The Complainant is Jardiland, France, represented by Fidal, France.
The Respondent is Contact Privacy Inc. Customer 0159969460, Canada / Ilio Store, Jardinand, France. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2020. On November 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 27, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 1, 2020, 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 amendment to the Complaint on December 1, 2020. The Center verified that the Complaint together with the amendment to 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 December 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2021. The Center appointed Vincent Denoyelle as the sole panelist in this matter on January 20, 2021. 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 Given that no Response was filed, the following facts are based on the submissions in the Complaint and the Annexes to the Complaint. The Complainant is a distributor of home and gardening products, headquartered in France. The Complainant is the owner of several trade marks for JARDILAND including the following: - International Trademark JARDILAND Registration No. 1268138 registered on April 14, 2015, in classes 1, 5, 7, 31, 35 and 44 designating the European Union, Switzerland, China and Morocco. The Complainant is also the owner of several domain names reflecting its trade mark including The Domain Name was registered on November 13, 2020. The Domain Name resolves to a website purporting to offer for sale a particular type of chainsaw. 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Name is confusingly similar to the JARDILAND trade mark in which the Complainant has rights. According to the Complainant, the Domain Name is a deliberate misspelling of the Complainant’s JARDILAND trade mark as it only differs from the JARDILAND trade mark by one character. The Complainant also highlights that the addition of the generic Top-Level Domain (“gTLD”) “.com” is merely a registration requirement and that it should be disregarded for the purpose of assessing confusing similarity. The Complainant asserts that there is no business or legal relationship between the Complainant and the Respondent. The Complainant also explains that the way in which the Domain Name is used does not amount to a legitimate or bona fide use and that it would support an inference that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant contends that the Respondent registered the Domain Name with the aim of taking advantage of the reputation of the trade mark JARDILAND of the Complainant. The Complainant asserts that at the time of registration of the Domain Name, the Respondent had knowledge of the Complainant and its JARDILAND trade mark. The Complainant refers to the current use of the Domain Name to point to a website purporting to sell products that are similar to those the Complainant would sell, to conclude that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a confusion with the Complainant’s trade mark, company name and domain names. In addition, the Complainant argues that the Domain Name is being used in a fraudulent manner and in a way that deceives customers. The Complainant thus considers that the Domain Name has been registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order to prevail the Complainant must substantiate that the three elements of paragraph 4(a) of the Policy have been met, namely: (i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. In the case of default by a party, as is the case here, paragraph 14(b) of the Rules makes it clear that if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. In the absence of a Response from the Respondent whereby the Respondent did not object to any of the contentions from the Complainant, the Panel will have to base its decision on the basis of the Complaint and supporting Annexes. A. Identical or Confusingly Similar In light of the evidence provided by the Complainant, the Panel is satisfied that the Complainant has substantiated that it holds valid trade mark rights in JARDILAND. The second point that has to be considered is whether the Domain Name is identical or confusingly similar to the trade mark JARDILAND in which the Complainant has rights. At the second level, the Domain Name consists of the term “jardinand”. The Panel finds that upon carrying out a side-by-side comparison of the Domain Name and the textual components of the trade mark JARDILAND, the Domain Name is confusingly similar to the Complainant’s trade mark. The only difference is that the sixth character of the nine character long JARDILAND trade mark has been replaced with the letter “n” instead of the letter “l”. The Panel finds that this one character difference between the trade mark JARDILAND and the Domain Name does not dispel the confusing similarity between the Complainant’s trade mark and the Domain Name. Then there is the addition of the gTLD “.com”. As is widely accepted, the addition of a gTLD such as “.com” is merely a technical registration requirement and as such is typically disregarded under the first element confusing similarity test. Thus, the Panel finds that the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out relevant circumstances that could demonstrate that a respondent has rights or legitimate interests in a domain name, namely: “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [the respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to [the respondent] 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) ha[s] been commonly known by the domain name, even if [the respondent] ha[s] 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 trade mark or service mark at issue.” Numerous previous panels have found under the UDRP that once a complainant makes a prima facie showing that the respondent does not have rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the showing by providing evidence of its rights or legitimate interests in the domain name. Having reviewed the Complainant’s assertions and evidence, the Panel is satisfied that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the Domain Name. The Complainant has stated that there is no business or legal relationship between the Complainant and the Respondent and that it has not authorized the Respondent to make any use of its trade mark. There is no evidence that the Respondent is commonly known by the Domain Name especially given that the Respondent chose not to respond. The Domain Name is currently used to direct to a website that purports to sell products competing with the Complainant’s products. This use of the Domain Name cannot be seen as a legitimate noncommercial or fair use of the Domain Name nor can it be seen as a bona fide offering of goods or services. The Panel is satisfied that the Respondent is using the Domain Name to exploit the goodwill of the Complainant’s trade mark, with an intent for commercial gain and to misleadingly divert consumers. Thus, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out a number of relevant non-exhaustive circumstances, which can be deemed to constitute evidence of registration and use of a domain name in bad faith, namely: (i) circumstances indicating that [the respondent has] registered or acquired [a disputed] domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark 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 trade mark 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 [the respondent’s] website or other on-line 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 described in the Complaint and the documentary evidence provided by the Complainant, the Panel finds that the Domain Name was registered in bad faith. The Domain Name is confusingly similar to the trade mark JARDILAND of the Complainant and this cannot be a coincidence. The trade mark JARDILAND of the Complainant is not a descriptive or common term and the Complainant has substantiated that at least one French court decision has found that the JARDILAND trade mark is renowned in France. The Respondent is based in France and has registered the Domain Name in order to create a website purporting to sell products of the type the Complainant distributes. In light of this, the Panel finds it inconceivable that the Respondent would not have been well aware of the Complainant and its trade mark at the time of registration of the Domain Name. The Panel finds that when registering the Domain Name, the Respondent had the Complainant’s trade mark in mind and targeted it specifically. Thus, the Panel finds that the Domain Name was registered in bad faith. As for use of the Domain Name in bad faith, given the circumstances described in the Complaint, the documentary evidence provided by the Complainant and the brief verification carried out by the Panel of the website associated with the Domain Name, the Panel is satisfied that the Domain Name is being used in bad faith. The Domain Name is being used to direct to a website purporting to sell products of the type the Complainant distributes. The Panel thus considers that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product on the Respondent’s website. In addition, the Complainant has provided evidence in the Annexes to the Complaint that a misleadingly diverted consumer who had placed an order with the Respondent through the website to which the Domain Name directs had apparently not received the product he had ordered and addressed a complaint to the Complainant. This is a further demonstration of the Respondent’s use of the Domain Name in bad faith. Further, the Complainant has provided evidence in the Annexes to the Complaint that a cease and desist letter was sent to the representative of the company indicated on the website at the Domain Name. However, this representative replied to the Complainant by email that the Respondent fraudulently used his information on the website at the Domain Name, and he is not linked to the Domain Name and corresponding website. The fact that the Respondent chose not to object to the Complainant’s assertions can only reinforce the Panel’s view that the Domain Name is being used in bad faith. Finally, this is further supported by the fact that the Respondent deliberately chose to conceal its identity by means of a privacy protection service, which, in the circumstances, is an additional indication of the Respondent’s bad faith and its intent to use the Domain Name in a way which may be abusive or otherwise detrimental to the Complainant and its rights. Thus, the Panel finds that the Domain Name is 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 Domain Name Vincent Denoyelle
Sole Panelist
Date: February 3, 2021
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