WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mercadona, S.A. v. Artsiom Kastrouski, Private Person

Case No. D2021-3254

1. The Parties

The Complainant is Mercadona, S.A., Spain, represented by Berenguer & Pomares Abogados, Spain.

The Respondent is Artsiom Kastrouski, Private Person, Belarus.

2. The Domain Names and Registrar

The disputed domain names <deliplus.shop> and <mercadona-online.shop> are registered with Tucows Inc. Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2021. On October 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 1, 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 the Complainant on October 4, 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 amended Complaint on October 7, 2021. On October 8, 2021, the Center requested the Complainant to submit a new complaint (and annexes) in accordance with the size limits under the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). On October 8, 2021, the Complainant submitted a second amended Complaint that complied with the required size limits.

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 Supplemental Rules.

On October 4, 6, 8, 9 and 12, 2021, a person who did not indicate his or her name submitted a number of communications from an email address (“mercadonaonline.shop@[...]”) different from the email address of the registrant of the disputed domain name, as provided by the Registrar to the Center.

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2021. In view of the abovementioned email communications, the Center informed the Parties on October 12, 2021, that the due date for the Response was November 1, 2021, and requested a confirmation of whether these email communications were to be regarded as the full Response. The last of these communications contained a confirmation that the full set of documents had been sent to the Center. Accordingly, the Center notified the parties of the commencement of the Panel appointment process.

The Center appointed Assen Alexiev as the sole panelist in this matter on October 25, 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.

On November 9, 2021, the Respondent submitted a communication to the Center from a second email address different from the email address of the registrant of the disputed domain name, as provided by the Registrar to the Center. This communication contained a statement that the sender did not have any information. On November 9, 2021, the Center reminded the Parties that the Complaint was filed against the Respondent as identified by the Registrar, and requested the sender of the correspondence of November 9, 2021 to identify herself or himself, clarifying her/his relationship (if any) to the Respondent, and to provide information sufficient to establish the legitimacy of her/his submission in the context of the current proceedings. On November 9, 2021, the Respondent wrote to the Center to inform that he or she was using a corporate mail that had received redirected and duplicated email messages from all websites developed by him or her.

On November 9, 2021, the Respondent wrote to the Center (from the email address of the registrant of the disputed domain name) to state that it had not received any notifications about the progress of the proceeding and no documents about it, and was not given an opportunity to submit statements and information.

On November 10, 2021, the Complainant submitted an unsolicited supplemental filing. On November 11, 2021, another third party sent a communication from yet another email address (“deliplus.shop@[...]”) different from the email address of the registrant of the disputed domain name, as provided by the Registrar to the Center. By this communication, its sender disputed the statements contained in the supplemental filing of the Complainant.

On November 15, 2021, the Panel issued his Procedural Order No.1, by which he accepted the supplemental filing sent by the Complainant on November 10, 2021 and the response to it, sent on November 11, 2021, and invited the registrant of the disputed domain names, as disclosed by the Registrar, to comment on the Complainant’s supplemental filing dated November 10, 2021, and to clarify its relationship and involvement regarding the disputed domain names, the corresponding websites at the disputed domain names, and with the persons or entities in control of the email addresses from which communications to the Center had been made in relation to this proceeding, as mentioned above. The Respondent however did not file any comments in response to Procedural Order No.1.

On November 23, 2021, the person using the email address (“mercadonaonline.shop@[...]”) submitted an unsolicited supplemental filing. As this supplemental filing was not from the Respondent, as disclosed by the Registrar, had not been requested by the Panel, and did not contain any justification for its late submission, the Panel decided not to accept it. However, the Panel notes that even if such unsolicited supplemental filing was to be considered, its content would not have changed the outcome of this decision.

4. Factual Background

The Complainant is the largest supermarket chain in Spain. It was established in 1977. The chain includes more than 1,640 supermarkets located in Spain and Portugal and has 90,000 employees. The Complainant was ranked the 36th largest retailer in the world by revenue in Deloitte’s report Global Powers of Retailing 2020.

The Complainant is the owner of the following trademark registrations for the sign “MERCADONA” (the “MERCADONA trademark”):

− the European Union trademark MERCADONA with registration No. 011487386, registered on January 26, 2014 for goods and services in International Classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45;

− the European Union trademark MERCADONA with registration No. 011452811, registered on July 3, 2015 for goods and services in International Classes 1, 2, 3, 4, 5, 6, 8, 9, 10, 11, 16, 18, 20, 21, 22, 24, 25, 26, 28, 29, 30, 31, 32, 33, 34, 35, 39; and

− the European Union MERCADONA with registration No. 015596191, registered on April 12, 2017 for services in International Class 35.

The Complainant markets personal care and beauty products under the brand “DELIPLUS”. The Complainant is the owner of the following trademark registrations for “DELIPLUS” (the “DELIPLUS trademark”):

− the European Union trademark DELIPLUS with registration No. 011552098, registered on February 26, 2017 for goods and services in International Classes 1, 2, 3, 4, 5, 6, 8, 9, 10, 11, 16, 18, 20, 21, 22, 24, 25, 26, 28, 29, 31, 34, 35 and 39; and

− the European Union trademark DELIPLUS with registration No. 005159322, registered on February 14, 2017 for goods in International Classes 3, 5 and 21.

The disputed domain name <mercadona-online.shop>was registered on July 3, 2020. It resolves to a Spanish language website that apparently offers for sale products that are also offered for sale by the Complainant. The website contains a link to the website at the disputed domain name <deliplus.shop>.

The disputed domain name <deliplus.shop> was registered on July 11, 2020. It resolves to a website that appears to offer for sale the Complainant’s Deliplus products.

5. Parties’ Contentions

A. Complainant

The Complainant states that in July 2020, it noticed the existence of the website at the disputed domain name <mercadona-online.shop> which had the appearance of an official online shop of the Complainant. In November 2020, the Complainant started receiving communications from several customers informing about scam, fraudulent activities, impersonation of the Complainant and rude treatment by operators of the website at the disputed domain name <mercadona-online.shop>. On June 22, 2021 the Complainant sent a communication to the Respondent requesting the withdrawal of the website and the cessation in the use of the MERCADONA trademark. The Complainant received no response from the Respondent.

The Complainant states that the disputed domain name <mercadona-online.shop> is confusingly similar to the MERCADONA trademark because it reproduces this trademark by only adding “-online”, which is a generic word on the Internet, and the disputed domain name <deliplus.shop> is identical to the DELIPLUS trademark.

According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain names, because the Complainant has not licensed nor authorized the use of its MERCADONA and DELIPLUS trademarks for the registration of the disputed domain names, the Respondent is not commonly known by the disputed domain names, and is using them for commercial purposes by taking advantage of the Complainant’s MERCADONA and DELIPLUS trademarks. In the Complainant’s submission, all elements of the websites at the disputed domain names have been conceived to deceive users as to the authentic business behind the websites and to give the impression that the disputed domain names are official online shops of the Complainant. When the Complainant first noticed the existence of the Respondent’s website at the disputed domain name <mercadona-online.shop>, it contained a logo that was identical to the Complainant’s MERCADONA trademark. After the Complainant communicated with the Registrar and the hosting provider about this disputed domain name, the Respondent made some slight changes to this logo, but it remained confusingly similar to the logo used by the Complainant. The title of the associated website is “Empieza tu compra en Mercadona” (in English – “Start shopping in Mercadona”), which is the same title as the one included on the Complainant’s official online shop at the domain name <mercadona.es>, and the website uses a similar color scheme.

After placing a purchase order in the website, the customer receives a confirmation email in Spanish signed as “Mercadona” and indicating the official telephone number of the Customer Service of the Complainant as a contact telephone number. The Complainant further submits that the website at the disputed domain name <deliplus.shop> contains the logo “DELIPLUS”. The Complainant notes that neither of the Respondent’s websites shows any other trademarks or commercial names apart from “MERCADONA” and “DELIPLUS”, and it is hard for customers to realize that the websites are not associated to the Complainant. According to the Complainant, the cumulative requirements outlined in the “Oki Data test” are not met in the present case, as even if the Respondent was actually and legally offering the Complainant’s goods, it does not accurately and prominently disclose its relationship with the Complainant.

After the Complainant contacted the Registrar and the hosting provider, the Respondent added a small and hidden within other paragraphs notice at the bottom of its website stating “Atención, no somos el sitio oficial de mercadona, sino que solo brindamos un servicio más conveniente para la formación de carritos de compras (…)” (in English -“Attention, we are not the official site of mercadona, but we provide a most convenient service to fill shopping carts (…)”.) The Complainant submits that even if the Respondent’s offers were real and the purchase orders were effectively served to customers, the Respondent’s business would consists on charging an extra 17% of the purchase value as alleged at the bottom of the website at the disputed domain name <mercadona-online.shop>. The Complainant adds that the website at the disputed domain name <mercadona-online.shop> is not used to sell only the trademarked goods or services, but the Respondent has been adding other links to external websites.

The Complainant contends that the disputed domain names were registered and are being used in bad faith. It notes that its MERCADONA and DELIPLUS trademarks are famous, which is confirmed by the Respondent’s statement at the bottom of its website at the disputed domain name <deliplus.shop>: “We only sell 100% original cosmetics from famous Spanish brand.” According to the Complainant, the Respondent was well aware of the existence and the attractiveness of Complainant’s trademarks when it registered the disputed domain names and tried to impersonate the Complainant’s official website and created deceptive websites aimed at scamming users.

With its supplemental filing, the Complainant submitted its correspondence with a person who had ordered goods from the website at the disputed domain name <deliplus.shop> believing that she was dealing with the Complainant.

B. Respondent

While there are email communications received from an unidentified individual, the Panel notes that these are in response to the contentions of the Complainant, and noting the Panel’s below determination on the Respondent, the Panel will refer to these email communications as part of the Respondent’s contentions.

The Respondent maintains that the Complaint has to be rejected. It denies that the disputed domain names have been used for fraudulent activities. According to it, they were registered to make the Complainant’s goods accessible in countries where they are not available, such as the Russian Federation and Belarus, and to allow the consumers in Spain an easier access to the ordering system of the Complainant. The Respondent submits that its activities have a history of positive reviews by clients, and maintains that it has never deceived them and the evidence of fraudulent activities submitted by the Complainant is not true.

According to the Respondent, the registrant of the disputed domain names is the manager of a software company that develops Internet shops. This person manages the websites at the disputed domain names on a contractual basis, and bears no liability for trademark disputes.

In respect of the website at the disputed domain name <deliplus.shop>, the Respondent states that its target market includes Asia and the CIS countries where the DELIPLUS trademark is not registered, so the operator of the associated website can freely use it. The website does not deceive consumers because all goods offered for sale on it are genuine products of the Complainant and are purchased from the Complainant’s commercial network. The website does not infringe trademarks because it is not active in countries where the DELIPLUS trademark is registered.

In respect of the website at the disputed domain name <mercadona-online.shop>, the Respondent submits that this project was developed to improve the possibilities for clients to order goods from the commercial network of the Complainant, because the Complainant’s website at the domain name <mercadona.es> is available only in four big cities and does not have a user-friendly graphical interface. The Respondent made numerous attempts to get in contact with the Complainant, and since they were unsuccessful, the Respondent developed a system which included similar goods with the same prices as on the Complainant’s official website. The system accepts orders from clients, checks their availability, creates user accounts for the clients in the system of the Complainant and attaches corporate cards to these accounts, transfers the orders in these user accounts, forwards the orders to the Complainant, readdresses the confirmations received from the Complainant’s system, expects the delivery and checks the statuses of the orders. The Respondent maintains that it has always informed clients that it is not an official website but only an intermediary who offers a more convenient service, for which it receives a commission of 17%, and that it has always returned to clients the amounts they have paid if they cancelled their orders.

The Respondent further submits that a company has been registered in Belarus under the name “DeliplusShop LLC”, and the disputed domain name <deliplus.shop> is an integral part of the name of this company. A second company has also been registered in Belarus under the name “MerkadonaOnlineShop LLC”, and this company has the right to use this name and the name of the associated website.

6. Discussion and Findings

6.1. Procedural issue – the Respondent

The Center has received communications from unidentified persons in the course of this proceeding, and these communications contain arguments and evidence in response to the contentions of the Complainant. The registrant identified by the registrar has not submitted a formal Response and has not made any submission in response to Procedural Order No.1 of the Panel, whereby it was invited to clarify its relationship and involvement regarding the disputed domain names, the corresponding websites at the disputed domain names, and with the persons or entities in control of the email addresses from which communications to the Center had been made in relation to this proceeding. The registrant has also not objected to the statements of these persons or entities made in this proceeding, and the email addresses from which they have communicated to the Center have been listed by the Complainant as alternative email addresses of the Respondent. While it seems from some of the email communications that the registrant of the disputed domain names (Artsiom Kastrouski) may be a web developer hired by the persons or entities controlling the websites at the disputed domain names, the Panel notes that the registrant has some responsibilities arising from the registration of the disputed domain names.

In view of the above, the Panel accepts as more likely than not that the registrant (being the named Respondent in the Amended Complaint) and the persons or entities in control of the email addresses from which communications to the Center had been made in relation to this proceeding in response to the Complainant’s contentions are acting in concert. The Panel will regard all their statements as part of the Respondent’s contentions, and will refer to all of them as the Respondent.

A. Identical or Confusingly Similar

The Complainant has provided evidence that it is the owner of the MERCADONA and the DELIPLUS trademarks. In view of this, the Panel accepts that the Complainant has established its rights in these trademarks for the purposes of the present proceeding.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.shop” gTLDs of the disputed domain names.

The disputed domain name <deliplus.shop> incorporates the DELIPLUS trademark in its entirety without any other elements. It is therefore identical to this trademark.

The disputed domain name <mercadona-online.shop> incorporates the MERCADONA trademark in its entirety together with a hyphen, and the word “online”, and the MERCADONA trademark remains easily recognizable in the disputed domain name. As discussed in section 1.8 of the WIPO Overview 3.0, in cases where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element. Therefore, the Panel finds that the disputed domain name <mercadona-online.shop> is confusingly similar to the MERCADONA trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP 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 a prima facie case 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.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names, because the Complainant has not authorized it to use the MERCADONA and DELIPLUS trademarks, and the Respondent is not commonly known by the disputed domain names but is using them for commercial gain, taking advantage of the goodwill of the Complainant’s trademarks. According to the Complainant, the websites at the disputed domain names have been conceived to deceive consumers by creating the impression that they are official online shops of the Complainant. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.

The Respondent maintains that it does not infringe the Complainant’s trademarks, as it operates in markets where they have not been registered, and that it offers a better service to the clients of the Complainant. According to the Respondent, its websites do not deceive consumers because all goods offered for sale on them are genuine products of the Complainant and are purchased from the Complainant’s commercial network. The Respondent further notes that two companies have been registered in Belarus with trade names that include the disputed domain names, so according to the Respondent these companies are entitled to use them.

The disputed domain names incorporate the MERCADONA and DELIPLUS trademarks, which were first registered years earlier, and the evidence in the case file shows that the websites at the disputed domain names operate as online shops offering and selling various goods produced by the Complainant or offered in its retail network. The website at the disputed domain name <mercadona-online.shop> is in Spanish and is directed at Spanish consumers, while the website at the disputed domain name <deliplus.shop> includes some texts in English, but all offered products are described in Spanish, so this website is practically directed at Spanish consumers as well. This is further confirmed by the correspondence with clients submitted by the Parties. The Respondent’s statement that it does not operate in markets where the MERCADONA and DELIPLUS trademarks have been registered is therefore clearly wrong.

The websites at the disputed domain names do not mention the two companies from Belarus referred to by the Respondent, and the Respondent has not provided evidence that they are involved in its commercial activities in Spain. In view of this, it appears to the Panel that the two companies have been registered in an attempt to create an appearance of the existence of rights or legitimate interests in the disputed domain names. In addition, the Panel notes that the incorporation of these companies is not sufficient in itself as to give rise to rights or legitimates interests in the disputed domain names, as the Panel finds the Respondent tries to take advantage of the identity and confusing similarity of the disputed domain names with the Complainant’s trademark.

There is no disclaimer on the website at the disputed domain name <deliplus.shop> for the lack of relationship between the Parties, and this website includes a prominent DELIPLUS logo on its top left side. The website at “mercadona-online.shop” contains in its bottom a long statement with small letters, which includes the words “Atención, no somos el sitio oficial de mercadona, sino que solo brindamos un servicio más conveniente para la formación de carritos de compras …” (in English - “Attention, we are not the official site of mercadona, but we provide a most convenient service to fill shopping carts …)”.This message is difficult to notice, and on the top of the website there is a prominent MERCADONA logo which is practically identical in appearance to the MERCADONA trademark. The website also displays the texts “Mercadona online shopping products all of Spain buy online” and “Empieza tu compra en Mercadona Ahora pedir productos en la tienda mercadona se ha vuelto aún más cómodo y sencillo que antes” (in English - “Start your purchase at Mercadona Now ordering products in the mercadona store has become even more comfortable and simple than before.”)

As discussed in section 2.8.1 of the WIPO Overview 3.0, Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the “Oki Data test”, certain cumulative requirements will be applied in the specific conditions of a UDRP case, among which is the requirement that the respondent’s website must accurately and prominently disclose the registrant’s relationship with the trademark holder. As noted by the Complainant, the conduct of the Respondent does not comply with this requirement in the Oki Data test. The Respondent’s websites do not accurately disclose the lack of relationship between the Parties (and the text added in “mercadona-online.shop” is not sufficient for this purpose), because their design and content are likely to create the impression in consumers that they are visiting official websites of the Complainant. In addition, as discussed in section 2.5.1 of the WIPO Overview 3.0, the Panel notes that an impression of implied affiliation is created due to the nature of the disputed domain names.

In view of the above, the Panel concludes that it is more likely than not that the Respondent has targeted the MERCADONA and DELIPLUS trademarks with the registration of the disputed domain names in an attempt to improperly capitalize on the reputation and goodwill associated with these trademarks by confusing Internet users that the disputed domain names are affiliated to the Complainant and attracting them to the associated websites for commercial gain. In the Panel’s view, such conduct is not legitimate and does not give rise to rights or legitimate interests of the Respondent in the disputed domain names.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

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

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

As discussed in the section on rights and legitimate interests above, the disputed domain names, being identical or confusingly similar to the Complainant’s trademarks, resolve to active commercial websites that do not accurately disclose the lack of relationship between the Parties, and their design and content are likely to create the impression in consumers that they are visiting official websites of the Complainant and are dealing with it. The Respondent states that its intention was to offer a better service to the clients of the Complainant.

In view of the above, the Panel concludes that the Respondent was very well aware of the goodwill of the Complainant’s MERCADONA and DELIPLUS trademarks when it registered the disputed domain names, and that it has registered and used them in an intentional attempt to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites and of the goods and services offered on them.

In view of all the above, the Panel finds that the disputed domain names have been registered and are being used in bad faith.

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 names <deliplus.shop> and <mercadona-online.shop> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: December 7, 2021