WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kingfisher France v. Domains by Proxy, Inc. / Ayr Sha
Case No. D2011-1730
1. The Parties
The Complainant is Kingfisher France of Templemars, France, represented by Cabinet Plasseraud, France.
The First Respondent is Domains by Proxy, Inc. of Scottsdale, Arizona.
The Second Respondent is Ayr Sha of Kazan, Russian Federation (hereafter :”the Respondent”).
2. The Domain Name and Registrar
The disputed domain name <bricodepot-catalogue.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2011. On October 13, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On October 13, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 14, 2011 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 amended Complaint on October 14, 2011.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 7, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2011.
The Center appointed Professor François Dessemontet as the sole panelist in this matter on November 14, 2011. 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 owner of many trademarks BRICO DEPOT (word) and BRICO DEPOT (semi-figurative). It owns inter alia the French word trademark No. 02 3 177 378 covering goods and services in classes 01 through 09, 11, 16, 17, 19, 20, 21, 27 35, 38. It also owns the French word trademark No. 06 4 439 634 covering services in classes 35, 37 and 44.
Further the Complainant owns the international registration for the word mark BRICO DEPOT No. 612 974 covering goods and services in classes 01, 02, 06, 07, 08, 09, 11, 19, 20, 22, 27, 28, 31, 37, 41, 42. It also holds the international mark No. 831 331 and No. 914 334. It is the registered owner of semi-figurative trademarks BRICO DEPOT No. 826 852 and No. 1 047 119 8 (or the European Union).
Finally the Complainant is owner of the European Union Community word trademark registration BRICOT DEPOT TOUS NOS PRODUITS DOIVENT ETRE DISPONIBLES No. 5 457 817 for services in classes 35, 37 and 44.
All of the Complainant’s trademark registrations precede the registration of the disputed domain name. They mainly cover goods and services in the Do-It-Yourself and gardening centres. They have been intensely used in France since 1993. There are over 100 stores BRICO DEPOT in France, 16 in Spain and 6 in Poland.
5. Parties’ Contentions
The Complainant argues that the domain name BRICODEPOT-CATALOGUE.COM at issue is confusingly similar to the prior BRICO DEPOT (verbal) trademark and to the verbal elements of the BRICO DEPOT semi-figurative mark.
Further the Complainant points out that the Respondent has no rights or legitimate interests in respect of the domain name at issue. The registration of the disputed domain name has been made without authorization of the Complainant. The Respondent had only one purpose, namely taking unfairly advantage of the distinctive character and reputation of the Complainant’s trademarks. The disputed domain name attracts Internet users and creates website traffic, thereby generating advertisement revenues. The Complainant stresses that every page of the Respondent’s website includes, in its center, “Google AdSenses”. Complainant further contends that the Respondent has intentionally inserted advertising links which will direct Internet users towards competitors of the Complainant.
Finally, the Complainant argues that the disputed domain name has been registered and is being used in bad faith by the Respondent, as would be established by the fact that the disputed domain name is a French word, thus targeting French consumers. The Complainant’s business encompasses more than 100 stores in France and is therefore well-known in that country. Bad faith is also proved by the fact that the website at the disputed domain name displays as subtitles of each page a reference to the Complainant’s main products: kitchenware and furniture, store, tiled floors, online catalogue, and each time with the foregoing words “Brico Dépôt”. In the center of each page, Google AdSenses advertises links to the websites of the Complainant’s competitors. The Respondent’s website and the disputed domain name are willfully misleading for French consumers, as a risk of source confusion is created through the use of a picture showing one of the Complainant’s BRICO DEPÔT stores. Although the website at the disputed domain name includes a picture displaying a BRICO DEPÔT store, the Respondent does not sell any products of the Complainant, nor does it provide the Complainant’s services. The disputed domain name contains no link to the Complainant’s website; it contains only links to websites of the Complainant’s competitors.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is not identical to the trademarks of the Complainant, as it contains the word “catalogue”.
Therefore, the question is whether the disputed domain name is “confusingly similar”. This question requires examination of the distinctive character of the Complainant’s trademarks. Separate consideration should be given to the verbal trademarks and the semi-figurative trademarks.
The verbal trademarks BRICO DEPÔT are made up of two words, one that belongs to the French literary language (“DEPÔT”), the other one (“BRICO”) that could pass as an abbreviation for “BRICOLAGE” although an unusual one. However, the word BRCO cannot be said to pertain to the ordinary language of French speaking consumers, and thus it is not part of the public domain in French speaking countries. This word being original to some extent, the combination BRICO DEPÔT clearly enjoys a distinctive character. The constant use of these verbal trademarks for more than 17 years and now in over 100 stores in France have also given an added strength to the distinctive character of the verbal trademark.
The combined figurative/word trademarks are even more distinctive as they apply a dual color scheme to reinforce the general impression left by the words BRICO & DEPÔT. However, to judge the confusing similarity with the purely verbal disputed domain name, the panel will not consider those combined trademarks. The unauthorized use of the said combined trademarks will be referred to later under C (registered and used in bad faith).
The validity and distinctive character of the verbal trademarks being so established, the next question to examine is whether the addition of a descriptive word such as “catalogue” removes the risk of confusion between the trademarks of the Complainant and the disputed domain name. The answer to that question is clearly in the negative. Although not inconceivable, it would be a rare case when the disputed domain name incorporating a trademark enjoying distinctiveness through the combination of the words and through a long use in trade would not be protected against the disputed domain name taking up its distinctive elements.
Nevertheless, this exceptional case could not happen when the added word is a word that by its very meaning lends itself to characterize some segment of the marketing activities of the owner of the trademark. “CATALOGUE” is precisely a word that the French speaking consumers will read as meaning that the Complainant has created an online offering of the goods and services of its BRICO DEPÔT stores. Far from introducing a distinction with the main elements of the disputed domain name BRICO DEPÔT, the addition of CATALOGUE really serves as a predicate to the business described by the trademarks.
In conclusion, the disputed domain name at issue is confusingly similar to the trademarks of the Complainant.
B. Rights or Legitimate Interests
The Respondent has defaulted and therefore no fact has been mentioned nor any proof proffered that the arguments put forward by the Complainant should be rejected. There seems to be no indication that the Complainant authorized the registration of the disputed domain name or the use of the Complainant’s trademarks on the webpage of the Respondent. Additionally, the Respondent does not appear to be a dealer in BRICO DEPÔT products. The panel does not see any right or legitimate interest of the Respondent in respect of the disputed domain name.
In conclusion on this point, the Complainant has established a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, which the Respondent failed to rebut.
C. Registered and Used in Bad Faith
The disputed domain name has been registered and is being used in bad faith. The webpage at the disputed domain name is drafted only in French and targets French speaking-consumers, including presumably Belgian and Swiss consumers living in the vicinity of French BRICO DEPÔT stores.
Each page contains a subtitle referring to BRICO DEPÔT, such as BRICO DEPÔT cuisine, magasin, carrelage, catalogue en ligne. Further the Complainant’s semi-figurative trademark is inserted without modification as the photo of one of the Complainant’s French stores is shown on the webpage.
In fact, however, no products or services of the Complainant are offered. No link is given to the Complainant’s own webpage. Moreover, all links refer to direct competitors of the Complainant, such as Darty or Aterno Chauffages.
It seems that the only motivation of the Respondent has been to generate advertising revenues through Goggle AdSenses or otherwise.
In conclusion on this point, the Respondent has not shown that the domain name has not been registered and is being used in bad faith.
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 <www.bricodepot-catalogue.com> be transferred to the Complainant.
Dated: November 22, 2011