin-fr.com> is confusingly similar to the registered LEROY MERLIN trademarks owned by the Complainant.
Indeed, the disputed domain name incorporates the entirety of the Complainant’s LEROY MERLIN trademarks.
The addition of the hyphen and the letters “fr” even adds to the confusing similarity between the disputed domain name and the earlier trademark LEROY MERLIN, since this word refers to the French origin of the Complainant.
See for instance:
Areva v. Robert Fox, WIPO Case No. D2015-0223 concerning <areva-fr.com> (transfer)
“The disputed domain name comprises the Complainant’s trademark AREVA followed by a hyphen and the letters “fr.”
The main element of the disputed domain name is “areva”, which is identical to the Complainant’s trademark and trade name.
The element “-fr” should be understood by Internet users as a reference to France and, when associated with the trademark AREVA, to the origin of the Complainant.”
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark under paragraph 4(a)(i) of the Policy.
The Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy and then the burden shifts to the Respondent to demonstrate its rights or legitimate interests.
The Complainant has stated that it has not authorized, licensed or consented to the Respondent any use of its LEROY MERLIN trademark.
It results from the circumstances that the Respondent does not own any right on the mark LEROY MERLIN.
In the light of what is stated above, the Panel finds that the Complainant has made an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
As the Respondent has not provided otherwise, the Panel finds that the second element of paragraph 4(a) of the Policy is fulfilled.
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name. It provides that:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the respondent has] registered or [has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
Previous UDRP panels found that the incorporation of a well-known trademark in a domain name having no plausible explanation for doing so is in itself an indication of bad faith (see Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273 in which the Panel stated: “The incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith.”).
In this respect, considering that the Complainant’s LEROY MERLIN trademarks predate the registration of the disputed domain name <leroymerlin-fr.com>, the well-known status of these trademarks, the fact that the Respondent did not reply to the Complainant’s contentions and then did not offer any plausible explanation, the Panel infers that the Respondent had actual knowledge of the Complainant’s trademarks at the time he registered the disputed domain name.
Moreover, the Panel notes that the Respondent provided incorrect contact details when he registered the disputed domain name.
Finally, the Panel notes that the disputed domain name does not resolve to an active website.
It is common understanding among UDRP panels that passive holding does not as such prevent a finding of bad faith.
As indicated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the
Panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith.
Under all the above listed circumstances, combined with the adverse inferences drawn by the Respondent’s failure to reply to the Complaint filing, the Panel finds that the Complainant has established that the Respondent has registered and is using the disputed domain name in bad faith.
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 <leroymerlin-fr.com> be transferred to the Complainant.
Alexandre Nappey
Sole Panelist
Date: September 3, 2016