Complainants are Rexel Développement SAS, Rexel Holdings USA Corp, and Rexel, Inc. of Shelton, Connecticut, United States of America (“U.S.”) represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, U.S.
Respondent is CCS of Richmond, Virginia, U.S. 2. The Domain Names and Registrar
The disputed domain names , , , , are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2012. On July 19, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 20, 2012, the Registrar transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 14, 2012.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on August 23, 2012. 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
Complainants are collectively comprised of Rexel Développement SAS, Rexel Holdings USA Corp, and Rexel, Inc. of Shelton, Connecticut, U.S. (hereinafter referred to as the “Complainants”). Complainants were founded in 1967 and today operate in 37 countries providing electrical solutions and equipment through its distribution networks for customers in the industrial, residential and commercial sectors. In 2011, Complainants recorded sales of EUR 12.7 billion. Specifically in the U.S., Complainants maintain 220 physical locations.
Complainants own approximately 180 registrations in at least 50 countries or geographic regions worldwide for trademarks that consist of or contain the mark REXEL (the “REXEL Trademark”), the oldest of which is REXEL, French trademark No. 93 467 100, dated May 5, 1993, first used on May, 5, 1993. Complainants own the following U.S. registrations:
REXEL, Registration No. 1,942,008, registered December 19, 1995 for “financial, monetary (cash) and real estate management services”;
REXEL, Registration No. 2,124,121, registered December 23, 1997 for “wholesale distributorship services in the field of electrical supplies and lighting fixtures”;
REXEL, Registration No. 2,127,573, registered January 6, 1998 for “wholesale distributorship services in the field of electrical supplies and lighting fixtures”;
REXEL, Registration No. 3,231,188, registered April 17, 2007 for “online wholesale distributorship services in the field of datacom equipment, electrical supplies and lighting fixtures”;
REXEL, Registration No. 3,656,343 registered July 21, 2009 for “electric apparatuses and instruments”;
REXEL Registration No 3,656,344 registered July 21, 2009 for “electric apparatuses and instruments”;
REXEL Registration No 3,656,345 registered July 21, 2009 for “electric apparatuses and instruments”; and
REXEL Registration No 3,656,346 registered July 21, 2009 for “electric apparatuses and instruments”.
Each of the disputed domain names was registered on September 10, 2009 and expires on September 10, 2012. 5. Parties’ Contentions A. Complainants
With respect to paragraph 4(a)(i) of the Policy, Complainants allege that:
Complainants own approximately 180 registrations in at least 50 countries or geographic regions worldwide for trademarks that consist of or contain the mark REXEL. Specifically, Complainants own eight (8) registrations in the U.S., the apparent location of Respondent, for the REXEL mark in connection with an assortment of goods and services, including the above-referenced registration, U.S. Reg. No. 1,942,008, that has been registered since December 19, 1995.
Each of the disputed domain names reproduces the distinctive and dominant portion of Complainants’ trademark, namely, REXEL, in combination with generic or highly descriptive wording. The disputed domain names are identical or at least confusingly similar to Complainants’ REXEL trademark. Complainants contend that “[t]he fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy.” Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249 (quoting Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903).
With respect to paragraph 4(a)(ii) of the Policy, Complainants allege that:
Respondent has no rights or legitimate interests in respect of the disputed domain names.
Complainants have never assigned, granted, licensed, sold, transferred or in any way authorized Respondent to register or use the REXEL trademark in any manner.
Respondent has neither used, nor made any demonstrable preparations to use, any of the disputed domain names in connection with a bona fide offering of goods or services. Rather, Respondent is using the disputed domain names in connection with monetized parking pages that provide links to competitive goods or services, including advertisements for electricians and other electrical services.
Given that Complainants’ established use of the REXEL trademarks and the existence of registrations in the U.S. and abroad significantly predate the registration of the disputed domain names, it is exceedingly unlikely that Respondent is commonly known by said mark, REXEL, or the disputed domain names. Therefore, Respondent cannot establish rights or legitimate interests pursuant to paragraph 4(c)(ii) of the Policy.
Additionally, Respondent is not making a legitimate noncommercial or fair use of any of the disputed domain names due to the disputed domain names resolving to monetized parking pages. Moreover, Respondent does not qualify as a reseller of Complainants’ goods or services because Respondent does not actually sell Complainants’ goods or services, nor do the websites disclose any relationship (if any) with Complainants.
With respect to paragraph 4(a)(iii) of the Policy, Complainants allege that:
Respondent appears to be a general contractor that offers competitive electrical services having located a company listing for Colonial Contracting Solutions LLC with a listed address and contact details that match the identical information provided in the WhoIs information of each of the disputed domain names. Consequently, Respondent is a competitor of Complainants and is using the REXEL trademark without permission in an attempt to promote or directly offer its services, which establishes both bad faith registration and bad faith use. The offering of competitive goods or services via the parking pages strongly suggests that Respondent’s motive in both registering and using the disputed domain names was and is to disrupt Complainants’ activities by diverting or attempting to attract Internet users either to Respondent’s services for potential gain or merely away from Complainants, which is a disruption of its business activities.
Moreover, a further indication of bad faith rests in the fact that Complainants’ REXEL trademark predates Respondent’s acquisition of the disputed domain names by nearly 45 years and, therefore, Respondent knew or should have known of the REXEL trademark. Thus, “it is inconceivable that Respondent chose the contested domain name without knowledge of Complainant’s activities and the name and trademark under which Complainant is doing business.” Pancil LLC v. Domain Deluxe,WIPO Case No. D2003-1035. B. Respondent
Respondent did not respond to Complainants’ contentions. Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations in the Complaint, and may draw appropriate inferences. Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; See paragraph 5(e) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.”). 6. Discussion and Findings
Complainants must prove that: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainants have rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. (Policy, paragraph 4(a).) A. Identical or Confusingly Similar
Given Complainants’ long-standing registrations and extensive use of the REXEL trademark both worldwide and in the U.S., the Panel finds that Complainants have trademark rights in the REXEL mark. The Panel also finds that the disputed domain names are nearly identical to or confusingly similar to Complainants’ REXEL mark. The disputed domain names incorporate Complainants’ entire trademark and differs from Complainants’ registered REXEL mark only by adding legally immaterial generic or highly descriptive wording. It is well-established that the addition of generic or highly descriptive wording is “typically […] regarded as insufficient to prevent threshold Internet user confusion.” WIPO Overview of WIPO Panel Views on the Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.
Therefore, the Panel finds that the disputed domain names are identical or confusingly similar to a trademark in which Complainants have rights. B. Rights or Legitimate Interests
In order for Respondent to demonstrate rights or legitimate interests in the disputed domain names, it must show:
(i) before any notice to [Respondent] of the dispute, [Respondent’s] use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) [Respondent] (as an individual, business, or other organization) has been commonly known by the disputed domain names, even if [Respondent] has acquired no trademark or service mark rights; or
(iii) [Respondent] is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
With respect to 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use either of the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services.
With respect to 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by either of the disputed domain names. Further, Complainants have never licensed or otherwise permitted Respondent to use its REXEL trademark or to apply for any domain name incorporating the mark. In fact, there is no known relationship between Complainants and Respondent.
With respect to 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of either of the disputed domain names and has not used the disputed domain names, or a name corresponding to the disputed domain names, in connection with a bona fide offering of goods or services.
It is a complainant’s burden to prove that a respondent lacks rights or legitimate interests in a disputed domain name. National Construction Rentals, Inc. v. T, Inc.,WIPO Case No. D2009-0147. Because it is difficult to prove a negative assertion, the threshold is low. A complainant need only make a prima facie showing on this element, at which point the burden shifts to respondent to present evidence that it has some rights or legitimate interests in the domain name at issue. See WIPO Overview 2.0, paragraph 2.1. The ultimate burden of proof, however, remains with Complainants. Id. Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141. The Panel finds that the above facts establish a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain names. Moreover, Respondent has not rebutted Complainants’ prima facie showing.
The Panel accordingly finds for Complainants under the second element of the Policy. C. Registered and Used in Bad Faith
Complainants’ allegations of bad faith are not contested. Moreover, this Panel finds it highly unlikely that Respondent was unaware of Complainants’ trademark rights when it registered the disputed domain names on September 9, 2010, when the REXEL mark has been in use for more than 45 years and the mark has been registered in the U.S. for more than 15 years.
Under the Policy, it is evidence of bad faith that, “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” Paragraph 4(b)(iv) of the Policy.
Respondent is using each of the disputed domain names to resolve to a monetized parking page that advertises competitive goods or services. It is well-settled that the adoption of well-known trademarks without permission, particularly when used to advertise competitive goods or services, is evidence of bad faith registration and use. Rolex Watch U.S.A., Inc. v. Vadim Krivitsky,WIPO Case No. D2008-0396; See also E, Inc. v. Ult. Search, Inc., WIPO Case No. D2001-1319 (“registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.”).
Accordingly, the Panel finds that the disputed domain names were registered and are being 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 names, , , , , and be transferred to Complainants.
Lawrence K. Nodine
Sole Panelist
Dated: September 10, 2012
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