WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

JM Bruneau v. Antoine Porchy / Domains By Proxy, LLC

Case No. D2015-1672

1. The Parties

The Complainant is JM Bruneau of Villebon Sur Yvette, France, represented by NONY, France.

The Respondent is Antoine Porchy of Thiviers, France / Domains By Proxy, LLC of Scottsdale, Arizona, United States of America.

2. The Domain Name and Registrar

The disputed domain name <j-m-bruneau.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2015. On September 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 21, 2015, 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 September 24, 2015 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 September 28, 2015.

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 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 October 2, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 22, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 23, 2015.

The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on October 28, 2015. 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, JM Bruneau, is a French company specialized in wholesale trade services of office furniture, office supplies, office stationary, office machinery and equipment.

The Complainant is the owner of the following trademarks:

- International trademark JM BRUNEAU No. 414076 registered on February 27, 1975 for goods and services in classes 6, 8, 9, 11, 14, 16, 18, 20, 21 and 34, and designating Switzerland, Spain, Italy and Germany;

- Community trademark BRUNEAU and Device, No. 4064391 registered on January 12, 2006 for goods and services in classes 3, 5, 6, 7, 8, 9, 11, 16, 18, 20, 21, 27, 35, 37, 38, 39 and 42;

- French trademark JM BRUNEAU, No. 1446796 registered on January 26, 1988 for goods and services in classes 6, 8, 9, 11, 14, 16, 18, 20, 21, 27, 28, 30, 35, 37, 38, 39 and 42;

- Community trademark BRUNEAU and Device, No. 4064374 registered on January 12, 2006 for goods and services in classes 3, 5, 6, 7, 8, 9, 11, 16, 18, 20, 21, 27, 35, 37, 38, 39 and 42;

- Community trademark BRUNEAU, No. 552687 registered on April 4. 2000 for goods and services in classes 6, 8, 9, 11, 14, 16, 18, 20, 21, 25, 26, 27, 30, 34, 35, 37, 38 and 39;

- Community trademark BRUNEAU, No. 736173 registered on June 15, 1999 for goods and services in classes 2, 3, 5, 7, 22, 36, 41 and 42;

- Community trademark BRUNEAU, No. 1027903 registered on April 19, 2000 for goods and services in classes 1, 9 and 36;

- French trademark BRUNEAU, No. 97677683 registered on May 13, 1997 for goods in classes6, 8, 9, 11, 14, 16, 18, 20, 21, 25, 26, 27, 28, 30, 34, 35, 37, 38, 39 and 42;

- French trademark BRUNEAU, No. 3929495 registered on June 25, 2012 for goods and services in classes 9, 16, 20, 35, 38, 39, 41 and 42;

- International trademark BRUNEAU, No. 1190401 registered on April 2, 2013 for goods and services in classes 9, 16, 20, 35, 38, 39, 41 and 42.

The Complainant’s trademarks designate several kinds of goods and services in the field of office furniture, supplies and equipment.

According to the Complainant’s official website in France at “www.bruneau.fr”, all the trademarks are actually used for office equipment and supplies.

The Complainant is also the owner of several domain names and especially the following: <jm-bruneau.com> and <jm-bruneau.fr>, which are directly directed on the Complainant’s official website in France “www.bruneau.fr”.

The Complainant’s affiliates own several domain names such as:

- <jm-bruneau.es> which gives access to the official website in Spain owned by JM Bruneau Espana, being the Spanish affiliate of the Complainant,

- <jm-bruneau.lu>, which gives access to the official website in Luxemburg owned by JM Bruneau NV, being the BENELUX affiliate of the Complainant,

- <jm-bruneau.be>, which gives access to the official website in Belgium, owned by JM Bruneau NV, being the BENELUX affiliate of the Complainant,

- <jm-bruneau.nl>, which gives access to the official website in the Netherlands, owned by JM Bruneau NV, being the BENELUX affiliate of the Complainant.

The disputed domain name <j-m-bruneau.com> was registered on January 20, 2015.

The registrant of the disputed domain name appears to be Antoine Porchy, located at Thiviers, France.

5. Parties’ Contentions

A. Complainant

1. Confusing similarity. Policy, paragraph4(a)(i).

The Complainant asserts that its earlier trademark JM BRUNEAU is entirely reproduced in the disputed domain name.

The Complainant contends that as the disputed domain name contains two hyphens between the letters “j” and “m”, the disputed domain name <j-m-bruneau.com> appears as a simple declination of the earlier trademarks.

The Complainant contends that the reproduction of an earlier trademark in a domain name, where the only difference is the addition of hyphens, can be considered as a case of typo-squatting.

Besides that, the Complainant argues that the earlier trademarks BRUNEAU are entirely reproduced in the disputed domain name. The Complainant asserts that the disputed domain name <j-m-bruneau.com> appears as a mere declination of the earlier trademarks, all the more as the letters “j” and “m” appear as the initials of the first name BRUNEAU.

For all of the above mentioned reasons, the Complainant considers that the disputed domain name is confusingly similar to the earlier trademarks JM BRUNEAU.

The Complainant also contends that the disputed domain name is confusingly similar to its domain names <jm-bruneau.com> because it only differs from the Complainant’s domain name by a hyphen between the two first letters “j” and “m”.

The Complainant argues that, even though the consumer would see the difference between the two domain names, he would think these domain names are linked since the disputed domain name appears as a mere declination of the earlier one, so that the two domain names in presence are conceptually similar.

Therefore, the Complainant contends that the disputed domain name <j-m-bruneau.com> has to be considered as confusingly similar to the earlier domain name <jm-bruneau.com>.

2. Rights or Legitimate Interests. Policy, paragraph 4(a)(ii).

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant assures that the disputed domain name is not linked to any individual, business company or effective activity because the disputed domain nameredirects users on an explanatory error page.

The Complainant concludes that the Respondent uses the disputed domain name in a commercial unfair manner, since the only reason of registering the disputed domain name seems to be the likelihood of confusion which nourishes with the Complainant’s domain name <jm-bruneau.com> - a behavior that can be considered as a clear case of typo-squatting.

Therefore, the Respondent contends that the Respondent has no rights or legitimate interests in the disputed domain name.

3. Registered and used in Bad Faith. Policy, paragraph 4(a)(iii).

The Complainant asserts that the disputed domain name has been registered and used in bad faith.

According to the Complainant, the Respondent is using the disputed domain name primarily to disrupt the business of the Complainant. The Complainant asserts that several companies (ETT Europarts, Iris, Item International, Tech Data, Zalix BiometrieJet 7 Informatique) which are suppliers or potential suppliers of the Complainant have received emails from the email address “[]@j-m-bruneau.com”.

The Complainant contends that all these emails are purchase orders for electronic and office equipment and are supposed to come from the Complainant and that they are signed by Ms. Aime, who is the former purchasing team leader of the Complainant, and who left the company in 2014.

These emails mention, under the signature of Ms. Aime, the name of the Complainant, its address and its SIRET number, so that the recipient of such email can perfectly think that the email is effectively sent by the company JM Bruneau. Only the phone and fax numbers are incorrect.

The Complainant considers that these emails demonstrate that the Respondent uses the disputed domain name via an email address solely in order to send emails in which it impersonates the Complainant.

The Complainant asserts that the aim is to order electronic and office equipment in the name of the Complainant without further paying the supplier as they are used to be paid after delivery when they work with the Complaint considering their trustee relationship with the Complaint. According to the Complainant, such facts should be considered as an identity usurpation that directly affects the business of the Complainant.

The Complainant considers that by using the disputed domain name that is confusingly similar to the Complainant’s domain names and trademarks and by impersonating the Complainant’s email address, the Respondent has intentionally generated confusion in the mind of those supplier companies that have received emails from “[]@j-m-bruneau.com”.

The Complainant contends that the use of the disputed domain name also generates a financial risk for the Complainant, to whom unjustified bill payment could be requested by a provider who did not realize that the purchase order was not offered by the Complainant.

According to the Complainant, it is clear that the Respondent has intentionally attempted to take advantage of the trustee relationship between the Complainant and its suppliers or potential suppliers, by creating a likelihood of confusion with the Complainant’s trademarks and domain names.

The Complainant argues that this bad faith use is confirmed by the fact that the registration and the use of the domain name is a clear typo-squatting case.

Finally, the Complainant relies on the fact that the disputed domain name has been registered through a privacy registration service, which can also be analyzed as a proof of the Respondent’s bad faith.

B. Respondent

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

6. Discussion and Findings

To prevail in the proceedings under the Policy, the Complainant must show that the three requirements set forth in paragraph 4(a) of the Policy are met. Those requirements are:

(i) the disputed 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 respect of the disputed domain name; and

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

Under paragraph 4(c) of the Policy, the Respondent can demonstrate its rights and legitimate interests in the disputed domain name in its response to the Complaint by proving, among others, the circumstances mentioned under this paragraph of the Policy.

A. Identical or Confusingly Similar

The Complainant has clearly established rights in the JM BRUNEAU and BRUNEAU trademarks.

The disputed domain name reproduces entirely the widely known JM BRUNEAU and BRUNEAU trademarks with the adjunction of two hyphens between the letters “j” and “m” concerning the trademark JM BRUNEAU and with the adjunction of the letters “j” and “m” with hyphens for the trademarks BRUNEAU.

The choice of the adjunction of hyphens is not anodyne. The Respondent likely chose this term in order to create confusion with the Complainant’s trademark.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The condition of paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

As set forth by paragraph 4(c) of the Policy, any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the Respondent’s rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to the Respondent of the dispute, its use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed 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 disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent did not respond to the Complaint. Consequently it did not provide any evidence or circumstances to rebut the Complainant’s prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, according to paragraph 4(c) of the Policy or otherwise.

There is nothing that indicates that the Respondent is commonly known by the disputed domain name.

The Complainant has not licensed or otherwise permitted the Respondent to use the JM BRUNEAU and BRUNEAU trademarks, or to register any domain name incorporating the JM BRUNEAU and BRUNEAU trademarks.

The Respondent concealed its identity when registering the disputed domain name, by using a privacy service.

The disputed domain name redirects users on an explanatory error page, whereas the Respondent uses the disputed domain name in a commercial unfair manner, to send emails impersonating the Complainant and most likely for commercial purposes.

Accordingly, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of the bad faith registration and use of a domain name. It provides that:

“For the purposes of 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 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 web site 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 your web site or location or of a product or service on your web site or location.”

1. Concerning bad faith registration of the disputed domain name

The JM BRUNEAU and BRUNEAU trademarks are widely known worldwide.

The Respondent must have been aware of the Complainant’s rights on the JM BRUNEAU and BRUNEAU trademark when registering the disputed domain name.

As alleged in the Complaint, the disputed domain name was registered to disrupt the business of the Complainant. The Respondent sent emails to suppliers or potential suppliers of the Complainant with the address “[]@j-m-bruneau.com” by signing under the identity of the former purchasing team leader of the Complainant who left the company in 2014, Ms. Aime.

To certify the recipients of its identity as Ms. Aime, the Respondent used, under the signature, the name of the Complainant, its address and its SIRET number, which is its incorporation number.

These fraudulent emails are purchase orders for electronic and office equipment in the name of the Complainant.

Consequently the disputed domain name registration is used for the purpose of an identity theft and/or fraudulent emails.

Accordingly, the Panel finds that the disputed domain name was registered in bad faith.

2. Concerning bad faith use of the disputed domain name

The Respondent’s action is in line with paragraph 4(b)(iv) of the Policy, as the Respondent intentionally attempted to take advantage of the trustee relationship between the Complainant and its suppliers or potential suppliers to engage in possibly fraudulent activities with the likely intent for commercial gain.

The Panel finds that the Complainant has made out that the disputed domain name was registered and is being used in bad faith.

Therefore, the condition set out by paragraph 4(a)(iii) of the Policy has been met by the Complainant.

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 <j-m-bruneau.com> be transferred to the Complainant.

Marie-Emmanuelle Haas
Sole Panelist
Date: November 11, 2015