The Complainant is Association des Centres Distributeurs E. Leclerc- A.C.D. Lec of Ivry-sur-Seine, France, represented by Inlex IP Expertise, France.
The Respondent is PrivacyP/ Private Registration, Domain Admin of Panama City, Panamá. 2. The Domain Name and Registrar
This dispute concerns the domain name (“the disputed domain name”) which is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR (“Directi”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2010. On September 10, 2010, the Center transmitted by email to Directi a request for registrar verification in connection with the disputed domain name. On September 20, 2010 Directi 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 21, 2010 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 23, 2010.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 18, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2010.
The Center appointed David H. Tatham as the sole panelist in this matter on October 26, 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
The Complainant is a major retailer, trading under the name LECLERC. It operates supermarkets and hypermarkets in France, as well as throughout the European Union. It owns numerous International, EU, and French registrations for the trade marks LECLERC or E ECLERC dating from 1967 onwards. Neither of these claims has been challenged by the Respondent, who is based in Panama.
The disputed domain name was registered on January 12, 2009. 5. Parties’ Contentions A. Complainant
The Complainant contends that it has become a major operator of supermarkets and hypermarkets under the names LECLERC or E.LECLERC, ever since its founder Edouard Leclerc first started the business more than 50 years ago. It trades not only in France where it has more than 500 stores, but also in other European Countries such as Spain, Italy, Slovenia, Poland and Portugal.
The Complainant has several French, Community and International trade mark registrations for LECLERC or E LECLERC. It contends that the disputed domain name is similar if not identical to its trade marks, especially Community trade mark E.LECLERC No. 2700664 filed in May 2002. It is also very close to its own domain name at which it operates its own website.
The Complainant further contends that the addition of the letters ”www” at the beginning of the disputed domain name – which famously stand for ”world wide web” – is not sufficient to avoid any risk of confusion with its trademarks. Indeed, the Complainant contends that the disputed domain name is a typical example of dotsquatting.
The Complainant further contends that the Respondent –
- is not commonly known under the name LECLERC;
- makes no use of a business name that includes the name LECLERC;
- has no trade mark rights in either of the names LECLERC or E LECLERC;
- has not been authorized by the Complainant to use the name E LECLERC;
- uses the website at the disputed domain name as a parking website;
- has no link of any nature, or business relationship, with the Complainant; and
- consequently has no rights or legitimate interests to use the name LECLERC.
The Complainant contends that it has attempted to find an amicable settlement with the Respondent, but –
- its representative’s first letter in May 2009 was returned to its sender;
- the same letter sent by e-mail was not answered; and
- 3 reminder e-mails were also not answered.
The Complainant contends that the Respondent has acted in bad faith because the names LECLERC and E LECLERC have been well-known in France and elsewhere in Europe for many years and the average consumer, whether of French or some other European nationality, upon seeing the disputed domain name, will automatically think of the Complainant and its brand name E LECLERC.
In addition, Article 2 of the Policy states that anyone applying to register or renew a domain name warrants that it does not infringe or otherwise violate the rights of any third party. Complainant contends it is clear that the Respondent is in breach of this warranty.
The Complainant finally contends that, as the website at the disputed domain name is a parking site, not only does the Respondent profit from it by earning pay-per-click revenues, but it has also intentionally attempted to attract internet users to its website for commercial gain. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion And Findings
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
In the opinion of the Panel, there is no doubt that the disputed domain name is confusingly similar to the Complainant’s trade marks LECLERC and E LECLERC, and it has provided copies of a number of valid registrations of these marks covering a wide variety of goods and services.
It is customary when comparing a domain name for similarity with a trade mark, to disregard prefixes such as ”www” (which stands for ”world wide web”), as well as any gTLD such as ”.com”, ”net”, or ”org”. For example, in Abt Electronics, Inc. v. Gregory Ricks, NAF Claim No. 904239 (March 27, 2007) the panel said that “Respondent’s domain name is identical to Complainant’s ABT mark since the addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); it was also found in Rollerblade, Inc. v. McCrady,WIPO Case No. D2000-0429 (June 25, 2000) that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar;
In this case, the letters ”www” appear as part of the disputed domain name. In the opinion of the Panel, this prefix is of no consequence, as the abbreviation is so familiar and so well known. Similar conclusions were found by the panels in the following cases: I, Inc. v. Registrar Administrator Lew Blanck,WIPO Case No. D2000-0069 (April 3, 2000) (); Microsoft Corporation v. Stoneybrook, WIPO Case No. D2000-1274, November 20, 2009) (), Bayer AG v. Yongho Ko ,WIPO Case No. D2001-0205 (), Pfizer, Inc. v. Scocho and Vladimir Snezko ,WIPO Case No. D2001-1199 ().
So, disregarding the prefix ”www” as well as the addition of ‘.com’, there is identicality between the domain name and the Complainant’s trade mark E LECLERC and near identicality with its trade mark LECLERC.
By not filing any response, the Respondent has not attempted to deny this.
Consequently, the Panel finds that paragraph 4(a)(i) is proved. B. Rights or Legitimate Interests
It is well established that a complainant must first make out a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy, and then the burden shifts to Respondent to show that it does have rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 741828 (August 18, 2006) in which it was held that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name. See also AOL LLC v. Jordan Gerberg, NAF Claim No. 780200 (September 25, 2006) where the panel said: “Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names”.
In this case, the Panel is satisfied that the Complainant has made out a strong prima facie case.
The Respondent has provided nothing to support an argument that it has any rights or legitimate interest in the disputed domain name. This domain name is practically identical to what is the well-known name of a massive chain of supermarkets situated throughout France and indeed in many other European Countries.
The Respondent has not attempted to reply to the Complainant’s repeated efforts at contact in an attempt to reach an amicable settlement, and has failed to invoke any of the circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, that it has any rights to and/or legitimate interest in the disputed domain name.
It was said in Vance International, Inc. v. Abend, NAF Claim No. 970871 (June 8, 2007) that “It has long been held that when a domain name is confusingly similar to a complainant’s trademark, to use it in this manner is neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use pursuant to paragraph 4(c) of the Policy, whether or not Respondent directly receives click-through referral revenue” and this decision also referred to the cases of State Farm Mutual Automobile Insurance co. v. Haan, NAF Claim No. 948470 (May 9, 2007); Charles Letts & Co Limited v. Citipublications, NAF Claim No. 692150 (July 17, 2006) and Auralog s.a. v. Innovedo, NAF Claim No. 945049 (May 14, 2007).
Consequently, the Panel finds that paragraph 4(a)(ii) is proved. C. Registered and Used in Bad Faith
Likewise, there cannot possibly be any good faith in registering the nearly identical name of a well-known chain of supermarkets and using it for a parking site where click-through fees can be earned from ignorant or misguided Internet users. It was held in American University v. Cook, NAF Claim No.208629 (December 22, 2003) that “Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”, it was also found in G.D. Searle & Co. v. Celebrex Drugstore, NAF Claim No.123933 (November 21, 2002) that the respondent registered and used the domain name in bad faith pursuant to paragraph 4(b)(iv) of the Policy because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website.
The Panel considers that the present case is a clear example of cybersquatting, to prevent which the UDRP was specifically created.
As a result, the Panel finds that paragraph 4(a)(iii) is also proved. 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 disputed domain name be transferred to the Complainant.
David H. Tatham
Sole Panelist
Dated: November 8, 2010
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