WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Groupe Adeo v. Domains By Proxy, LLC / Ivan Costin
Case No. D2021-2242
1. The Parties
Complainant is Groupe Adeo, France, represented by Coblence Avocats, France.
Respondent is Domains By Proxy, LLC, United States of America / Ivan Costin, Russian Federation.
2. The Domain Names and Registrars
The disputed domain names <leroy-moscow.com> and <leroy-spb.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2021. On July 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 13, 2021, the Registrar 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 Complainant on July 15, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on July 15, 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 Respondent of the Complaint, and the proceedings commenced on July 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 16, 2021. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 15, 2021.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on September 21, 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
Complainant, Group Adeo, is a French company providing home improvement and DIY retail services through a platform of brands. Among Complainant’s many brands is LEROY MERLIN, a DIY retail outlet in the home and lifestyle markets with over 400 stores in countries around the world, including Russian Federation, which is of particular relevance in this proceeding. Complainant owns a number of trademark registrations for the LEROY MERLIN mark both as a word and figurative mark in connection with Complainant’s goods and services. These include registrations for LEROY MERLIN in the European Union (Registration No. 10843597) which issued to registration on December 7, 2012, International Trademark registrations for LEROY-MERLIN (Registration Nos. 591251 and 618818) which issued to registration in 1992 and 1994 respectively and were extended to Russian Federation, and an International Trademark Registration for LEROY MERLIN (Registration No. 1283242) which issued to registration in 2014 and was extended to Russian Federation.
Complainant also owns and operates a number of websites that concern Complainant’s LEROY MERLIN products and services, including “www.leroymerlin.com” and country specific websites, such as “www.leroymerlin.ru” and “www.leroymerlin.fr”.
Respondent registered the <leroy-moscow.com> disputed domain name on April 22, 2021 and the <Leroy-spb.com> disputed domain name on May 6, 2021. Respondent has used the disputed domain name for Russian language websites that offer for sale various furniture, tools, building materials and related products in Russian Federation. Respondent’s websites have included a disclaimer as follows at the bottom of each website: “Attention! This site is not the official site of the Leroy Merlin chain of stores. Our company is an independent legal entity and is not included in the Leroy Merlin chain of stores. Our company does not sell goods, but only provides services for the delivery of goods from the stores of the Leroy Merlin chain. Official site [spb.]leroymerlin.ru.”
5. Parties’ Contentions
Complainant contends that it has developed strong rights in the LEROY MERLIN mark by virtue of its longstanding use and registration of the LEROY MERLIN mark in numerous countries around the world, including Russian Federation.
Complainant asserts that the disputed domain names are confusingly similar to Complainant’s LEROY MERLIN mark as they both consist of the LEROY portion of Complainant’s mark with the non-distinctive geographic locations of Moscow and SPB (an abbreviation for Saint Petersburg).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names as Respondent (i) owns no rights in the LEROY MERLIN trademark, (ii) is not authorized or licensed by Complainant to use the LEROY MERLIN mark and has no connection to Complainant, and (iii) has used the disputed domain names with websites that “offer services for the sale of DIY equipment and decorative items” and in a way that creates confusion that the disputed domain names and associated websites are connected to Complainant.
Lastly, Complainant contends that Respondent has registered and used the disputed domain names in bad faith as the disputed domain names are imitations of Complainant’s well-known LEROY MERLIN mark. Complainant further contends that Respondent has featured imitations of Complainant’s LEROY MERLIN marks, LEROY MERLIN logo and the color scheme used by Complainant on its website on the websites associated with the disputed domain names. Complainant also argues that given the disclaimers included on Respondent’s websites, Respondent was clearly aware of Complainant and its LEROY MERLIN mark. Complainant notes that Respondent has even sold products on its website at the disputed domain names that include the LEROY MERLIN mark, thereby not only establishing that Respondent has at all relevant times been aware of Complainant and its LEROY MERLIN mark but has acted in bad faith for its own profit.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
Here, although Respondent has failed to respond to the Complaint, the default does not automatically result in a decision in favor of Complainant, nor is it an admission that Complainant’s claims are true. The burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A Panel, however, may draw appropriate inferences from a respondent’s default in light of the particular facts and circumstances of the case, such as regarding factual allegations that are not inherently implausible as being true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0 at section 1.2.1. Complainant has provided evidence that it owns and uses the LEROY MERLIN mark in connection with its DIY retail outlet for home and lifestyle products and services and that it owns numerous trademark registrations for the LEROY MERLIN mark around the world, including the European Union and Russian Federation, that issued well before Respondent registered the disputed domain names.
With Complainant’s rights in the LEROY MERLIN mark established, the remaining question under the first element of the Policy is whether the disputed domain names (typically disregarding the generic Top-level domain such as “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, Complainant argues that the disputed domain name are confusingly similar to Complainant’s LEROY mark as they incorporate the identical LEROY portion of the LEROY MERLIN mark at the head of the disputed domain names. In that regard, the Panel notes that the addition of the geographic locations “Moscow” and “SPB” for Saint Petersburg at the tail of the disputed domain names and separated from LEROY by a hyphen, further highlights and sets apart the LEROY component of the disputed domain names. While the disputed domain names do not contain the full LEROY MERLIN mark, given that a dominant aspect of Complainant’s mark is featured and recognizable at the head of the domain name, and given that the websites at the disputed domain names concern products and/or services of Complainant under its LEROY MERLIN mark, it is obvious that the disputed domain names are meant to relate to Complainant’s LEROY MERLIN mark. See generally WIPO Overview 3.0 at section 1.7.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s LEROY MERLIN mark and in showing that the disputed domain names are confusingly similar to that trademark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
What the evidence submitted in this proceeding shows, none of which Respondent has contested, is that Respondent has used the disputed domain names for websites that offer various furnishings, tools, building materials and other items for sale. Given Complainant’s rights in the LEROY MERLIN mark in connection with DIY, home improvement and lifestyle goods and services, it seems more likely than not, based on the evidence before the Panel, that Respondent’s actions were designed to suggest that Respondent’s websites at the disputed domain names are affiliated with, connected to or authorized by Complainant, when such is not the case. A consumer visiting Respondent’s websites at the disputed domain names would likely believe that the domain names and websites are somehow connected to or authorized by Complainant, given (i) the prominent use of LEROY in the disputed domain names, (ii) the several uses of the LEROY MERLIN mark on the websites or a figurative version LEROY with either “Moscow” or “spb” that conjures up Complainant’s logo, (iii) the use of product photographs that show the LEROY MERLIN mark or logo, (iii) the offering of LEROY MERLIN items such as gift certificates on the websites, and (iv) text that suggests a connection to Complainant.
With regard to this last point, the Panel notes that an “about us” page of Respondent’s websites describes Respondent as follows:
“Have you decided to start renovating or want to make your home more cozy and comfortable? In “Leroy St. Petersburg” you will find everything you need for this. A wide selection of building materials, plumbing, electrical goods, wallpaper and flooring, home decor products, work tools and everything for home improvement - you can order all this online right now.1
Our main goal is to organize the most convenient delivery for you and bring any product from the catalog.”
The fact that Respondent included a small disclaimer at the very bottom of the websites at the disputed domain names in muted lettering, as shown below, further show Respondent’s actions were designed to suggest that Respondent’s websites at the disputed domain names are somehow connected or authorized by Complainant.
“Attention! This site is not the official site of the Leroy Merlin chain of stores. Our company is an independent legal entity and is not included in the Leroy Merlin chain of stores. Our company does not sell goods, but only provides services for the delivery of goods from the stores of the Leroy Merlin chain. Official site spb.leroymerlin.ru.”
Indeed, the muted disclaimer, if even noticed by a consumer, could easily be read to suggest that Respondent is operating an authorized or sanctioned delivery service for Complainant’s LEROY MERLIN stores in Moscow or Saint Petersburg. Simply put, Respondent has sought to pass itself off as connected to Complainant and has done so by using domain names and websites that heighten an alleged connection. Such actions by Respondent are not legitimate.
Given that Complainant has established with sufficient evidence that it owns rights in the LEROY MERLIN mark, and given Respondent’s above noted actions, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
C. Registered and Used in Bad Faith
In the present case, Respondent has registered and used disputed domain names that expressly play upon the LEROY MERLIN mark in connection with websites that are likely to be viewed as connected to or authorized by Complainant. Given the many features in Respondent’s websites that relate to Complainant and the LEROY MERLIN mark, as noted above, it appears that Respondent’s intent was to pass itself off as connected to Complainant or to be seen as an official or authorized service of Complainant in Moscow or Saint Petersburg.
It is again worth noting that Respondent’s purported disclaimer is buried at the bottom of Respondent’s websites in muted lettering. Such an inconspicuous disclaimer undermines any claim by Respondent that it took reasonable steps to avoid passing itself off as related to Complainant. Simply put, Respondent’s actions make it more likely than not that Respondent opportunistically registered and used the disputed domain names, which are based on Complainant’s LEROY MERLIN mark, to intentionally and misleadingly attract Internet users to Respondent’s websites for Respondent’s own profit. See WIPO Overview 3.0, Section 3.1.4 (and cases cited therein).
Accordingly, the Panel finds that Complainant succeeds under this element 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 names <leroy-moscow.com> and <leroy-spb.com> be transferred to Complainant.
Date: October 5, 2021
1 The “about us” page in the website at <leroy-moscow> appears to have been similar, but with a reference to “Leroy Moscow” as opposed to “Leroy St Petersburg.”