WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Groupe Adeo v. Emerson Arcanjo Do Carmo
Case No. D2017-1063
1. The Parties
Complainant is Groupe Adeo of Ronchin, France, represented by CSC Digital Brand Services AB, Sweden.
Respondent is Emerson Arcanjo Do Carmo of Sao Paulo, Brazil.
2. The Domain Name and Registrar
The disputed domain name <leroymerlin.store> is registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 31, 2017. On June 1, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. The Center received a communication from the Registrar on June 1, 2017. On June 6, 2017, the Registrar 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 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 June 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 27, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on June 28, 2017.
The Center appointed Michael A. Albert as the sole panelist in this matter on July 4, 2017. 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
Complainant asserts that it is the leading "do-it-yourself" ("DIY") retailer in France and the third largest in the world, maintaining store locations across twelve countries, including Brazil. Complainant has used the LEROY MERLIN trademark in commerce since at least as early as the 1960s. Complainant has obtained multiple registrations for this mark across various jurisdictions. According to the evidence supplied in the Complaint, its French registrations date back to an application published March 6, 1992. The dates of Complainant's various Brazilian registrations are less clear.
Complainant also operates websites at <leroymerlin.fr> and <leroymerlin.com>, which were both originally registered on September 13, 1996. Complainant also operates a website at <leroymerlin.com.br>, which was originally registered on May 29, 1998.
The disputed domain name, <leroymerlin.store>, was registered with Tucows Inc. on December 6, 2016, and does not resolve to an active website.
5. Parties' Contentions
Complainant alleges that the disputed domain name is identical or confusingly similar to its LEROY MERLIN trademark because it consists of Complainant's mark in its entirety, with a merely generic additional term, "store."
Complainant also alleges that Respondent has no rights or legitimate interests in the disputed domain name because Complainant has given no license or authorization to Respondent for the use of the LEROY MERLIN mark, nor has Respondent engaged in a bona fide offering of goods or services.
Finally, Complainant alleges that Respondent has at least constructive notice of the LEROY MERLIN mark because of Complainant's status as a leading DIY retailer worldwide, including a significant presence in Respondent's home country of Brazil, as well as Complainant's various trademark registrations. Complainant asserts that the disputed domain name leads to an inactive site and that Respondent is currently offering to sell the disputed domain name, thereby demonstrating that Respondent registered and used the disputed domain name in bad faith.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
In rendering its Decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules, which provides that, "[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 principals of law that it deems applicable." Paragraph 14(b) of the Rules further provides that "[i]f a Party, in the absence of exceptional circumstances, does not comply with the provisions of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inference therefrom as it considers appropriate." Paragraph 5(f) of the Rules further provides that "[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint."
The failure of Respondent to respond does not automatically result in a favorable decision to Complainant, which is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein. The three elements are assessed below.
A. Identical or Confusingly Similar
Complainant has demonstrated rights to the LEROY MERLIN mark. Complainant first used the mark in commerce in 1960, and has made continuous use of it since then. Complainant has multiple trademark registrations with the National Institute of Industrial Property Ministry of Development, Industry and Foreign Trade (INPI) Brazil and the National Institute of Industrial Property of France (INPI). See Disney Enterprises, Inc. v. Paul Kudrna c/o The Finest Group, NAF Claim No. 686103 (finding that complainant's registration of the DISNEY trademark with the USPTO prior to respondent's registration of the disputed domain name is sufficient to prove that complainant has rights in the mark pursuant to paragraph 4(a)(i) of the Policy). Complainant has also established a significant presence in the DIY retailer market with over 400 store locations across twelve countries. At these locations Complainant offers a wide range of products and services related to home improvement and gardening under the LEROY MERLIN mark, and the mark is also in use on Complainant's websites, <leroymerlin.fr>, <leroymerlin.com>, and <leroymerlin.com.br>.
The disputed domain name incorporates Complainant's LEROY MERLIN mark, with the mere addition of the generic Top-Level Domain ("gTLD") ".store". The consensus view, with which the Panel concurs, is that "[n]either the addition of an ordinary descriptive word (either as prefix or suffix) nor the suffix '.com' detract from the overall impression of the dominant part of the name in each case, namely the trademark." Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409. In this case, the addition of a gTLD such as ".store", is not sufficient to detract from the overall impression that the disputed domain name is confusingly similar to the LEROY MERLIN mark.
The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The consensus view, with which the Panel agrees, is that while the overall burden of proof is borne by Complainant, when a complainant is (as here) faced with the impossible task of proving a negative, it need only make out a prima facie case before the burden of production shifts to Respondent. See Swedish Match UK Limited v. Admin, Domain, NAF Claim No. 873137 (finding that once a prima facie case has been established by complainant, the burden then shifts to respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to paragraph 4(c) of the Policy).
Here, Complainant registered the LEROY MERLIN mark at least twenty-four years prior to Respondent's registration of the disputed domain name <leroymerlin.store> on December 6, 2016. Complainant's own domain names, <leroymerlin.fr>, <leroymerlin.com>, and <leroymerlin.com.br>, were operational twenty to eighteen years prior to Respondent's registration of the disputed domain name. Further, the Panel notes that Respondent does not appear to be commonly known as <leroymerlin.store>. See The Braun Corporation v. Wayne Loney, Claim No. 699652 (concluding that respondent was not commonly known by the disputed domain names where the WhoIs information, as well as all other information in the record, gave no indication that respondent was commonly known by the disputed domain names, and complainant had not authorized respondent to register a domain name containing its registered mark).
Complainant confirms that it has not licensed or authorized Respondent to use any of its marks.
Respondent's failure to respond, coupled with Complainant's prima facie case, are indicative that Respondent has no rights or legitimate interests in the disputed domain name. See Bank of America Corporation v. Bill McCall, NAF Claim No. 135012 ("Respondent's failure to respond not only results in its failure to meet its burden, but will also be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.").
The Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
First, Complainant's reputation, physical presence at over 400 store locations in twelve countries, and presence on the Internet at <leroymerlin.fr>, <leroymerlin.com>, and <leroymerlin.com.br> suggest a sufficiently widespread footprint such that Respondent can be presumed (at least absent contrary evidence, of which there is none) to have known of the marks prior to registering the disputed domain name. In the circumstance, this is a clear indication of bad faith.
Second, the disputed domain name currently resolves to an inactive site and is not being used. Past panels have noted that the word bad faith "use" in the context of paragraph 4(a)(iii) does not require a positive act on the part of Respondent – instead, passively holding a domain name can constitute a factor in finding bad faith registration and use pursuant to Policy paragraph 4(a)(iii). See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 ("it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith"). See also Alitalia-Linee Aeree Italiane S.p.A. v. Colour Digital, WIPO Case No. D2000-1260 (finding bad faith where Respondent made no use of the domain name in question).
Third, Respondent – according to Complainant's evidence – is currently offering to sell the disputed domain name, which constitutes bad faith under paragraph 4(b)(i) of the Policy because Respondent has demonstrated an intent to sell, rent, or otherwise transfer the disputed domain name for valuable consideration in excess of Respondent's out-of-pocket expenses. It is well established that seeking to profit from the sale of a confusingly similar domain name that incorporates a third party's trademark demonstrates bad faith. See Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628 (finding that the attempted sale of a domain name is evidence of bad faith). See also Broadcom Corporation, a California Corporation v. Domain Management / Syed Hussain, NAF Claim No. 1419370 (holding respondent's offer to sell <broadcomnetlogic.com> to the general public and to complainant constitutes bad faith under Paragraph 4(b)(i)); State Farm Mutual Automobile Insurance Company v. MIC c/o Syed Hussain, NAF Claim No. 1322235 (holding respondent's offer to sell the domain name <statefarm2save.com> constitutes bad faith); Little Six, Inc. d/b/a Mystic Casino Hotel v. Domain For Sale a/k/a Anatoly Polishchuk, NAF Claim No. 96967 (finding respondent's offer to sell the domain name at issue to complainant was evidence of bad faith). Thus, the Panel finds that Respondent registered the disputed domain name in bad faith and is using the disputed domain name in bad faith.
The Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <leroymerlin.store> be transferred to Complainant.
Michael A. Albert
Date: July 18, 2017