The Complainant is Rexel Developpement SAS of Paris, France, represented by AB INITIO, France.
The Respondent is Contact Privacy Inc. Customer 0151381151 of Toronto, Canada / Jacky Durand of Paris, France. 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 23, 2018. On August 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 23, 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 31, 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 September 3, 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 September 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 26, 2018.
The Center appointed Martine Dehaut as the sole panelist in this matter on October 1, 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. 4. Factual Background
As established by the Complainant, Rexel Developpement is a French company, part of the multinational Rexel Group, one of the world leader in the distribution of electrical products, tools and equipment and provider of innovative energy solutions to improve the comfort, security and energy performance of installations, infrastructure and building. The Complainant asserts that Rexel Group is the preferred partner of all professionals in the electrical chain from electricians to large industrial accounts and equipment manufacturers.
Rexel Group is operating in 35 countries through a network of 2,100 branches and employs 28,000 people.
The Complainant is the owner of numerous Trademark for REXEL throughout the world in connection with electrical goods and services, among which the following are mentioned as basis of the Complaint.
- French Trademark REXEL No 144084407 registered on April 15, 2014 in connection with electrical goods and services in classes 9, 35, 42
- International Trademark REXEL No 934633 registered on March 30, 2007 and duly renewed in connection with a large number of goods and services in classes 9, 11, 35, 36, 37, 39, and 42, the protection of which has been granted in a large number of countries.
The Complainant is also the owner of the domain names and registered in the name of Rexel Developpement, respectively on August 3, 1996 and May 26, 2018.
Accordingly, the Complainant is operating business under the name REXEL which is used as Trademark, as company name and as domain names.
The disputed domain name was registered on April 27, 2018, through a privacy shield service.
The disputed domain name does not resolve to an active website. As evidenced by the Complainant, it has however been used as a part of email addresses to contact the Complainant’s suppliers for proposing a collaboration and requesting payment in advance. These emails were sent under the name of J. A. with the function of Purchase Manager of Rexel and mentioned the accurate address and contact details of the Complainant.
Moreover, the Complainant indicates that the name of J. A., falsely associated to the Rexel group, was also mentioned as signatory of other emails sent from email addresses @ incorporating the Complainant’s Trademark. It is observed by the Complainant that the domain name was registered with the contact details indicated on the WhoIs extract corresponding to the disputed domain name.
As an illustration, below is the content of an email sent to a supplier of the Complainant:
“We are the French Company Rexel Groupe France, which has its registered office located 13 boulevard du Fort de Vaux 75017 Paris…A global leader and the reference in the Electrical and electronics retail…… We would like to establish a sincere and lasting collaboration with any company evolving in the fields of activities mentioned above…”
J[…] A[…]
Responsable achat
In other emails sent under the same name and details, a line of credit with a deferment of payment of 30 days was requested from the Complainant’s suppliers. 5. Parties’ Contentions A. Complainant
First, the Complainant contends that the disputed domain name is confusingly similar to its prior Trademark, company name and domain names. In that respect, the Complainant points out that the association of the word “groupe” with the Trademark REXEL is reinforcing the risk of confusion as it clearly refers to the group of companies to which Rexel Developpement is related.
Second, the Complainant alleges that the Respondent does not have rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that the Respondent neither is affiliated with the Complainant nor has been authorized to register and use the Complainant’s Trademark REXEL or any domain name incorporating its Trademark.
Third, the Complainant asserts that the disputed Domain name has been registered and used in bad faith.
According to the Complainant, the registration and use of the disputed domain name cannot be a coincidence considering the distinctiveness and the reputation of the Trademark REXEL.
Moreover, the fact that several emails were sent to some suppliers of Rexel Group from email addresses incorporating the disputed domain name under the signatory of an individual claiming to be the Purchase manager of Rexel for the purpose of misleading the emails recipients, demonstrates the Respondent’s bad faith by registering and using the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name incorporates in its entirety the Complainant’s trademark REXEL. Consequently, it is obviously confusingly similar with that Trademark.
The addition of the term “groupe” which is merely descriptive to designate an economic or legal entity formed of parent and affiliated companies does not prevent a finding of confusing similarity between the complainant’s Trademarks and the disputed domain name.
Consequently, the Panel considers that the requirement of paragraph 4(a) of the Policy is satisfied. B. Rights or Legitimate Interests
Following the second condition of paragraph 4(a) of the Policy, the Complainant has to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Following standard practice, the Complainant asserted not to have granted to the Respondent any right to register and use its Trademark REXEL nor to grant any authorization to register and use the disputed domain name. Besides, as alleged by the Complainant, the Respondent is in no way affiliated with the Rexel Group.
Furthermore, the disputed domain name does not resolve to any active website and appears to have been registered and used only for conducting unfair activities as detailed below.
Absent of any defense on this point by the Respondent, the Panel considers that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name
Considering the foregoing, the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances, which without of limitation, are deemed evidence of the registration and use of a domain name in bad faith. These are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trademark or service 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
Given the circumstances detailed by the Complainant, it is evident that the disputed domain name, which incorporates the Complainant’s trademark and reproduces, almost identically the Complainant’s domain names and , was registered and used for the purpose of conducting fraudulent activities by taking profit of the reputation of the Complainant’s Trademark. Indeed, the disputed domain name has been used to contact the Complainant’s suppliers by usurping the Complainant’s identity. It is evident that the purpose of the Respondent was to create confusion as to the source of the emails sent for proposing a collaboration and obtaining payment facilities for the delivery of products supposed to be ordered by the Complainant. Besides, the association of the Trademark REXEL with the term “groupe” reinforces the confusion as the disputed domain name might be regarded in concerned professionals’ mind as originating from / linked to the Complainant, all the more so as it reproduces the Complainant’s domain name in an almost identical way.
Accordingly, the Panel considers that the Complainant satisfies the conditions set forth in paragraph 4(a) (iii) 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 be transferred to the Complainant.
Martine Dehaut
Sole Panelist
Date: October 12, 2018
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