The Complainant is Etablissementen Franz Colruyt N.V., Belgium, represented by Prioux Culot + Partners, Belgium.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America / Rehman Khan, Pakistan.
The disputed domain name <colruyt-be.com> (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2019. On September 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 17, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 18, 2019 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 amendment to the Complaint on September 18, 2019.
The Center verified that the Complaint together with the amendment to 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 September 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 9, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 10, 2019.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on October 22, 2019. 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 operates one of Belgium’s largest supermarket chains and is the owner of various COLRUYT trade mark registrations, including inter alia (the “Trade Marks”):
- European Union device mark COLRUYT, registered on October 7, 2010 under No. 008545774;
- European Union word mark COLRUYT, registered on October 7, 2011 under No. 009856733.
The Domain Name was registered on August 4, 2019 and resolves to a website which displays the COLRUYT device mark and invites users to participate in a short survey on shopping at the Complainant’s stores. A first series of screens offers the visitor the possibility to participate in a short, basic survey to win a Colruyt voucher, displaying the text: “Hartelijk gefeliciteerd! U bent gestelecteerd om deel te nemen aan onze korte enquête om een gratis €150 Colruyt kortingsbon te krijgen! We hebben nog maar 232 Kortingsbonnen beschikbaar, dus schiet op” (English translation: “Congratulations! You were selected to participate in our short survey to win a 150 € Colruyt voucher! We have 232 vouchers left, so be quick!”). Once the survey is completed the user is requested to share the news and like it on Facebook with the following message: “Stap 1 – Deel deze pagina door op de knop “DELEN” te klikken en typ “Bedankt voor mijn kortingsbon” in het opmerkingen veld! Stap 2 – Klik vind ik leuk” (English translation: “Step 1 – Share this page by clicking on the “SHARE” button and type “Thanks for my voucher” in the field! Step 2 – Click on like”).
According to the Complainant, the Domain Name is confusingly similar with the Trade Marks as it consists of a combination of the COLRUYT mark and the suffix “be” referring to Belgium.
The Complainant submits that to its best knowledge, it is the only organization using the name COLRUYT in the course of trade, which is the name of the company’s founding family, which is the leading shareholder of the company. The Complainant does not grant any licenses or authorization to third parties to use the Trade Marks outside its group of companies. Accordingly, the Complainant states, the Respondent cannot possibly have any right in the Domain Name. In addition, the Complainant contends, the Respondent does not have any legitimate interest in using the Domain Name, as it is not engaged in any legitimate business which would require using the Trade Marks. Instead, the Complainant puts forward, the Domain Name is merely used as an attempt to impersonate the Complainant for phishing purposes since, when clicking on the Facebook buttons on the website, the user is redirected to a fake Facebook login page, apparently to obtain the user’s Facebook login details. According to the Complainant, the Respondent intentionally attempts to attract for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Trade Marks as to the source of the Respondent’s web site, is created by using (i) the COLRUYT word mark in the Domain Name and (ii) the COLRUYT device mark on the website to which the Domain Name resolves.
The Complainant points out that use of the Domain Name for phishing is considered evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
The Complainant has shown that it has registered rights in the Trade Marks. The Domain Name is confusingly similar to the Trade Marks as it incorporates the mark COLRUYT, of which the Trade Marks consist, in its entirety. The addition of a hyphen and the letters “be”, which refers to Belgium, does not avoid a finding of confusing similarity between the Domain Name and the Trade Marks (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 1.8; see also, inter alia, TPI Holdings, Inc. v. Carmen Armengol, WIPO Case No. D2009-0361, and F. Hoffmann-La Roche AG v. John Mercier, WIPO Case No. D2018-0980). The generic Top-Level Domain (“gTLD”) “.com” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 3.0, section 1.11).
Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Marks in which the Complainant has rights.
Under paragraph 4(c) of the Policy, the second element a complainant has to prove is that a respondent lacks rights or legitimate interests in a domain name. This may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. In order to satisfy the second element, the Complainant has to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name. If the Complainant succeeds in doing so, the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Domain Name. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element (see WIPO Overview 3.0, section 2.1).
Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant’s consent to use the Trade Marks as part of the Domain Name, is not commonly known by the Domain Name and has not acquired trade mark rights in the Domain Name. The Respondent’s use of the Domain Name for a website containing the COLRUYT device mark and a survey on shopping at the Complainant’s stores, thereby suggesting an affiliation with the Complainant which does not exist, is not a use for a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.
In view of the above, the Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name.
Based on the information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain Name, the Respondent was or should have been aware of the Trade Marks, since the Respondent’s registration of the Domain Name occurred almost nine years after the registration of the earliest of the Trade Marks, while a simple trade mark register search, or even an Internet search, prior to registration of the Domain Name in its name would have informed the Respondent of the existence of the Trade Marks. In addition, the mark COLRUYT is the name of the family, which established the Complainant’s business and is not a word or term that a person would accidentally think of when registering a domain name.
With regard to bad faith use, the Panel finds that the following circumstances taken together are indications of bad faith use of the Domain Name: (i) the probability that the Respondent was aware or should have been aware of the Complainant’s rights in the Trade Marks; (ii) the use of a privacy shield upon the initial registration of the Domain Name; (iii) the lack of a formal Response of the Respondent. Together with the use of the Trade Marks as part of the Domain Name and on the website to which the Domain Name resolves, as well as the use of the website for a survey on shopping at the Complainant’s stores, thereby suggesting an affiliation with the Complainant which does not exist, these circumstances warrant a finding of bad faith use of the Domain Name.
Therefore, the Panel concludes that the Domain Name has been registered and is being used 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 <colruyt-be.com> be transferred to the Complainant.
Wolter Wefers Bettink
Sole Panelist
Date: November 5, 2019