WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Groupe Adeo v. Ettori Mathieu

Case No. D2021-0503

1. The Parties

The Complainant is Groupe Adeo, France, represented by Coblence Avocats, France.

The Respondent is Ettori Mathieu, France.

2. The Domain Name and Registrar

The disputed domain name <leroymerlin-sagroupes.online> is registered with eNom, Inc. dba Dynames.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2021. On February 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 18, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 24, 2021, 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 amendment to the Complaint on February 25, 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 the Respondent of the Complaint, and the proceedings commenced on March 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 8, 2021.

he Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on April 20, 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

The Complainant is a French company specialized in hardware shops.

The Complainant’s pioneer company is the Leroy Merlin company, that was created in 1923 and is nowadays the leading major DIY retail outlet in home and lifestyle improvement market with 21,000 employees in France and 400 stores located all over the world.

For the needs and purposes of its activities, the Complainant is the owner of numerous trademarks (thereafter the “LEROY MERLIN trademarks”) such as:

- the European Union word trademark LEROY MERLIN n° 10843597, registered on December 7, 2012 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, 40, 41, 42 and 44;

- the European Union semi-figurative trademark LEROY MERLIN n° 11008281, registered on October 2, 2013 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, 40, 41, 42 and 44;

- the international word trademark LEROY MERLIN n° 591251, registered on July 15, 1992 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.

The Complainant also registered numerous domain names, amongst which incorporating the LEROY MERLIN trademark:

- <leroy-merlin.com>, registered on June 27, 1997;
- <leroy-merlin.eu>, registered on July 8, 2006;
- <leroymerlin.com>, registered on September 13, 1996;
- <leroymerlin.eu>, registered on May 1, 2006;

The disputed domain name <leroymerlin-sagroupes.online> was registered by the Respondent on January 24, 2021.

At the time of the complaint as well as at the time of the decision, the disputed domain name points to an error page.

The Panel is requested to transfer the disputed domain name to the Complainant.

5. Parties’ Contentions

A. Complainant

In accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complainant relies are set out below.

First of all, the Complainant stands that the disputed domain name is identical or confusingly similar to its LEROY MERLIN trademarks, since it is composed of an exact reproduction of the Complainant’s trademark LEROY MERLIN, to which have been added the term “sagroupes”, with an hyphen between them, and the suffix “.online”.

The Complainant underlines that the sole difference between the disputed domain name and the LEROY MERLIN trademarks is the adjunction of the term “sagroupes”, which refers to the form of the Complainant and of the Leroy Merlin company, separated from the reproduction of the LEROY MERLIN trademark by an hyphen.

The Complainant also insists on the high distinctiveness of the LEROY MERLIN trademarks, that have no meaning in either English or in French, and that is a contraction of the last names of the founders of the Leroy Merlin company.

Furthermore, the Complainant considers that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since the Respondent has never registered the LEROY MERLIN trademark and has never acquired any common law rights on this wording, and since the Complainant has neither authorized nor licensed the Respondent in any way to use or exploit the LEROY MERLIN trademarks, to register the disputed domain name or to associate itself with the Complainant, which neither does know, nor has never been in a relationship with the Respondent.

Moreover, the Complainant argues that the redirection of the disputed domain name to an unused website does not constitute a bona fide use or non-use of a domain name, so that the Respondent has not made a legitimate non commercial or fair use of the disputed domain name, only trying to generate confusion in the mind of the public that is led to think that beside the disputed domain name there is an official website that is owned by the Complainant.

At least, the Complainant argues that the Respondent has registered and is using the disputed domain name in bad faith, arguing that the Respondent registered it with knowledge of the existence of the LEROY MERLIN trademark, given the fact that the Complainant is well-known throughout many countries, the composition of the disputed domain name, which strongly suggests that the Respondent had the LEROY MERLIN trademark in mind when registering the disputed domain name, and the fact that the registration of the LEROY MERLIN trademarks significantly predates the registration date of the disputed domain name.

The Complainant also indicates that the disputed domain name did not resolve, at the time of the complaint, to any website, which constitutes passive holding and thus bad faith use, since there is no evidence of any intent of the Respondent to use the disputed domain name, nor of any beginning of such use, and given that the Respondent could not be unaware of the worldwide strong reputation of the LEROY MERLIN trademark.

The Complainant considers that the conduct adopted by the Respondent only aims at attracting Internet users to its unused website, creating a likelihood of confusion with the Complainant’s trademarks and damaging the Complainant’s reputation.

The Complainant further states that it is currently victim of a phishing campaign, with numerous domain names featuring the LEROY MERLIN trademark having been registered by a third party and being used to create email addresses from which the third party contacts the Complainant’s suppliers to order products on behalf of the Complainant, producing fake order forms, one of which domain names being almost identical to the disputed domain name (<leroymerlin.sa-groupes.com>) and linking to the Complainant’s website.

The Complainant thus considers that it has many reasons to believe that the disputed domain name is being used in bad faith as part of this phishing campaign.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

First of all, the Panel finds that the Complainant has provided evidence that it has rights on the LEROY MERLIN trademarks.

Then, the Panel notices that the disputed domain name is composed of the exact reproduction of the LEROY MERLIN trademark, to which has been added (i) the term “sagroupes” and (ii) an hyphen between the LEROY MERLIN trademark and the term “sagroupes”, and (iii) and generic Top-Level Domain (“gTLD”) “.online”.

The applicable gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark.

The Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the domain name. This test typically involves a side‑by‑side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the UDRP (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRR Questions, Third Edition (“WIPO Overview 3.0”)).

The Panel believes that the full and identical reproduction in the disputed domain name of the LEROY MERLIN trademark makes the disputed domain name confusingly similar to the LEROY MERLIN trademarks, and that the mere addition of the word “sagroupes”, separated from the LEROY MERLIN trademark by an hyphen, does not prevent a finding of confusing similarity.

Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain name is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.

These circumstances are:

- before any notice 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
- the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
- 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.

According to prior UDRP panel decisions, it is sufficient that the complainant shows prima facie that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the respondent (see Croatia Airlines did. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Indeed, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out prima facie that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0).

According to the Panel, the Complainant has shown a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since the Complainant did not authorize or license the Respondent to use or exploit its LEROY MERLIN trademarks, no to register the disputed domain name, nor otherwise to be associated with the Complainant.

In addition, none of the circumstances set forth in paragraph 4(c) of the Policy appear to be met in this case.

However, the Respondent did not reply to the Complainant’s contentions.

Therefore, according to the Policy, paragraph 4(a)(ii) and 4(c), the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain name <leroymerlin-sagroupes.online>.

C. Registered and Used in Bad Faith

According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the disputed domain name has been registered and is being used in bad faith.

Thus, paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line 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 the respondent’s website or location.

Section 3.3 of the WIPO Overview 3.0 provides that different factors are relevant in determining a finding of bad faith under the doctrine of passive holding, including:

(i) the degree of distinctiveness or reputation of the complainant’s mark,

(ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use,

(iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and

(iv) the implausibility of any good faith use to which the domain name may be put.

First of all, the Panel finds that it is established that the Complainant’s trademarks were registered before the registration of the disputed domain name, and that the Respondent could not have been unaware of the Complainant’s prior trademarks at the time of the registration of the disputed domain name, given the strong reputation of the Complainant and the fact that the disputed domain name reproduces the LEROY MERLIN trademark in its entirety and identically, having only added the word “sagroupes”, separated from the LEROY MERLIN trademark by a hyphen, which refers to the corporate form of both the Complainant and the Leroy Merlin company. The addition of the term “sagroupes” creates a likelihood of confusion given that it refers to the corporate form of the Complainant and of the Leroy Merlin company.

This exact reproduction of the Complainant’s trademarks results in the misleading of Internet users seeking information or wishing to enter into a relationship with the Complainant (see for example Puravankara Projects Limited v. Saurabh Singh, WIPO Case No. D2014-2054).

Then, the Panel finds that the disputed domain name is not currently used, given that it points to an error page, but wishes to remind that such “passive holding” does not prevent a finding of bad faith, since according to prior UDRP panel decisions the panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith (See section 3.3 of the WIPO Overview 3.0 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Indeed, the Panel considers that the passive holding of the disputed domain name proves that the Respondent acts in bad faith. The particular circumstances of this case which lead to this conclusion are:

- the strong reputation of the LEROY MERLIN trademarks;
- the fact that there is no evidence of any intent of the Respondent to use the disputed domain name, nor of any beginning of such use;
- the lack of rights or legitimate interests of the Respondent in respect of the disputed domain name;
- the fact that the Respondent has not provided any answer to the Complainant’s contentions;
- taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate.

Therefore, in view of all the circumstances of this case the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith according to the Policy, paragraph 4(a)(iii) and 4(b).

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 disputed domain name <leroymerlin-sagroupes.online> be transferred to the Complainant.

Christiane Féral-Schuhl
Sole Panelist
Date: May 5, 2021