WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bricorama France v. Domain Whois Protect Service, C/O Email contact at domainwhoisprotect.in to contact the domain / Venkateshwara Distributor Private Limited
Case No. D2018-2839
1. The Parties
The Complainant is Bricorama France, of Villiers-sur-Marne, France, represented by Deprez Guignot & Associés, France.
The Respondent is Domain Whois Protect Service, C/O Email contact at domainwhoisprotect.in to contact the domain of Mumbai, India / Venkateshwara Distributor Private Limited, of Mumbai, India.
2. The Domain Name and Registrar
The Domain Name <bricorama.com> (the “Domain Name”) is registered with Tirupati Domains and Hosting Pvt Ltd. (the “Registrar”).
3. Procedural History
The Complaint, in French, was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2018. On December 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 13, 2018, the Registrar transmitted by email to the Center its verification response disclosing the registrant and contact information for the Domain Name. The Registrar also stated that the language of the Registration Agreement is English. The Center sent an email communication to the Complainant on December 19, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On December 19, 2018, the Center notified the Parties in both English and French that the language of the Registration Agreement for the Domain Name is English. The Complainant filed an amended Complaint in English on December 21, 2018.
The Center verified that the Complaint together with 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 the Respondent of the Complaint, and the proceedings commenced on December 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2019.
The Center appointed Alan L. Limbury as the sole panelist in this matter on February 1, 2019. 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.
The language of the Registration Agreement is English. The amended Complaint is in English. Accordingly, pursuant to the Rules, Paragraph 11 and in the absence of any factors to the contrary, the Panel finds it appropriate that the language of this administrative proceeding be English.
4. Factual Background
Recently described by an online magazine as “one of the driving forces in the DIY and gardening market in France”, the Complainant, established in 1975, operates a chain of retail stores in France supplying Do It Yourself (DIY) tools. It is the registered proprietor of the French word mark BRICORAMA, No. 3173040, registered on July 8, 2002; the French semi-figurative trademark No.1411011 registered on May 27, 1987; and the EU trademark with figurative elements No. 2804763, registered on July 8, 2002. The distinctive part of each mark with figurative elements is the word BRICORAMA. The Complainant operates its website from its domain name <bricorama.fr>, registered in 1998.
A WhoIs search conducted by the Complainant in October 2018 revealed that the Domain Name was registered on July 23, 2003. The registrant was shown as “Domain Whois Protect Service”. According to the information provided by the Registrar to the Center after the filing of the Complaint, the Domain Name was registered by the Respondent on July 4, 2013.
When accessed by the Complainant on October 10, 2018, the website to which the Domain Name resolved displayed sponsored listings in French, including “Bricorama”, “Mr Bricolage”, and “Catalogue Bricolage”, linked to third party websites that operate in the DIY field. The following disclaimer of responsibility appeared in English at the foot of the page:
“The Sponsored Listings displayed above are served automatically by a third party. Neither the service provider nor the domain owner maintain any relationship with the advertisers. In case of trademark issues please contact the domain owner directly (contact information can be found in whois).”
5. Parties’ Contentions
The Complainant says the Domain Name is identical to its BRICORAMA trademarks, which were all registered before the registration of the Domain Name and which are undeniably famous in France, and that the Respondent has no rights or legitimate interests with respect to the Domain Name, which was registered and is being used in bad faith.
As to legitimacy, the Complainant submits that, given the Complainant’s reputation, the Respondent must have been aware of the Complainant and its marks when registering the Domain Name, especially since the website to which it resolves is in French. The Respondent’s goal is to generate traffic to the sites of third parties, who pay for this activity, to the commercial benefit of the Respondent. As in Accor v Erin Atesman, WIPO Case No. D2009-0701, this constitutes unlawful commercial use and demonstrates lack of rights and legitimate interests.
As to bad faith, the Complainant notes that Article 2 of the Policy requires registrants to ensure that “the registration of the domain name does not infringe or in any way affect the rights of any third party” and says the content of the Respondent’s website is a directory of third-party DIY sites that have no connection with the Complainant. This undoubtedly generates additional traffic to those sites and not to the Complainant’s website. Citing Nikon, Inc. and Nikon Corporation v. Technilab Inc., WIPO Case No. D2000-1774, the Complainant says the Respondent is seeking to mislead Internet users into believing that those third party websites share the same commercial origin as the Complainant, to the Respondent’s profit. The Respondent’s use of a privacy service to conceal its identity also suggests harmful intent on the part of the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, to obtain transfer of the Domain Name, the Complainant must prove the following three elements: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in the Domain Name; and (iii) the Respondent has registered the Domain Name and is using it in bad faith.
Under paragraph 15(a) of the Rules, “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 principles of law that it deems applicable”.
A Respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the Complainant. See Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441.
A. Identical or Confusingly Similar
The specific top-level of the Domain Name, in this case “.com”, is generally regarded as irrelevant for the purpose of determining whether the Domain Name is identical or confusingly similar. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
The Panel finds the Domain Name <bricorama.com> to be identical to the Complainant’s BRICORAMA word mark and confusingly similar to its BRICORAMA marks with figurative elements.
The Complainant has established this element.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the 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) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the 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 Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the Domain Name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show that it does have rights or legitimate interests in the Domain Name. See Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753. The Respondent has made no attempt to do so.
The Panel finds that the BRICORAMA mark is distinctive and widely known in France. The content of the website to which the Domain Name resolves, especially the use of the Complainant’s BRICORAMA mark and the fact that the language of the website is French, indicate that the goods or services offered are not bona fide, since the offering purports to trade off the Complainant’s reputation. In this regard the Panel notes that, according to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.9, panels have found that the use of a domain name to host a parked page comprising pay-per-click links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.
There is no evidence that the Respondent is or has been commonly known by the Domain Name. The Respondent appears to be misleading consumers for commercial gain into believing that the website and the links thereon are those of the Complainant.
In the circumstances of this case, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant has established this element.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy. Of relevance in this proceeding is the following:
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
The disclaimer appearing at the foot of the Respondent’s website page cannot absolve the Respondent from responsibility for the website content. See WIPO Overview 3.0, section 3.5.
It is unnecessary to determine whether the Domain Name was registered by the Respondent through a privacy service in 2003, according to the WhoIs information obtained by the Complainant, or in 2013 according to the Registrar. Either way, the Complainant had already registered its French word mark BRICORAMA, No. 3173040, on July 8, 2002, and had registered its semi-figurative trademark No.1411011, the distinctive element of which is the word “bricorama” in 1987, so it is entirely possible that the Respondent was aware of the Complainant and its BRICORAMA marks when registering the Domain Name.
Be that as it may, the content and language of the Respondent’s website, when accessed by the Complainant in October 2018, provide strong evidence that the Respondent, by using the Domain Name, has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s BRICORAMA marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on its website. Such use constitutes evidence of both registration and use in bad faith.
The Complainant has established this element.
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 <bricorama.com> be transferred to the Complainant.
Alan L. Limbury
Date: February 6, 2019