WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

RooFoods Ltd v. Domain Privacy Service FBO Registrant, The Endurance International Group, Inc. / Mustapha Ait Oumejjoud

Case No. D2021-0571

1. The Parties

The Complainant is RooFoods Ltd, United Kingdom, represented by CMS Cameron McKenna Nabarro Olswang LLP, United Kingdom.

The Respondent is Domain Privacy Service FBO Registrant, The Endurance International Group, Inc., United States of America / Mustapha Ait Oumejjoud, France.

2. The Domain Name and Registrar

The disputed domain name <deliveroo-france.com> (hereafter referred to as the “Disputed Domain Name”) is registered with FastDomain, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2021. On February 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 24, 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 February 25, 2021providing 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 March 2, 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 March 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2021.

The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on April 6, 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, RooFoods Ltd, operates a food delivery service under the name Deliveroo. Deliveroo works with over 100,000 partner restaurants and over 60,000 self-employed riders to deliver food to customers in 12 countries, including in France where the Respondent is located. The Complainant operates the website “www.deliveroo.co.uk” and owns various domain names such as <deliveroo.com> and <deliveroo.fr>.

The Complainant is the holder of various trademarks including the following:

- DELIVEROO, United Kingdom word mark registration No. UK00003150368, registered on May 13, 2016 in classes 9, 35, 39 and 43;

- DELIVEROO, European Union word mark registration No. 015750763, registered on January 10, 2017 in classes 9, 35, 39 and 43.

The Disputed Domain Name has been registered on June 10, 2020 by the Respondent. The Disputed Domain Name referred to a website mentioning the Complainant’s trademarks, providing information about the job as delivery rider at Deliveroo and offering Internet users to register as a Deliveroo delivery rider.

5. Parties’ Contentions

A. Complainant

The Complainant considers the Disputed Domain Name to be confusingly similar to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use and, on the contrary, is making use of the Disputed Domain Name for illegitimate and intentionally misleading activities. In the Complainant’s view, these activities create a risk of harm to consumers and cause harm to the Complainant by giving visitors to the website linked to the Disputed Domain Name the false impression that it is authorised by or licensed by the Complainant. Also, according to the Complainant, the Respondent is in no way affiliated with the Complainant. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. According to the Complainant, the Respondent registered the Disputed Domain Name with full knowledge of the Complainant and its business and the use the Disputed Domain Name leads to a high likelihood of consumer confusion.

B. Respondent

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

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are administrative, the standard of proof is the balance of probabilities.

Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, 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.

The Panel will therefore deal with each of these requirements.

A. Identical or Confusingly Similar

To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there are trademarks in which it has rights. The Complainant’s DELIVEROO trademarks have been registered and used in various countries in connection to the Complainant’s food delivery business.

The Disputed Domain Name incorporates the Complainant’s trademark in its entirety, simply adding a hyphen and the geographical term “france”. Where the relevant trademark is recognizable within the Disputed Domain Name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

Additionally, it is well established that the generic Top-Level Domain (“gTLD”), here “.com”, may be disregarded when considering whether the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights.

In light of the above, the Panel considers the Disputed Domain Name to be confusingly similar to the Complainant’s DELIVEROO trademark.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see section 2.1 of the WIPO Overview 3.0).

The Panel notes that the Respondent has not apparently been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights. According to the information provided by the Registrar, the Respondent is “Mustapha Ait Oumejjoud”. The Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant.

Where a domain name consists of a trademark plus an additional geographic term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner (see section 2.5.1 of the WIPO Overview 3.0). The Disputed Domain Name incorporates the Complainant’s DELIVEROO trademark and adds the geographical term “france”, which can be easily linked to the Complainant or its affiliate Deliveroo France SAS. Therefore, the Panel finds that the Disputed Domain Name carries a risk of implied affiliation with the Complainant and cannot constitute fair use.

Beyond looking at the domain name and the nature of any additional terms appended to it, UDRP panels assess whether the overall facts and circumstances of the case, including the absence of a response, support a fair use or not (see sections 2.5.2 and 2.5.3 of the WIPO Overview 3.0).

The Panel considers that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. As evidenced by the Complainant, the Disputed Domain Name referred to a website:

- bearing the Complainant’s trademark, and using design elements which are confusingly similar to the Complainant’s corporate image, such as the specific green color used on the Complainant’s websites and marketing material;

- including misleading statements such as a reference to the Complainant’s intellectual property rights on its “Terms and Conditions” page, giving the false impression that the Respondent is either owner of the DELIVEROO trademark or an authorised licensee;

- inviting paid advertising at various locations on the website;

- offering Internet users to register as a Deliveroo delivery rider so as to generate revenue through the Complainant’s rider referral scheme. According to the evidence provided by the Complainant, the website linked to the Disputed Domain Name contained links which redirected to the Complainant’s official website and which included a referral code. A user who signs up as a rider using this link will generate a referral payment to the person linked to the referral code.

In these circumstances, the Panel considers that the Respondent has been trading on the Complainant’s reputation and goodwill for commercial gain by offering paid advertising and by trying to abuse the Complainant’s rider referral scheme. Evidently, such use cannot be considered a legitimate noncommercial or fair use of the Disputed Domain Name.

The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.

Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see section 4.2 of the WIPO Overview 3.0 and, for example, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).

Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s mark 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 the present case, the Panel finds that it is inconceivable that the Respondent was unaware of the Complainant and its trademark rights when it registered the Disputed Domain Name.

The Complainant provides evidence of various trademarks registered several years before the registration of the Disputed Domain Name, including in France where the Respondent is located. Previous UDRP panels have also confirmed the distinctiveness and international reputation of the Complainant’s mark (see RooFoods Ltd v. Majd Makdessi, WIPO Case No. DME2019-0013; Roofoods Limited v. Wang Liqun, WIPO Case No. D2017-1761).

The Disputed Domain Name and related website includes the Complainant’s distinctive trademark in its entirety. The website linked to the Disputed Domain Name directly refers to the Complainant and even uses the specific green color which is part of the Complainant’s corporate image. As a result, the Panel finds that it is apparent that the Respondent had the Complainant in mind when registering the Disputed Domain Name.

In the Panel’s view, the Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006‑0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of a telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks).

As mentioned above, the website linked to the Disputed Domain Name offers paid advertising and the Complainant’s evidence suggests it has also been designed to generate revenue through the Complainant’s rider referral scheme. In the Panel’s view, this indicates that the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark.

By failing to respond to the Complaint, the Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate.

Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last element of the Policy.

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 <deliveroo-france.com> be transferred to the Complainant.

Flip Jan Claude Petillion
Sole Panelist
Date: April 20, 2021