The Complainant is Mr Bricolage of La Chapelle Saint Mesmin, France, represented by Casalonga Avocats, France.
The Respondent is WhoisGuard, Inc. of Panama / Alexandre Noffy of Paris, France. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2018. On August 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 9, 2018, 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 August 14, 2018 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 amended Complaint on August 17, 2018.
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 August 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 10, 2018.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on September 19, 2018. 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 language of the Registration Agreement is English. Therefore, in line with paragraph 11 of the Policy, the language of the proceeding is English. 4. Factual Background
The Complainant is Mr Bricolage, which was founded in 1980 and which is one of the largest French retailers in Do-it-yourself (“DIY”) with 755 stores.
The Complainant is the owner of numerous trademarks registered in France and abroad (thereafter the “MR BRICOLAGE trademarks”) such as:
- The word European Union trademark MR. BRICOLAGE, no. 004782744 registered on February 14, 2007 in class 35;
- The semi-figurative French trademark MR. BRICOLAGE, no. 3748740 registered on June 24, 2010 in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 11, 16, 17, 19, 20, 21, 22, 24, 25, 27, 31, 35, 37, 42 and 44;
- The semi-figurative International trademark MR. BRICOLAGE, no. 521533 registered on February 22, 1988 in classes 2, 6, 7, 8 and 19;
- The semi-figurative International trademark MR. BRICOLAGE, no. 1052151 registered on July 29, 2010 in class 35.
The Complainant also registered the following domain names:
- registered on May 27, 1997;
- registered on December 2, 1997;
- registered on April 13, 2000;
- registered on September 9, 2002;
- registered on December 8, 2003;
- registered on June 5, 2008.
The disputed domain name was registered by the Respondent on June 27, 2018 with the Registrar, and redirected at some point of time to the Complainant’s official website. 5. Parties’ Contentions A. Complainant
In accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complainant relies are set out below.
First of all, the Complainant argues that the disputed domain name is identical or confusingly similar to the MR. BRICOLAGE trademarks, since it strictly reproduces the MR. BRICOLAGE mark in its entirety.
The Complainant considers that the generic Top-Level Domain (“gTLD”) “.online” and the hyphen are insufficient to give any distinctive character to the disputed domain name and thus cannot avoid confusion.
Secondly, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since the Complainant sent a cease-and-desist letter to the Registry RADIX and obtained the suspension of the disputed domain name, but failed to obtain the contact details of the owner of the disputed domain name, which the Registrar refused to provide.
The Complainant also contends that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name since, before the suspension of the disputed domain name by the Registry RADIX, the Respondent was using the disputed domain name to redirect the Internet users to the Complainant’s official website or to a parking page, to impersonate the Complainant.
The Complainant finally underlines that it has never authorized, permitted nor granted a license to the Respondent to register or use the MR. BRICOLAGE trademarks or the disputed domain name.
Thirdly, the Complainant considers that the disputed domain name was registered and is being used in bad faith, since the Respondent could not ignore the strong reputation of the MR. BRICOLAGE trademark considering the facts that the Complainant’s trademarks have been commonly used and registered several decades before the registration of the disputed domain name and that they are widely known by the public as referring to a major brand of DIY in France and abroad.
Also, according to the Complainant, the use in bad faith of the disputed domain name results from the use of the wording “mr bricolage”, which is identical to the Complainant trademarks, particularly in email addresses linked to the disputed domain name that have been fraudulently used for ordering products in the name of the Complainant and make suppliers believe that the Complainant was ordering such products, in order to direct or misdirect shipments and payments.
On the basis of the above, the Complainant requests the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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. A. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
First of all, the Panel finds that the Complainant has provided evidence that it has rights on the MR. BRICOLAGE trademarks.
Then, the Panel notices that the disputed domain name is composed of (i) the distinctive element “mr-bricolage”, which is the exact reproduction of the MR. BRICOLAGE trademarks, (ii) a hyphen between “mr” and “bricolage” and (iii) the gTLD “.online”.
As pointed out by the Complainant, the applicable gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark.
The Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the UDRP (See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”)).
Furthermore, the Panel concurs with the opinion of several prior UDRP panels which have held that the fact that a domain name wholly incorporates a complainant’s registered trademark may be sufficient to establish confusing similarity for purposes of the Policy (see, e.g., BNP Paribas v. Ronan Laster.,WIPO Case No. D2017-2167; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000‑1525; Bayerische Motoren Werke AG v. ,WIPO Case No. D2002-0615; RapidShare AG, Christian Schmid v. InvisibleR, Domain Admin,WIPO Case No. D2010-1059; Hoffmann‑La Roche Inc., Roche Products Limited v. Vladimir Ulyanov,WIPO Case No. D2011-1474; Swarovski Aktiengesellschaft v. mei xudong,WIPO Case No. D2013-0150).
Regarding the disputed domain name , the Panel finds that the addition of the hyphen between “mr” and “bricolage” to the MR. BRICOLAGE trademark does not exclude confusing similarity. Where the MR. BRICOLAGE trademarks are recognizable within the disputed domain name, the “addition of punctuation such as hyphen within a mark do not constitute a substantive change or obviate confusion” (see, e.g., National City Corporation v. MH Networks LLC, WIPO Case No. D2004-0128; Confederation Nationale du Credit Mutuel v. Claitre Bonnat,WIPO Case No. D2016-0204).
Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain name is confusingly similar to the Complainant’s trademarks. B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.
These circumstances are:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
According to prior UDRP panel decisions, it is sufficient that the Complainant shows prima facie that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the Respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Indeed, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name 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. As such, where a complainant makes out prima facie that the respondent lacks rights or legitimate interests, 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 section 2.1 of the WIPO Overview 3.0).
According to the Panel, the Complainant has shown prima facie that the Respondent is not affiliated with the Complainant and has not been permitted, licensed or otherwise authorized by the Complainant to use its MR. BRICOLAGE trademarks, and that the Respondent is not currently and has never been known under the name Mr Bricolage.
For all these reasons, the Complainant has established prima facie that the Respondent lacks rights or legitimate interests in the disputed domain name, therefore the burden of production has been shifted to the Respondent. However, the Respondent has not provided any response to the Complainant’s contentions.
Therefore, the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the disputed domain name has been registered and is being used in bad faith.
Thus, paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 respondent’s website or location or of a product or service on the respondent’s website or location.
First of all, the Panel finds that the Complainant’s trademarks were registered long before the Respondent registered the disputed domain name.
Then, according to the Panel, the Complainant has shown that the Respondent knew, or should have known,
that its registration would be identical or confusingly similar to the Complainant’s mark, since the MR. BRICOLAGE trademarks are well-known in France and abroad.
Furthermore, the Panel considers it obvious that the Respondent registered the disputed domain name in bad faith, since it used email addresses linked to the disputed domain name to order products in the name of the Complainant by falsifying the identity and signature of the sales director of the Complainant on emails and invoices.
Finally, the Panel notices that the Respondent did not answer to the Complaint in order to demonstrate that it registered and uses the disputed domain name in good faith.
Therefore, the Panel considers that bad faith of the Respondent is shown by the fact that it impersonated the Complainant by creating a likelihood of confusion with the Complainant’s mark as to the source of the Respondent’s email addresses, for the purpose of disrupting the business of the Complainant.
Therefore, in view of all the circumstances of this case, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith according to the Policy, paragraph 4(a)(iii) and 4(b). 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.
Christiane Féral-Schuhl
Sole Panelist
Date: October 3, 2018
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