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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kingfisher France SAS v. Domains by Proxy Inc. and Reinhard Herrmann

Case No. D2009-1167

1. The Parties

Complainant is Kingfisher France SAS of Templemars, France, represented by Cabinet Plasseraud, France.

Respondents are Domains by Proxy Inc. of Arizona, United States of America, and Reinhard Herrmann of Ockenheim, Germany.

2. The Domain Name and Registrar

The disputed domain name <bricodépot.com> [xn--bricodpot-g4a.com] (the "Domain Name") is registered with GoDaddy.com, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 2, 2009. On September 3, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 4, 2009, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. On September 7, 2009, the Center sent an email communication to Complainant providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On September 9, 2009, Complainant filed an amended Complaint. The Center verified that 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 WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 11, 2009. On October 1, 2009, at Complainant`s request, the matter was suspended in order to give the Parties an opportunity to settle the matter amicably. On December 29, 2009, the matter was re-instituted at Complainant`s request. In accordance with the Rules, paragraph 5(a), the due date for Response was January 3, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent`s default on January 5, 2010.

The Center appointed Assen Alexiev as the sole panelist in this matter on January 11, 2010. 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

"Brico Depot" is the trade name of more than one hundred stores run by Complainant`s subsidiary and affiliates.

Complainant is the owner of the following trademarks:

- BRICO DEPГ”T, registered in France with reg. No.93485546 of September 29, 1993;

- BRICO DEPOT, registered in France with reg. No.3439634 of July 7, 2006;

- BRICO DEPOT, International registration No.IR612974 of December 30, 1993;

- BRICO DEPOT, International registration No. IR914334 of December 21, 2006;

- BRICO DEPГ”T, International registration No.IR826852 of April 28, 2004; and

- BRICO DEPOT, International registration No.IR831331 of March 4, 2004.

5. Parties` Contentions

A. Complainant

Complainant contends that the Domain Name is identical to Complainant`s BRICO DEPOT trademarks.

In Complainant`s submission, Respondents have no rights or legitimate interests in respect of the Domain Name, since they have no relevant prior rights, trademarks or trade names.

Further, Complainant contends that the Domain Name was registered and is being used in bad faith. The Domain Name is linked to a parking website which contains many pay-per-click links and key words related to Complainant`s business activities and to the goods and services covered by Complainant`s trademarks ― do-it-yourself goods and services.

The Domain Name is used for commercial purposes and exploits the reputation of Complainant and its trademarks. The Domain Name provides access to web pages selling goods which are identical to or competing with the goods for which Complainant`s trademarks are registered, which is evidence of Respondents` knowledge of Complainant`s rights. Respondents have used the Domain Name to profit from the attraction of traffic and the generation of pay-per-click revenues from advertising links to external websites, including websites of some of Complainant`s competitors.

Complainant also submits that Respondents have employed "cloaking" through the use of a hidden webpage containing keywords, links and other content, related to do-it-yourself articles and services, including Complainant`s BRICO DEPOT trademarks. This page, although invisible for Internet users, is taken into account by search engines. The use of cloaking is evidence that Respondents have intentionally attempted to attract Internet users to the website exploiting the fame and goodwill of Complainant`s BRICO DEPOT trademarks.

Further, the website at the Domain Name invites offers for its purchase by interested parties, which is evidence that its registration was made for speculation purposes.

Lastly, one of Respondents – Reinhard Herrmann, has already been found to have acted in bad faith in other proceedings related to domain names.

Complainant requests the transfer of the Domain Name.

B. Respondents

Neither of Respondents filed a Response.

6. Discussion and Findings

Pursuant to Policy, paragraph 4(a), Complainant must prove each of the following to justify the transfer of the Domain Name:

(i) That the Domain Name registered by Respondents is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) That Respondents have no rights or legitimate interests in respect of the Domain Name; and

(iii) That Respondents have registered and are using the Domain Name in bad faith.

By Rules, paragraph 5(b)(i), it is expected of a respondent to: "[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…"

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to both Respondents, in compliance with Rules, paragraph 2(a), and Respondents were given a fair opportunity to present their cases.

In the event of a default, under Rules, paragraph (14)(b): "…the Panel shall draw such inferences therefrom as it considers appropriate."

As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy`s Antiques, WIPO Case No. D2000-0004: "Here, the potential evidence of good faith registration and use was in respondent`s control. Respondent`s failure to present any such evidence or to deny complainant`s allegations allows an inference that the evidence would not have been favorable to respondent." As stated by the Panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: "Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. …In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence."

In this administrative proceeding, Respondents have chosen not to submit formal Responses on the substance of the dispute. Their default entitles the Panel to conclude that Respondents have no arguments or evidence to rebut the assertions of Complainant. The Panel has to take his decision on the basis of the statements and documents before it and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

Complainant has provided evidence and has thus established its rights in the BRICO DEPOT word trademarks, registered in various jurisdictions around the world.

It is a common practice under the Policy to disregard gTLDs such as the ".com" section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the Domain Name is its "bricodépot" element, which is to a high degree confusingly similar, both visually and phonetically, to Complainant`s BRICO DEPOT trademarks.

On these grounds, the Panel finds that the Domain Name is confusingly similar to trademarks in which Complainant has rights.

B. Rights or Legitimate Interests

Complainant claims that Respondents have no rights or legitimate interests in the Domain Name, since they have no relevant prior rights, trademarks or trade names. The Panel finds on the record that, Complainant establishes a prima facie case under Policy, paragraph 4(a)(ii).

It is well established that once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the showing by providing evidence to the contrary.

Respondents have chosen not to present to the Panel any allegations or documents in their defense despite the burden under the Rules, paragraph 5(b)(i) and 5(b)(ix) or the consequences that a panel may extract from the fact of a default (Rules, paragraph 14). If Respondents had any justification for registering or using the Domain Name, they could have provided it. In particular, Respondents have failed to contend that any of the circumstances described in Policy, paragraph 4(c) — or any other circumstance — is present in their favor.

The only information available about Respondents is the WhoIs information, provided by the Registrar, and the content of the website, associated to the Domain Name.

The WhoIs information contains no evidence of rights or legitimate interests of either of Respondents in the Domain Name. Respondents make no claims for having rights or legitimate interests in respect of the Domain Name, while, as submitted by Complainant and not denied by Respondents, the website associated to it contains pay-per-click links to subjects related to Complainant`s activities and trademarks, and to Complainant`s competitors.

In the Panel`s view, the above circumstances do not have the appearance of a legitimate activity giving rise to rights or legitimate interests of either of Respondents in respect of the Domain Name within the meaning of the Policy, paragraph 4(a)(ii). Therefore, the Panel finds that Complainant prevails on this point.

C. Registered and Used in Bad Faith

For the purposes of Policy, paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the holder has registered or has 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 the holder`s documented out-of-pocket costs directly related to the domain name; or

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

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

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder`s 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 the holder`s website or location.

In the present case, the Domain Name is confusingly similar to Complainant`s BRICO DEPOT trademarks, and Respondents have been found to have no rights or legitimate interests in it, while positively being aware of Complainant and of the commercial value of its BRICO DEPOT trademarks. Nevertheless, Respondents appear to have used the Domain Name to associate it to a website containing pay-per-click links to subjects related to Complainant`s activities and trademarks, and to Complainant`s competitors. Such conduct illegitimately exploits with a commercial purpose the reputation of Complainant and its trademarks.

As to the alleged "cloaking", the Panel is of the opinion that such practices, rightfully regarded as illegitimate by Google, further substantiate a finding that Respondents have illegitimately attempted to extract benefit from the fame and goodwill of Complainant`s BRICO DEPOT trademarks, by attracting Internet users to the website at the Domain Name.

Taking into account all above, the Panel is prepared to accept that the Domain Name has been registered and used by Respondents in an attempt for commercial gain to attract Internet users to the Domain Name by creating a false association with Complainant and its trademarks. These actions amount to bad faith registration and use of the Domain Name under the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <bricodépot.com> [xn--bricodpot-g4a.com] be transferred to Complainant.

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Assen Alexiev
Sole Panelist

Dated: January 29, 2010