The Complainant is Groupe Adeo, France, represented by Coblence & Associés, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Ramon Ruiz, Venezuela (Bolivarian Republic of). 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 16, 2021. On March 16, 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 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 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 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 20, 2021. The Center appointed W. Scott Blackmer as the sole panelist in this matter on April 23, 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 25, 2021 by the Respondent Mr. Mendez, an individual residing in Venezuela, 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, using a green color scheme similar to the one found on the Complainant’s websites and advertising hardware, home improvement, and gardening products similar to the Complainant’s, with prices stated in EUR (as on the Complainant’s European websites). The names “Leroy Merlon” and “Don Merlon” appeared on the website, along with the name Rafael “Don” Merlón and a photo of a man accompanied by text introducing himself as someone who spends his “tiempos libres” (free time) writing about construction, decorating, gardening, and hardware. At the time of this Decision, the Domain Name did not resolve to an active website. 5. Parties’ Contentious 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. The Complainant argues that its mark is distinctive and well known internationally, and the Respondent has used a confusingly similar Domain Name to attract Internet users for commercial gain to a website with a misleadingly similar appearance, advertising similar products. This must be considered bad faith under the Policy. 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 is very similar, substituting the penultimate letter “i” with an “o” and omitting the space between the names, which cannot be included in the DNS address system. These slight changes do not prevent a finding of confusing similarity. See id. WIPO Overview 3.0, section 1.8. As usual, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as a standard registration requirement. See. WIPO Overview 3.0 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. 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 reflects this bad faith conduct. The Complainant’s LEROY MERLIN mark is highly distinctive and has been in circulation in retail markets in several countries and online for many years. The Domain Name does not correspond to a dictionary word or phrase. It differs from the trademark by a single letter and was used to misdirect visitors for commercial gain to the Respondent’s former website. There, the prospects for confusion were compounded, as the Respondent’s website presented a similar appearance to the Complainant’s websites and offered similar goods. The Panel considers it unlikely that these similarities were coincidental, as there are other indicia of deception. The Domain Name registration gives the address of the Respondent Mr. Ruiz as a location in Argentina, but the Respondent’s website did not identify a physical location for the advertised “Leroy Merlon” or “Don Merlon” business, and there is no supporting evidence for the existence of such a business in Argentina or elsewhere. The prices of advertised goods were given in Euro, as on the Complainant’s Spanish website, not Argentine pesos. On this record, it appears that the Respondent’s website was used to solicit commercial sales after cultivating an initial impression of affiliation with the Complainant. The Respondent has not come forward to offer another explanation for what appears to be abusive typosquatting. 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
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 emulating the Complainant’s Spanish-language website in appearance and product offerings. 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.
Sole Panelist
Date: April 30, 2021
Full & Egal Universal Law Academy