WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Kingfisher France SAS v. Domains by Proxy Inc. / Reinhard Herrmann Case No. D2009-1197 1. The Parties
Complainant is Kingfisher France SAS of Templemars, France, represented by Cabinet Plasseraud, France.
Respondents are Domains by Proxy Inc. of Scottsdale, Arizona, United States of America, and Reinhard Herrmann of Ockenheim, Germany. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2009. On September 11, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On September 11, 2009, the Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 14, 2009, providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 21, 2009. 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(a) and 4(a), the Center formally notified Respondents of the Complaint, and the proceeding commenced on September 23, 2009. This proceeding was suspended from October 16, 2009 to January 15, 2010 upon Complainant's request, the expectation being that the dispute would be resolved amicably. As no settlement was reached, Complainant requested that the proceeding be re-instituted. On January 5, 2010, the Center re-instituted the proceeding. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2010. Respondents did not submit any response. Accordingly, the Center notified Respondents' default on January 12, 2010. The Center appointed Assen Alexiev as the sole panelist in this matter on January 21, 2010. 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. Complainant has requested the consolidation of the present proceeding with the proceeding underWIPO Case No. D2009-1167. In this regard, the Panel notes that the two proceedings involve the same parties and the same Panelist was appointed to decide both disputes. The Policy, paragraph 4(f) provides that the petition for consolidation of the proceedings shall be made to the first Administrative Panel appointed to hear a pending dispute between the parties. Complainant made its consolidation request not in the earlierWIPO Case No. D2009-1167, but in the present later case. Taking into account the above and that a Panel Decision has already been issued inWIPO Case No. D2009-1167, and in exercise of its powers under Policy, paragraph 4(f), the Panel finds that the request for consolidation cannot be granted. 4. Factual Background “Brico Depot” is the trade name of more than one hundred stores run by Complainant's subsidiary and affiliates, providing DIY and house works tools and materials. Complainant is the owner of the following trademarks: - BRICO DEPÔT, registered in France with reg. No.93485546 of September 29, 1993; - BRICO DEPOT, registered in France with reg. No.3439634 of July 7, 2006; - BRICO DEPOT, International registration No.IR612974 of December 30, 1993; - BRICO DEPOT, International registration No. IR914334 of December 21, 2006; - BRICO DEPÔT, International registration No.IR826852 of April 28, 2004; and - BRICO DEPOT, International registration No.IR831331 of March 4, 2004. 5. Parties' Contentions A. Complainant Complainant contends that the Domain Names are identical to Complainant's BRICO DEPOT trademarks. In Complainant's submission, Respondents have no rights or legitimate interests in respect of the Domain Names, since they have no relevant prior rights, trademarks or trade names. Further, Complainant contends that the Domain Names were registered and are being used in bad faith. The Domain Names are linked to parking websites which contain many pay-per-click links and key words related to Complainant's business activities and to the goods and services covered by Complainant's trademarks ― do-it-yourself goods and services. The Domain Names are used for commercial purposes and exploit the reputation of Complainant and its trademarks. The Domain Names provide access to web pages selling goods which are identical to or competing with the goods for which Complainant's trademarks are registered, which is evidence of Respondents' knowledge of Complainant's rights. Respondents have used the Domain Names to profit from the attraction of traffic and the generation of pay-per-click revenues from advertising links to external websites, including websites of some of Complainant's competitors. Further, the websites at the Domain Names invite offers for its purchase by interested parties, which is evidence that its registration was made for speculation purposes. Lastly, one of Respondents – Reinhard Herrmann, has already been found to have acted in bad faith in other proceedings related to domain names. Complainant requests the transfer of the Domain Names. B. Respondent Respondents did not reply to Complainant's contentions. 6. Discussion and Findings Pursuant to Policy, paragraph 4(a), Complainant must prove each of the following to justify the transfer of the Domain Names: (i) That the Domain Names registered by Respondents are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) That Respondents have no rights or legitimate interests in respect of the Domain Names; and (iii) That Respondents have registered and are using the Domain Names in bad faith. By Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…” In this case, the Center has employed the required measures to achieve actual notice of the Complaint to both Respondents, in compliance with Rules, paragraph 2(a), and Respondents were given a fair opportunity to present their case. In the event of a default, under Rules, paragraph (14)(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.” As stated by the Panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques,WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent's control. Respondent's failure to present any such evidence or to deny complainant's allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the panel in Viacom International Inc. v. Ir Suryani,WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.” In this administrative proceeding, Respondents have chosen not to submit formal Response on the substance of the dispute. Their default entitles the Panel to conclude that Respondents have no arguments or evidence to rebut the assertions of Complainant. The Panel has to take his decision on the basis of the statements and documents before it and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar Complainant has provided evidence and has thus established its rights in the BRICO DEPOT word trademarks, registered in various jurisdictions around the world. It is a common practice under the Policy to disregard gTLDs such as the “.com” and “.net” sections of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the Domain Names are respectively their “bricodépôt” and “bricodepôt” elements, both of which are to a high degree confusingly similar, visually and phonetically, to Complainant's BRICO DEPOT trademarks. On these grounds, the Panel finds that the Domain Names are confusingly similar to trademarks in which Complainant has rights. B. Rights or Legitimate Interests Complainant claims that Respondents have no rights or legitimate interests in the Domain Names, since they have no relevant prior rights, trademarks or trade names. The Panel finds on the record that, Complainant establishes a prima facie case under Policy, paragraph 4(a)(ii). It is well established that once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the showing by providing evidence to the contrary. Respondents have chosen not to present to the Panel any allegations or documents in their defense despite the burden under the Rules, paragraph 5(b)(i) and 5(b)(ix) or the consequences that a panel may extract from the fact of a default (Rules, paragraph 14). If Respondents had any justification for registering or using the Domain Names, they could have provided it. In particular, Respondents have failed to contend that any of the circumstances described in Policy, paragraph 4(c) — or any other circumstance — is present in their favor. The only information available about Respondents is the WhoIs information, provided by the Registrar, and the content of the websites, associated to the Domain Names. The WhoIs information contains no evidence of rights or legitimate interests of either of Respondents in the Domain Names. Respondents make no claims for having rights or legitimate interests in respect of the Domain Names, while, as submitted by Complainant and not denied by Respondents, the websites associated to them contain pay-per-click links to subjects related to Complainant's activities and trademarks, and to Complainant's competitors. In the Panel's view, the above circumstances do not have the appearance of a legitimate activity giving rise to rights or legitimate interests of either of Respondents in respect of the Domain Names within the meaning of the Policy, paragraph 4(a)(ii). Therefore, the Panel finds that Complainant prevails on this point. C. Registered and Used in Bad Faith For the purposes of Policy, 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 holder 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 the holder's documented out-of-pocket costs directly related to the domain name; or (ii) the holder 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 holder has engaged in a pattern of such conduct; or (iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's 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 your website or location or of a product or service on the holder's website or location. In the present case, the Domain Names are confusingly similar to Complainant's BRICO DEPOT trademarks, and Respondents have been found to have no rights or legitimate interests in them, while positively being aware of Complainant and of the commercial value of its BRICO DEPOT trademarks. Nevertheless, Respondents appear to have used the Domain Names to associate them to websites containing pay-per-click links to subjects related to Complainant's activities and trademarks, and to Complainant's competitors. Such conduct illegitimately exploits with a commercial purpose the reputation of Complainant and its trademarks. Taking into account all above, the Panel is prepared to accept that the Domain Names have been registered and used by Respondents in an attempt for commercial gain to attract Internet users to the Domain Names by creating a false association with Complainant and its trademarks. These actions amount to bad faith registration and use of the Domain Names under the Policy. 7. Decision For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names Assen Alexiev Dated: February 3, 2010
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