The Complainant is Groupe Adeo, France, represented by Coblence Avocats, France.
The Respondent is Name Redacted1. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2021. On February 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 16, 2021, 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 February 19, 2021 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 February 19, 2021 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 February 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 24, 2021. The Center appointed Benjamin Fontaine as the sole panelist in this matter on April 9, 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 The Complainant is Groupe Adeo, which operates in particular a network of hundreds of large “Do-It-Yourself” (“DIY”) stores under the brand LEROY MERLIN, in France and in many other countries. This trade mark was first used nearly a century ago. As a basis for this Complaint, the Complainant relies in particular on the European Union Trade Mark LEROY MERLIN (word) No. 10843597, filed on April 27, 2012, and registered on December 7, 2012. In support of its activities, the Complainant also owns and uses a vast portfolio of domain names, including the domain name The disputed domain name was registered on April 17, 2020. The identity of the Respondent was disclosed by the Registrar in the course of this UDRP proceeding. However, the name and address provided for when registering the disputed domain name correspond to those of an employee of the Complainant, whose identity was therefore usurped by the real registrant. The disputed domain name was used as of June 2020 to create an email address and to exchange emails with a supplier of the Complainant. The emails sent by the Respondent bore the signature of the actual Director of supplies of the Complainant, mentioned the company name of a subsidiary of the Complainant, “SA Leroy Merlin France”, as well as its full corporate address and other contact details. It is worth noting that the Respondent exchanged many emails with the third party, a Spanish supplier, who was used to exchanging emails and orders with the Director of supplies of the Complainant. In order to justify the use of a new email address, the Respondent indicated in a first communication that using new email addresses was required as a result of a technical failure. Also, a fake order form bearing all the distinctive signs and contact details of the Complainant was filled-in by the Respondent and sent to this supplier in the course of these exchanges. 5. Parties’ Contentions A. Complainant The arguments put forward by the Complainant can be summarized as follows: On the first element of the Policy, the Complainant indicates that the sole difference between the trade mark LEROY MERLIN and the disputed domain name On the second element of the Policy, the Complainant argues on the one side that the Respondent has no rights over the disputed domain name, and has not been in relationship with it. On the other side, it claims that the Respondent has no legitimate interest in the disputed domain name: the Respondent only uses it to create a likelihood of confusion with the Complainant’s own activities. On the third element of the Policy, the Complainant indicates that the disputed domain name was registered, and is being used, in bad faith. It was registered in bad faith as the Respondent knew of the prior earlier rights of the Complainant over LEROY MERLIN, and had them in mind for its configuration. The disputed domain name is used in bad faith, as it serves phishing purposes, with the impersonation of the identity of one of its employees and the use of its trade mark. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings: (i) the disputed 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 disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant, under the first requirement of paragraph 4(a) of the Policy, needs to establish that the disputed domain name is identical or confusingly similar to a trade mark or a service mark in which it has rights. It is generally accepted that the test of confusing similarity is reasonably straightforward and functions primarily as a standing requirement. As indicated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trade mark, 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 UDRP standing”. This test is satisfied here, as the disputed domain name reproduces, identically and in first position, the trade mark LEROY MERLIN of the Complainant. This trade mark is immediately perceptible, as it is placed in first position. Besides, the addition of the term “supply”, separated with a hyphen, does not prevent a finding of confusing similarity between the disputed domain name and the trade mark LEROY MERLIN. Therefore, the Panel finds that the first element of the Policy is satisfied. B. Rights or Legitimate Interests Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. In this case, the Complainant has argued that the Respondent is not commonly known by the disputed domain name, and has not been authorized by the Complainant to register and use the disputed domain name. What is more, the use of the disputed domain name in connection with a fraudulent phishing scheme does not qualify as fair use. Accordingly and absent specific allegations by the Respondent, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith In order to prevail under the third element of paragraph 4(a) of the Policy, the Complainant must demonstrate that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists a number of circumstances, which, without limitation, are deemed to be 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 trade mark 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. The Respondent has indeed registered and used the disputed domain name in bad faith. The finding of bad faith registration results from the very configuration of the disputed domain name The finding of bad faith use results from the operation of a fraudulent phishing scheme, through the creation and operation of an email which impersonated the identity of an employee of the Complainant, as well as it trade mark, company name, corporate address, etc. Unfortunately, the Respondent succeeded in establishing contact with a supplier of the Complainant, which is not surprising as the emails sent by the Respondent to third parties had the appearance of real communications emanating from the Complainant. Diverting Internet users for fraudulent purposes of this nature amounts to use in bad faith. See WIPO Overview 3.0, section 3.4. Accordingly, the Panel finds that the third element set out in paragraph 4(a) of the Policy is also satisfied. 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 Benjamin Fontaine 1 The Respondent appears to have used the name of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST‑12785241 Attn. Bradescourgente.net / Name Redacted,WIPO Case No. D2009-1788.
Sole Panelist
Date: April 23, 2021
Full & Egal Universal Law Academy