WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Rexel Developpements SAS v. Zhan Yequn

Case No. D2017-0275

1. The Parties

The Complainant is Rexel Developpements SAS of Paris, France, represented by AB INITIO, France.

The Respondent is Zhan Yequn of Anqing or Anqin, Anhui, China.

2. The Domain Name and Registrar

The disputed domain name <rexel.red> is registered with AlpNames Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2017. On February 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 14, 2017, 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.

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 the Respondent of the Complaint, and the proceedings commenced on March 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 28, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 29, 2017.

The Center appointed Johan Sjöbeck as the sole panelist in this matter on April 11, 2017. 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 has submitted evidence that it is the owner of a number of trademark registrations for REXEL including the following:

International trademark REXEL with registration number 934633, registration date March 30, 2007 for goods and services in class 9, 11, 35, 36, 37, 39 and 42.

French trademark REXEL with registration number 144084407 and registration date April 15, 2014 for goods and services in class 9, 35 and 42.

The disputed domain name <rexel.red> was registered on April 22, 2016.

5. Parties’ Contentions

A. Complainant

Rexel Group is a worldwide distributor of electrical supplies, tools, safety equipment and service provider of energy solutions. Through its distribution networks for professional customers in the industrial, residential and commercial fields, the Complainant provides innovative solutions and electrical equipment to improve comfort, performance and energy efficiency. Rexel Deloppement SAS is a direct subsidiary of the Rexel head company, which is listed on the French stock exchange. Rexel Deloppement SAS is the owner of the REXEL trademarks that form the basis for this Complaint. The Complainant is present in 35 countries with over 2,100 branches and 28,000 employees. The Group is composed of subsidiaries worldwide including the Chinese subsidiary Rexel China Management Co. Ltd.

REXEL, the Complainant’s registered trademark and company name, is arbitrary and has no meaning as such. REXEL is the main element of identification of the Complainant. The disputed domain name <rexel.red> reproduces the entire trademark REXEL and the distinctive part of the company name Rexel Developpement SAS. The Respondent’s use of the disputed domain name suggests that the website belongs to the Complainant. The addition of the generic Top-Level Domain (“gTLD”) suffix “.red” does not have the capacity to distinguish the disputed domain name from the Complainant’s prior rights.

The Respondent is neither affiliated with the Complainant nor has the Respondent been authorized to register and use the Complainant’s trademark REXEL in a domain name. According to searches made in the relevant official trademark databases, the Complainant has not found any evidence indicating that the Respondent is an owner of any trademark similar to the disputed domain name.

Considering that the term “rexel” is a distinctive and arbitrary term, the Respondent’s registration of the disputed domain name cannot be a coincidence. Previously, the Respondent’s website, to which the disputed domain name resolved, contained explicit pornographic material. Currently, the Respondent’s website allows Internet users to download movies illegally. The Respondent’s website also displays hyperlinks to other websites with pornographic content. Since the disputed domain name incorporates the Complainant’s trademark in its entirety, the Complainant is concerned as the content is damaging to the reputation of the Complainant’s trademark.

The Respondent registered and uses the disputed domain name <rexel.red> only because it is similar to the Complainant’s older trademark REXEL. Therefore, as a result of user confusion, the Respondent’s website will generate additional traffic so that the Respondent receives commercial gain from affiliate payments. The Respondent has registered and is using the disputed domain name in bad faith. Given the Complainant’s trademark’s reputation, it is inconceivable that the Respondent would have registered the disputed domain name without knowledge of the Complainant’s REXEL trademark. A search for the term “rexel” on Baidu, a famous Chinese search engine, provides numerous direct links to the Complainant and the Complainant’s Chinese website “www.rexel.com.cn”.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

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

(ii) that the Respondent has no rights or legitimate interests in 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

According to the submitted evidence, the Complainant is the owner of the registered trademark REXEL. The disputed domain name <rexel.red> comprises the Complainant’s trademark in its entirety. The difference between the disputed domain name and the trademark is the addition of the gTLD suffix “.red”. However, it is standard practice to disregard the Top-Level suffix under the confusing similarity test, except where the applicable Top-Level suffix may itself form part of the relevant trademark, which is not the case here. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.

Having the above in mind, the Panel concludes that the disputed domain name <rexel.red> is identical or confusingly similar to the Complainant’s trademark REXEL and that the Complainant has proved the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show, at least prima facie, that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(i) that it has used or made 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 prior to any notice of the dispute; or

(ii) that it is commonly known by the disputed domain name, even if it has not acquired any trademark or service mark rights; or

(iii) that it is 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 trademark or service mark at issue.

The Complainant has not licensed or otherwise consented to the Respondent’s use of the trademark REXEL in connection with the disputed domain name <rexel.red>, which is identical or confusingly similar to the Complainant’s trademark.

The Complainant has argued and submitted evidence indicating that the disputed domain name <rexel.red> has been used by the Respondent to publish pornographic material and to distribute possibly pirated or illegal versions of a number of films and TV-series.

Although given the opportunity, the Respondent has not rebutted the Complainant’s prima facie case. It has not submitted any evidence indicating that the Respondent is the owner of any trademark rights or that the Respondent is commonly known by the disputed domain name <rexel.red>. Furthermore, there is no evidence in the case file indicating that the Respondent is 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 Complainant’s trademark.

The Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy or otherwise, any rights or legitimate interests in respect of the disputed domain name <rexel.red>. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proven the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include:

(i) circumstances indicating that the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name; or

(ii) circumstances indicating that the disputed domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the disputed domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

In this case, the Panel notes that the Complainant’s older trademark REXEL is a distinctive term which is featured globally throughout the Internet and that the Complainant employs over 28,000 people in 35 countries worldwide, including China where the Respondent resides. Given the circumstances in the case, the Panel finds it unlikely to believe that the Respondent did not have the Complainant in mind when registering and using the disputed domain name <rexel.red> and concludes that the Respondent knew or should have known of the existence of the Complainant’s older trademark.

The Complainant has submitted evidence indicating that the disputed domain name, which is identical or confusingly similar to the Complainant’s registered trademark REXEL, has been used by the Respondent for a commercial website with pornographic content and to provide hyperlinks to a number of other websites with pornographic content. A number of Panels deciding cases under the Policy have held that pornographic content on a Respondent’s website may constitute a significant indicator of bad faith. See for example ABB Asea Brown Boveri Ltd. v. Quicknet, WIPO Case No. D2003-0215 (“the use of ABB as part of a Domain Name offering pornographic material certainly tarnishes the Complainant’s existing marks, which is also evidence of bad faith”).

In addition, the evidence submitted by the Complainant indicates that the Respondent is using the disputed domain name to distribute a number of possibly pirated and illegal films and TV-series.

Thus, the evidence in the case before the Panel indicates that the disputed domain name <rexel.red> has intentionally been registered and used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website.

There is no evidence in the case file that refutes the Complainant’s submissions.

The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the disputed domain name <rexel.red> has been registered and 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 <rexel.red> be transferred to the Complainant.

Johan Sjöbeck
Sole Panelist
Date: April 24, 2017