Complainant is Groupe Adeo, France, represented by Coblence Avocats, France.
Respondent is Domains By Proxy, LLC, United States of America / Danil Dzigur, the Russian Federation. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2021. On April 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 13, 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 April 15, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on April 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 Respondent of the Complaint, and the proceedings commenced on April 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 11, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 12, 2021. The Center appointed Marina Perraki as the sole panelist in this matter on May 22, 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 Per Complaint, Complainant is a well-known company active in the sale of hardware. The pioneer company in its group, active since 1923, is LEROY MERLIN. LEROY MERLIN is a leading DIY retail outlet in home and lifestyle improvement market with 21,000 employees in France and 400 stores in various countries around the world, including the Russian Federation, Ukraine, Brazil, Spain and Portugal. The LEROY MERLIN trademark ranks among the 50 most valuable French brands. The LEROY MERLIN company name was registered in 1992. Complainant is the owner of numerous LEROY MERLIN trademark registrations, including: - International Trade Mark registration No. 591251, LEROY-MERLIN (word), registered on July 15, 1992, for goods and services in international classes from 1 to 9, 11, 16, 17, 19, 20, 21, 22, 25, 27, 28, 31 and 37; - Mexican Trade Mark registration No. 0253868, LEROY MERLIN (figurative), filed on February 7, 1996 and registered on March 22, 1996, for goods in international class 3; - Brazilian Trade Mark registration No. 819162019, LEROY MERLIN (figurative), filed on March 28, 1996 and registered on September 2, 2003 for services in international classes 31 and 35; and European Union Trade Mark registration No. 010843597, LEROY MERLIN (word), filed on April 27, 2012, registered on December 7, 2012, for goods and services in international classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 11, 12, 14, 16, 17, 18, 19, 20, 21, 22, 24, 25, 26, 27, 28, 31, 35, 36, 37, 40, 41, 42 and 44. Complainant is also the owner of numerous domain names for LEROY MERLIN, including The Domain Name was registered on December 23, 2020 and leads to a website written in Cyrillic that prominently displays Complainant’s logos, colours and the LEROY MERLIN trademark in Russian, mimicking Complainant’s website and offering for sale DIY home and lifestyle goods (“the Website”). It was also used to create an email address “[...]@leruamerlin.me” mentioned on the Website as contact detail. Per Complainant, the Website contains a disclaimer in Russian, mentioning that it is not an official website of Complainant, that it is not related to Complainant and that it merely offers delivery services of goods from Complainant’s stores and does not sell goods. However, per Complainant, this statement is false as the Website offers for sale a variety of DIY household equipment and decorative goods. 5. Parties’ Contentions A. Complainant Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for the transfer of the Domain Name. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements, which Complainant must satisfy with respect to the Domain Name: (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 has been registered and is being used in bad faith. A. Identical or Confusingly Similar Complainant has demonstrated rights through registration and use on the LEROY MERLIN mark. The Panel finds that the Domain Name is confusingly similar with the LEROY MERLIN trademark of Complainant. The Domain Name incorporates the said trademark of Complainant in its entirety with the sole difference of the last letters of the first word “ua” instead of “oy”. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525). The change of the letters of the first word “ua” instead of “oy” in the Domain Name, both of which are pronounced in a similar way, does not prevent a finding of confusing similarity as the LEROY MERLIN mark remains clearly recognizable (WIPO Overview 3.0 of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8). The country code Top-Level Domain (“ccTLD”) “.me” is also disregarded, as ccTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only. The Panel finds that the Domain Name is confusingly similar to the LEROY MERLIN trademark of Complainant. Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements: (i) before any notice to Respondent of the dispute, 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) Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if Respondent has acquired no trademark or service mark rights; or (iii) 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 finds that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name. Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. On the contrary, the Domain Name was used to create the Website of Respondent, prominently displaying Complainant’s logos and trademark in Russian and offering competing goods and services. A respondent’s use of a complainant’s mark to redirect users to a competing site would not support a claim to rights or legitimate interests (WIPO Overview 3.0 , section 2.5.3 ). Lastly, the Panel notes the nature of the Domain Name, which carries a risk of implied affiliation (WIPO Overview 3.0 , section 2.5.1 ). The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name. Complainant has established Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”: (i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or (ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel concludes that Respondent has registered and used the Domain Name in bad faith. Because the LEROY MERLIN mark was well-known and had been widely used and registered at the time of the Domain Name registration by Respondent, the Panel finds that Respondent had Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc.,WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net,WIPO Case No. D2000-0226). Such knowledge is further confirmed by the disclaimer included in the Website which expressly mentions Complainant. Furthermore, the Domain Name incorporates in whole Complainant’s trademark with replacement of the last two letters of the first word “oy” with the phonetically similar “ua”, therefore creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Domain Name. Furthermore, Respondent could have conducted a trademark search and would have found Complainant’s prior trademark registrations in respect of the LEROY MERLIN mark (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata,WIPO Case No. D2012-1338). The Domain Name was therefore operated by intentionally, for commercial gain, creating a likelihood of confusion with Complainant’s trademark and business as to the source, sponsorship, affiliation or endorsement of the Website it resolved to within the sense of paragraph 4(b)(iv) of the Policy. This can be used in support of bad faith registration and use (WIPO Overview 3.0, section 3.1.3). As regards to bad faith use, the Domain Name leads to the Website, prominently displaying Complainant’s trademark, colors and logos in Russian, offering competing goods and services of Respondent and containing an email address with the Domain Name that appears as contact detail on the Website. This further supports a finding of registration in bad faith (WIPO Overview 3.0, section 3.1.4), reinforcing the likelihood of confusion, as Internet users are likely to consider the Domain Names as in some way endorsed by or connected with Complainant (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen,WIPO Case No. D2018-0625; Marie Claire Album v. Whoisguard Protected, Whoisguard, Inc. / Dexter Ouwehand, DO,WIPO Case No. D2017-1367). The Panel notes that the mere existence of a disclaimer cannot cure such bad faith (WIPO Overview 3.0, section 3.7). On the contrary, taking into account a) the misspelling of Complainant’s mark included in the Domain Name, b) the use of a proxy service to hide Respondent’s identity, c) the prominent display on the Website of Complainant’s logos, colors and trademark in Russian and d) the fact that the disclaimer mentions falsely that no sale of goods takes place through the Website, while as Complainant has demonstrated, such offering for sale of competing goods does take place, the Panel finds that Respondent’s use of the disclaimer provides an admission by Respondent that users may be confused (WIPO Overview 3.0, section 3.7). Under these circumstances and on this record, the Panel finds that Respondent has registered and used the Domain Name in bad faith. Complainant has established Policy, paragraph 4(a)(iii). 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 Marina Perraki
Sole Panelist
Date: June 5, 2021
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