The Complainant is Groupe Adeo, France, represented by Coblence Avocats, France.
The Respondent is Luis Mendez, Mexico. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2021. On March 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 16, 2021, the Registrar transmitted by email to the Center its verification 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 March 17, 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 on March 17, 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 March 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 14, 2021. The Center appointed W. Scott Blackmer as the sole panelist in this matter on April 19, 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 a French public limited company registered in Lille and headquartered in Ronchin, France. The Complainant group operates the LEROY MERLIN hardware and home improvement retail chain founded in 1923, which currently has 400 stores in 13 countries, as well as online sales. The Complainant holds more than 175 domain names incorporating its LEROY MERLIN trademark, including those used for websites at “www.leroymerlin.com” and country and language versions for each of its principal markets, such as “www.leroymerlin.fr”, “www.leroymerlin.es”, and “www.leroymerlin.com.br”. The Complainant holds numerous registered trademarks for LEROY MERLIN as a word mark or as a figurative mark in which the name “Leroy Merlin” is the prominent textual element. These include the following: MARK JURISDICTION REGISTRATION NUMBER REGISTRATION DATE LEROY MERLIN (word) International Trademark (multiple countries) 591251 July 15, 1992 LEROY MERLIN (word) European Union 10843597 December 7, 2012 LEROY MERLIN (figurative) European Union 11008281 October 2, 2013 The record includes evidence showing that the LEROY MERLIN mark is among the 50 most valuable French trademarks. The Registrar reports that the Doman Name was registered on January 29, 2021 and is registered to the Respondent Mr. Mendez, an individual residing in Mexico, listing no organization. The Complaint attaches screenshots of the website to which the Domain Name resolved in February 2021 (the “Respondent’s website”). It was a Spanish-language website with multiple pages, displaying the Complainant’s trademarked figurative logo and advertising products similar to the Complainant’s, complete with photos, descriptions, and prices stated in Euro as on the Complainant’s Spanish website, rather than in Mexican pesos. However, the Respondent’s website displayed contact information in Culiacan, Sinaloa, Mexico (the city where the Respondent is listed in the Domain Name registration details), including a map showing a location in Culiacan. It does not appear from the Complainant’s websites that the Complainant currently operates stores in Mexico. The Complaint does not indicate what happened if visitors attempted to contact the website operator at the email address or telephone number provided on the Respondent’s website or make online purchases through the website. At the time of this Decision, the Domain Name resolves to an error message rather than an active website. 5. Parties’ Contentions A. Complainant The Complainant asserts that the Domain Name is confusingly similar to its registered LEROY MERLIN mark and that the Respondent has no permission to use the mark and no apparent rights or legitimate interests in the Domain Name, as it has been used only to create confusion with the Complainant, and thus was registered and used in bad faith. The Complainant cites Groupe Adeo v. Peter Garcia, Leroy Merlin,WIPO Case No. D2016-1451, finding that the LEROY MERLIN mark is well known and that it was implausible that the respondent had a legitimate explanation for registering a domain name incorporating it. Using such a domain name for a site copying the Complainant’s logo and selling similar products must be considered bad-faith use as well. 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 divest a respondent of a domain name, a complainant must demonstrate each of the following: (i) the 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 domain name; and (iii) the domain name has been registered and is being used in bad faith. Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. A. Identical or Confusingly Similar The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant holds registered LEROY MERLIN trademarks. The Domain Name incorporates this mark in its entirety (omitting the space between the names, which cannot be included in the DNS address system) and adds the letters “mx” that are commonly used to designate the country “Mexico”. These slight changes do not prevent a finding of confusing similarity. See id. section 1.8. As usual, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as a standard registration requirement. See id. section 1.11.2. The Panel concludes that the first Policy element is established on these facts. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the respondent may establish rights or legitimate interests in the domain name, by demonstrating any of the following: (i) before any notice to it 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) that the respondent has been commonly known by the domain name, even if it 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. Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated trademark rights, the lack of permission to use its mark, and the Respondent’s use of the Domain Name only for a website copying the Complainant’s logo and emulating the Complainant’s Spanish-language website. This suggests trademark abuse, not evidence of a bona fide commercial activity, so the burden shifts to the Respondent to produce evidence of rights or legitimate interests. The Respondent has not done so. The Panel concludes, therefore, that the Complainant prevails on the second element of the Policy. C. Registered and Used in Bad Faith The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name): “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.” The record presents a clear illustration of this example of bad faith. The Complainant’s LEROY MERLIN mark is highly distinctive, has been in circulation in retail markets in several countries and online for many years, and is clearly known to the Respondent. After registering the Domain Name at the end of January 2021, the Respondent promptly copied the Complainant’s logo on a website associated with the Domain Name, mimicking images and content from the Complainant’s Spanish website, advertising similar products to a Mexican market. It is not clear whether the intent was to sell falsely labelled products or merely to collect personal and payment details from website visitors. The Panel notes that a false website is sometimes used to lend credibility to fraud schemes and phishing emails using the associated domain name. In any event, the copycat website was falsely associated with the Complainant, featuring its trademarks on the website as well as in the Domain Name. The Panel concludes that the Complainant has established bad faith in the registration and use of the Domain Name. 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, W. Scott Blackmer
Sole Panelist
Date: April 21, 2021
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