The Complainant is Groupe Adeo of Ronchin, France, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Gruppo Cipa Srl Gruppo Cipa Srl, Gruppo Cipa Srl of Rome, Italy. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 17, 2016. On August 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 18, 2016, 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 August 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 12, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 13, 2016.
The Center appointed Lorenz Ehrler as the sole panelist in this matter on September 27, 2016. 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 is a group of companies which has been in the home improvement and gardening business for decades. First incorporated in France in 1923, it expanded internationally since 1983. According to the Complainant's indications, it employs 93'000 staff in 12 countries with about 500 home improvement stores. In Italy, the Complainant is present with 47 shops, including six in Rome, where the Respondent resides.
The Complainant owns several trademarks LEROY MERLIN, mainly in France and in the European Union. These are registered for a wide range of products and services related to home improvement and gardening. It also possesses a considerable number of domain names, among which and resolve to the group's main website. The Complainant's trademarks and domain names were registered long before the disputed domain name, which was registered on April 26, 2016.
Currently, the disputed domain name is not in active use. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its LEROY MERLIN trademarks. It stresses the fact that the disputed domain name entirely comprises the aforementioned distinctive trademark.
Furthermore, the Complainant states that the Respondent is not affiliated or related to it in any way, and that it did not authorize the Respondent to use the trademark in question. The Complainant also states that the Respondent is not generally known by the disputed domain name and that it has not acquired any trademark rights in it.
Lastly, the Complainant contends that the Respondent "uses" the disputed domain name in bad faith, even though it does not resolve to any website. 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 that:
(i) The disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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. A. Identical or Confusingly Similar
The French and EU trademarks put forward by the Complainant demonstrate that the Complainant has rights in relevant trademarks.
Under the UDRP, the requirement under paragraph 4(a) of the Policy requires the disputed domain name to be identical or confusingly similar to the Complainant's trademarks. There is no requirement of similarity of goods and/or services (e.g., AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc. / Corporation Texas v. Guillermo Lozada, Jr.,WIPO Case No. D2005-0485).
The existence of confusing similarity within the meaning of paragraph 4(a) of the Policy is not in doubt in the present case, given that the main element in the disputed domain name, i.e. "leroymerlin", is identical with the Complainant's very distinctive trademark LEROY MERLIN. Indeed, it is obvious that there is a high risk that Internet users, when confronted with the disputed domain name, would believe the disputed domain name belongs to or is associated with the Complainant. The incorporation of a trademark in its entirety is typically sufficient to establish that a disputed domain name is identical or confusingly similar to a trademark (RapidShare AG, Christian Schmid v. InvisibleR, Domain Admin,WIPO Case No. D2010-1059). The other elements of the disputed domain name, i.e. the absence of a space between "Leroy" and "Merlin", are not sufficient to avoid confusing similarity.
As far as the gTLD ".cloud" is concerned, this element has a technical function and therefore is typically not taken into account when assessing the issue of identity or confusing similarity. B. Rights or Legitimate Interests
The Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant has shown that it owns LEROY MERLIN trademarks, and it has explicitly contested having granted the Respondent any rights to use its trademarks.
LEROY MERLIN is a well-known trademark, at least in the countries where the group is established, which includes Italy. UDRP panels found in previous decisions that in the absence of any license or permission from the Complainant to use such widely-known trademarks, no bona fide or legitimate use of a disputed domain name may reasonably be claimed (Lego Juris A/S v. DomainPark Ltd, David Smith, A Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138).
Furthermore, by not submitting a response to the Complaint, the Respondent failed to invoke any circumstance that might demonstrate, pursuant to paragraph 4(c) of the Policy, that it holds any rights or legitimate interests in the disputed domain name (Ahead Software AG. v. Leduc Jean,WIPO Case No. D2004-0323; see also, Nintendo of America, Inc. v. Tasc, Inc. and Ken Lewis,WIPO Case No. D2000-1563 (finding that respondent's default was sufficient to conclude that it had no rights or legitimate interests in the disputed domain names). In its pre-litigious correspondence with the Complainant, the Respondent pretexted an important project which required use of the disputed domain name. However, when asked by the Complainant to provide detailed information, it did not respond.
The Panel finds that the Complainant has made an unrebutted prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, demonstrate that the disputed domain name has been registered and is being used in bad faith.
The undisputed prima facie evidence establishes that the Respondent is not affiliated with the Complainant, and has no license or other authorization to use the Complainant's trademark or name.
The Respondent registered the disputed domain name well after the Complainant's mark was in use and became well-known. The Panel finds that the Respondent should have known about the Complainant's trademark and business when registering the disputed domain name. It is highly improbable to this Panel that given the reputation and fame of the LEROY MERLIN trademark, the Respondent was unaware of it at the time of the registration of the disputed domain name.
The Complainant rightly contends that the passive holding of a disputed domain name can constitute a factor in finding bad faith registration and use pursuant to paragraph 4(a)(iii). Previous panels indeed held that bad faith can be found where respondent makes no use of the disputed domain name, if there are no indications that respondent could have registered and used the disputed domain name for any non-infringing purpose (Alitalia Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260). The Respondent has provided no evidence whatsoever of any actual or contemplated good faith registration or use by it of the disputed domain name.
Furthermore, the fact that the Respondent appears to have registered a series of domain names incorporating well-known trademarks (e.g. , , , , etc.) corroborates the assumption that the Respondent has registered and uses the disputed domain name in bad faith.
The Respondent has not submitted any evidence to rebut the Complainant's claims and assertions. Its passive holding of the disputed domain name, together with the similar holding of a large number of other domain names incorporating the trademarks of others constitutes evidence of use in bad faith within the meaning of that expression as adopted in Telstra Corporation Limited v. Nuclear Marshmellows,WIPO Case No. D2000-0003, Westfield v. Hobbs (supra) and many others. Taken together with the finding of absence of legitimate rights or interests and registration in bad faith above, bad faith use by such passive holding is found.
The Complainant therefore has established registration and use of the disputed domain name 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 be transferred to the Complainant.
Lorenz Ehrler
Sole Panelist
Date: September 30, 2016
Full & Egal Universal Law Academy