Complainant is Groupe ADEO S.A., of Ronchin, France, represented by Erber Avocat, France.
Respondent is Bob Nonnekes of Breda, the Netherlands. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with SIDN through Metaregistrar. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2014. On December 12, 2014, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On December 15, 2014, SIDN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 19, 2014. In accordance with the Regulations, article 7.1, the due date for Response was January 8, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 9, 2015.
The Center appointed Remco M. R. van Leeuwen as the sole panelist in this matter on January 19, 2015. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2. 4. Factual Background
The pioneer company in Complainant is Leroy Merlin, created in 1923. Leroy Merlin is a leading 'Do It Yourself' retail outlet in the home and lifestyle improvement market with over 17.000 employees and 114 stores located all over the world.
Complainant is, inter alia, holder of the following trademark registrations (hereinafter collectively referred to as the “Trademarks”):
- International trademark registration for the word mark LEROY-MERLIN (no. 591251; registration date: July 15, 1992) registered in the Benelux for goods and services in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 11, 16, 17, 19, 20, 21, 22, 25, 27, 28, 31 and 37;
- International trademark registration for the word mark LEROY-MERLIN (no. 618818; registration date: May 6, 1994) registered in the Benelux for goods and services in classes 9, 12, 14, 18, 24, 26, 35, 36, 37, 38, 39, 40, 41 and 42;
- International trademark registration for the word/figurative mark LEROYMERLIN (word in special script and colour) (no. 701781; registration date: August 14, 1998) registered in the Benelux for goods and services in 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, 38, 39, 40, 41 and 42.
Complainant indicated it has actively and continuously registered domain names since 2005. In this respect, reference is made to numerous domain names comprising the element “LEROY MERLIN” under 46 different Top-Level Domain (“TLD”) extensions, such as , , and .
The Domain Name was registered on March 12, 2011 and resolves to a default parking page.
Prior to the commencement of the proceedings before the Center, Complainant’s counsel sent a formal notice regarding the Domain Name to Respondent on November 6, 2014. In response, Respondent sent a reply e-mail on November 6, 2014 solely stating “make a nice proposal to agree with your desire”. This correspondence was summited as an annex to the Complaint. 5. Parties’ Contentions A. Complainant
Complainant bases its Complaint on the Trademarks.
The Domain Name is identical or confusingly similar to the Trademarks
Complainant contends that there is a confusing similarity between the Domain Name and the Trademarks. The Domain Name is an exact reproduction of the Trademarks, with the sole adjunction of the TLD suffix “.nl”. The addition of the TLD “.nl” is not sufficient to escape the finding that the domain name is identical to Complainant’s prior trademark. Complainant argues that it is established case law that the addition of a TLD suffix to a trademark is insufficient to avoid the risk of confusion. The Domain Name is therefore identical, or at least confusingly similar to the Trademarks.
No rights or legitimate interests
According to Complainant, Respondent has no rights or legitimate interests in the Domain Name and is not known in relation to the trademark. Also Respondent does not have any trademark registration with the wording of the Trademarks. No relation between Respondent and a company name or family name “Leroy Merlin” could be found. The Domain Name is not a descriptive word in Dutch or in French. Respondent is not affiliated with Complainant and Complainant has never licensed or otherwise authorized Respondent to use its Trademarks in any way.
The Domain Name has been registered in bad faith
Complainant asserts that the Domain Name has been registered in bad faith. Considering the fame and distinctiveness of the Trademarks, Respondent knew that the registration of the Domain Name was infringing trademark rights and was referring to its famous company. Given Complainant’s famous and numerous prior rights, Respondent must have been aware of Complainant’s rights at the time of registration of the Domain Name. Complainant furthermore contends that Respondent has registered the Domain Name only in order to prevent Complainant from using it and to generate financial gain, which according to Complainant is confirmed by the fact that Respondent tried to negotiate the sale of the Domain Name despite Complainants prior rights. B. Respondent
Respondent did not reply to Complainant’s contentions in the proceedings before the Center. 6. Discussion and Findings
As Respondent has not filed a Response, the Panel shall rule on the basis of the Complaint. In accordance with article 10.3 of the Regulations, the Complaint shall in that event be granted, unless the Panel considers it to be without basis in law or fact. The Panel is entitled to further inform itself by limited reference to matters of public record (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 4.5).
The Panel notes that, in accordance with article 16.4 of the Regulations, the Center has fulfilled its obligation to employ reasonably available means to achieve actual notice of the Complaint to Respondent.
Pursuant to article 2.1 of the Regulations, Complainant’s request to transfer the Domain Name must meet three cumulative conditions:
a. the Domain Name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which Complainant has rights, or other name by means of article 2.1(a) under II of the Regulations; and
b. Respondent has no rights to or legitimate interests in the Domain Name; and
c. the Domain Name has been registered or is being used in bad faith.
Considering these conditions, the Panel rules as follows: A. Identical or Confusingly Similar
Complainant has based its Complaint on its Trademarks and has submitted a copy of its trademark registrations demonstrating that it is the holder of the Trademarks. The Trademarks are protected under Dutch law.
It is established case law that the TLD “.nl” may be disregarded in assessing the similarity between the relevant trademark(s) on the one hand, and the disputed domain name on the other hand (see: Caterpillar Inc. v. H. van Zuylen Materieel,WIPO Case No. DNL2011-0073; Roompot Recreatie Beheer B.V. v. Edoco LTD,WIPO Case No. DNL2008-0008).
The Domain Name incorporates (the entirety of the textual components of) the Trademarks, so that the Domain name is textually, visually and phonetically identical to the Trademarks.
The Panel finds that the Domain Name is confusingly similar to the Trademarks. Therefore, the first requirement of article 2.1(a) under I of the Regulations is met. B. Rights or Legitimate Interests
As a result of its failure to submit a Response, Respondent did not use the opportunity to show rights to or legitimate interests in the Domain Name. The Panel could not establish any indications that any of the circumstances as described in article 3.1 of the Regulations apply, nor that Respondent in any possible other way has a right to or legitimate interest in the Domain Name.
Based on the foregoing, the Panel rules that Complainant has met the second requirement of article 2.1(b) of the Regulations. C. Registered or Used in Bad Faith
Considering that Complainant’s Trademarks predate the registration of the Domain Name, the apparent well-known status of the Trademarks, the Panel is of the opinion that Respondent was aware or should have been aware of Complainant and its Trademarks at the time of registration of the Domain Name.
Previous panels found that the incorporation of a well-known trademark in a domain name having no plausible explanation for doing so is in itself an indication of bad faith (see Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273 in which the panel stated: “The incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith.”). In this respect, the Panel notes that Respondent has not offered any such explanation.
The Panel established that the Domain Name resolves to a default parking page. The apparent lack of any active use of the Domain Name (e.g. for the Domain Name to resolve to an active website) without any active attempt to sell or to contact the trademark holder (so-called ‘passive holding’ by Respondent) does not as such prevent a finding of bad faith. On the contrary, the specific cumulative circumstances in this case in which the Domain Name is identical to the undisputed well-known Trademarks and in which Respondent has provided no evidence whatsoever of any actual or contemplated good-faith use by it of the Domain Name, are indicative of bad faith on the part of Respondent in its registration and/or use of the Domain Name as well (see The Coca-Cola Company v. P. Engbers,WIPO Case No. DNL2012-0037; and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). Although Respondent did not actively attempt to sell the Domain Name to Complainant, Respondent did ask for “a nice proposal” after having received a formal notice from Complainant, which is an indication that Respondent registered the Domain Name in order to sell or transfer it to Complainant for a consideration in excess of the cost of registration which thus is an indication of bad faith as well. The Panel has further noted the wide range of national domains in which Complainant has established the Trademarks on the Internet, whereby the Panel further notes that a meaning of the Domain Name other than in the trademarked sense would not be readily understood by Internet users in the Netherlands.
Having refrained from submitting a Response, Respondent has failed to provide any evidence to the contrary.
On the above grounds, the Panel finds that the requirements of registration or use in bad faith of the Domain Name pursuant to article 2.1(c) of the Regulations have been met. 7. Decision
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain name be transferred to Complainant.
Remco M. R. van Leeuwen
Panelist
Date: February 2, 2015
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