The Complainants are Rexel Developpement SAS of Paris, France (the “First Complainant”), Rexel USA INC. of Dallas, Texas, United States of America (the “Second Complainant”), represented by AB INITIO, France.
The Respondent is Contact Privacy Inc. Customer 1243690668 of Toronto, Canada / Teri L Nixon of Los Alamos, New Mexico, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name is registered with Google LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2019. On February 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 27, 2019, the Registrar transmitted by email to the Center its verification response:
(a) confirming it is the Registrar for the disputed domain name;
(b) disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint
(c) confirming the Respondent registered the disputed domain name on January 4, 2019;
(d) confirming the language of the registration agreement is English;
(e) acknowledging the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name.
The Center sent an email communication to the Complainant on the same date 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 the same date.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Policy, 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 March 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 5, 2019.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on April 15, 2019. 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 two Complainants are members of the Rexel Group. The First Complainant is the holder of the group’s intellectual property. The Second Complainant is the member of the group operating in the United States.
The Rexel Group is a worldwide distributor of electrical supplies, tools, safety equipment and energy solutions. Members of the Group have 2,100 branches in 35 countries. They employ between them some 28,000 employees. In 2015, the Group had some EUR 13.5 billion in sales.
In addition to the corporate relationship, the Second Complainant uses the Group’s trademarks under licence from the First Complainant.
The Complaint includes evidence that the First Complainant has registered numerous trademarks in many countries around the world. Some are for the mark REXEL alone; others are for composite marks including REXEL and a device element. The First Complainant’s registered trademarks include:
(a) European Union Trademark No. 005404876, REXEL, for a wide range of goods and services in International Classes 9, 11, 35, 36, 37, 42. This trademark was filed on October 20, 2006 and registered on June 10, 2009;
(b) United States Trademark No 3656343, REXEL, for a wide range of services in International Classes 35, 36, 37, 39 and 42. The application for this trademark was filed on March 28, 2007 and it was registered on July 21, 2009.
For the purposes of this administrative proceeding, it is not necessary to list the numerous other registrations in many other countries.
The First Complainant is also the holder of the domain name and the Second Complainant is the holder of the domain name . Both domain names are in use to promote the Group’s products and services.
The disputed domain name was registered on January 4, 2019. So far as the record shows, it has not resolved to an active website or otherwise been used. 5. Discussion and Findings
No response has been filed. The Complaint has been sent, however, to the Respondent at the physical and electronic coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Respondent has been given a fair opportunity to present his or its case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
As the Second Complainant is the licensee of the First Complainant’s trademarks in the United States, it is appropriate for the Second Complainant to be joined in the proceeding. A. Identical or Confusingly Similar
The first element that the Complainants must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainants’ trademark rights.
There are two parts to this inquiry: the Complainants must demonstrate that they have rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainants have proven ownership of the numerous registered trademarks referred to in section 4 above including, in particular, the two registrations particularized.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. See e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.11. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
The disputed domain name differs from the Complainants’ trademark by the addition of “us” as a suffix to “rexel” and the gTLD, “.com”.
As the disputed domain name contains the whole of the Complainants’ trademark in precisely the same alphanumeric configuration, it is confusingly similar to that trademark. Further, as the Complainants contend, the addition of the suffix “us” could readily be understood to suggest the disputed domain name is the domain name of the United States branch of “Rexel”.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests
The second requirement the Complainants must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] 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 [disputed] 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 [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainants. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
The Complainants state that they have not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with them in any way.
The disputed domain name is plainly not derived from the Respondent’s name. From trademark searches undertaken for the Complainants, the Respondent does not appear to hold any trademarks for the disputed domain name.
It is also noteworthy that the term “Rexel” is an invented or coined word; it does not have any meaning or, so far as the Panel is aware, any geographical significance.
These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The basis on which the Respondent has adopted the disputed domain name, therefore, calls for explanation or justification. The Respondent, however, has not sought to rebut that prima facie case or advance any claimed entitlement. Accordingly, the Panel finds the Complainants have established the second requirement under the Policy also. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainants must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
The Complainants point to their longstanding use of their trademark, its distinctive character as an invented or coined word and the lack of any connection between the Respondent and the name “Rexel” as a basis for inferring registration in bad faith and, following Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, use in bad faith. In particular, the Complainants allege that the Respondent adopted the disputed domain name because of its similarity to their trademark and so to suggest the Respondent is, or is associated with, the United States “arm” of the Rexel Group.
As already noted, the Respondent has not sought to explain how he or she adopted this coined term nor what he or she proposes to do with it.
As the term “rexel” in particular is an invented or coined term and not descriptive, it appears that the Respondent has adopted the disputed domain name because of its trademark significance. In these circumstances, where the Respondent has not sought to claim, let alone establish, that he or she has rights or legitimate interests in the disputed domain name, therefore, the Panel finds the Respondent has registered and used it in bad faith.
Accordingly, the Complainants have established all three requirements under the Policy. 6. 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 First Complainant.
Warwick A. Rothnie
Sole Panelist
Date: April 29, 2019
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