Complainant is Groupe Adeo, France, represented by Coblence Avocats, France.
Respondent is 伍誉(wu yu), China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2021. On October 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 11, 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 Complainant on October 13, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint in English on October 13, 2021.
On October 13, 2021, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. Complainant confirmed the request that English be the language of the proceeding on October 15, 2021. Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint in English and Chinese, and the proceedings commenced on October 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 17, 2021.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on November 29, 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 BackgroundComplainant is GROUPE ADEO, a French company specializing in “Do-It-Yourself” retail outlet stores for the home and lifestyle improvement market, with 21,000 employees in France and 400 stores located worldwide. Complainant owns numerous registered trademarks with the LEROY MERLIN mark worldwide, including:
- International trademark number 591251 for LEROY-MERLIN word mark, registered on July 15, 1992, designating numerous countries, including China, where Respondent resides;
- International trademark number 1283244 for LEROY MERLIN figurative mark, registered on November 17, 2014, designating various countries, including China;
- Mexican trademark number 0253871 for LEROY MERLIN figurative mark, registered on May 16, 1996;
- Brazilian trademark number 819162060 for LEROY MERLIN figurative mark, registered on September 2, 2003;
- Argentinian trademark number 2833959 for LEROY MERLIN figurative mark, registered on June 9, 2009.
It also owns and operates numerous domain names featuring the LEROY MERLIN mark, the earliest of which date from the year 2000.
Respondent registered the Domain Name on July 31, 2021. At the time of filing the Complaint, the Domain Name resolves to a parking page with links to websites featuring services and products that are similar and competitive to Complainant’s services and products. At the time of the Decision, the Domain Name resolves to a parking page prominently featuring “leroymerlin.co” as a heading and several links such as: “Custom Closets by Design”, “Leafguard Rain Gutters”, “Tile Installers in My Area”, “Ceiling Tiles Online”, and “Xrp how to Buy”. Each of these links directs the user to third party sites offering services and products similar and competitive to Complainant’s. The parking page also features a link titled: “Buy this domain”, under which is the recitation: “The owner of leroymerlin.co is offering it for sale for an asking price of 299 USD!”
5. Parties’ Contentions A. ComplainantComplainant contends that (i) the Domain Name is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith.
In particular, Complainant contends that it has trademark registrations for the LEROY MERLIN marks and owns domain names incorporating the LEROY MERLIN marks. Complainant contends that Respondent registered and is using the Domain Name to confuse Internet users looking for bona fide and well-known LEROY MERLIN products and services.
Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant’s marks, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Rather, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Name, when Respondent clearly knew of Complainant’s rights.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and Findings 6.1. Preliminary Procedural Issue – Language of the ProceedingThe Rules, in paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Complainant submitted its original Complaint in English. In its Complaint and its email communication to the Center on October 15, 2021, Complainant requests that the language of the proceeding should be English. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
Complainant contends it is a French entity, with French and English being its main languages of communication; that English is the language most widely used in international relations; and that the Domain Name was registered in Latin characters, indicating that Respondent is familiar with English. Complainant also contends that it is unable to communicate in Chinese, and it would cause delay and be unfairly burdensome for Complainant to translate and conduct the proceeding in Chinese.
In exercising its discretion to use a language other than that of the Registration Agreement for the Domain Name, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel accepts Complainant’s submissions regarding the language of the proceeding. The Panel notes that the Center notified the Parties in both Chinese and English of the language of the proceeding as well as notified Respondent in both Chinese and English of the Complaint. Respondent chose not to comment on the language of the proceeding nor did Respondent choose to file a Response. Further, the Panel notes that the Domain Name was registered using Latin characters.
The Panel is also mindful of the need to ensure that the proceeding is conducted in a timely and cost-effective manner. Complainant may be unduly disadvantaged by having to translate the Complaint into Chinese and to conduct the proceeding in Chinese.
Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
6.2. Substantive IssuesUnder paragraph 4(a) of the Policy, to succeed, Complainant must satisfy the Panel that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name was registered and is being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340.
A. Identical or Confusingly SimilarOwnership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of its rights in the LEROY MERLIN mark, as noted above. Complainant has also submitted evidence, which supports that the LEROY MERLIN mark is a widely known trademark and a distinctive identifier of Complainant’s products and services. Complainant has therefore proven that it has the requisite rights in the LEROY MERLIN mark.
With Complainant’s rights in the LEROY MERLIN mark established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the TLD in which it is registered (in this case, “.co”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842.
Here, the Domain Name is confusingly similar to Complainant’s LEROY MERLIN mark. This mark is entirely duplicated and recognizable in the Domain Name. The incorporation of the LEROY MERLIN mark with the absence or deletion of a space between the letters “leroy” and “merlin” in the Domain Name
Thus, the Panel finds that Complainant has satisfied the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the LEROY MERLIN mark, and does not have any rights or legitimate interests in the Domain Name. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the LEROY MERLIN trademark or to seek registration of any domain name incorporating the trademark. Respondent is also not known to be associated with or commonly known by the LEROY MERLIN mark.
In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. In particular, at the time of filing the Complaint, the Domain Name resolves to a parking page with links to websites featuring third party services and products that are similar and competitive to Complainant’s services and products. At the time of the Decision, the Domain Name resolves to a parking page prominently featuring “leroymerlin.co” as a heading and several links such as: “Custom Closets by Design”, “Leafguard Rain Gutters”, “Tile Installers in My Area”, “Ceiling Tiles Online”, and “Xrp how to Buy”. Each of these links directs the user to third party sites offering services and products similar and competitive to Complainant’s.
Such use of the Domain Name misleads consumers into thinking that the website is endorsed by Complainant offering Complainant’s products and services. Moreover, the parking page also features a link titled: “Buy this domain”, under which is the recitation: “The owner of leroymerlin.co is offering it for sale for an asking price of 299 USD!” Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use, and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration,WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Name.
Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have acquired the 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(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 Panel finds that Complainant provided ample evidence to show that registration and use of the LEROY MERLIN mark predates the registration of the Domain Name, more specifically, the LEROY MERLIN mark, has been registered since at least as early as 1992, well before the registration of the Domain Name on July 31, 2021. Complainant is also well established and known. Indeed, the record shows that Complainant’s LEROY MERLIN marks and related products and services are widely known and recognized including in China, where Respondent operates and resides. Therefore, Respondent knew or should have known Complainant and its LEROY MERLIN mark at the time of registration of the Domain Name. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973.
The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007.
Further, the evidence demonstrates that Respondent was using the Domain Name in connection with unauthorized activities. Complainant has provided evidence indicating that Respondent is using the Domain Name to divert consumers to a website that features links to third party websites providing services and products that are similar to and competitive with Complainant’s products and services, all without any authorization or approval by Complainant. By doing so, the Domain Name is used to mislead consumers into thinking that the website is endorsed by Complainant offering products and services. Moreover, the parking page also features a link titled: “Buy this domain”, under which is the recitation: “The owner of leroymerlin.co is offering it for sale for an asking price of 299 USD!”
Therefore, Respondent, by using the Domain Name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant’s LEROY MERLIN mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. Such use of the Domain Name may also result in tarnishing Complainant’s reputation and affecting its business activities.
Here, the present circumstances, including the distinctiveness and reputation of the LEROY MERLIN marks, the unauthorized use of Domain Name to divert consumers looking for authentic LEROY MERLIN goods and services to Respondent’s website, the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and the implausibility of any good faith use to which the Domain Name may be put, support a finding of bad faith. See section 3.3 of the WIPO Overview 3.0.
Accordingly, the Panel finds that Respondent has registered and is using the Domain Name in bad faith and Complainant succeeds under the third element of paragraph 4(a) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Kimberley Chen Nobles
Sole Panelist
Date: December 7, 2021