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 Domain Administrator of Shanghai, the People’s Republic of China. 2. The Domain Names and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint regarding the domain names and was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 20, 2011. On January 21, 2011, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the disputed domain name. On January 24, 2011, Moniker Online Services, LLC. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 14, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 17, 2011.
The Center appointed Christos A. Theodoulou as the sole panelist in this matter on February 23, 2011. 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 March 18, 2011, the proceedings were suspended to enable the amicable transfer of the domain name to the Complainant. On March 29, 2011, the Complainant advised the Panel that it was now in control of the domain name and that it wished to withdraw this domain name from the Complaint. Given the circumstances, the Panel will therefore proceed to issue a decision only in relation to the domain name . 4. Factual Background
The Complainant in these proceedings is Association des Centres Distributeurs E. Leclerc – A.C.D Lec, a company organized under the laws of France.
The Complainant is a well-known French corporation dealing inter alia with photography, tourism and other services and products. Further, the Complainant deals with supermarkets / hypermarkets and there are in France more than 500 supermarkets / hypermarkets Leclerc, according to it.
According to the non-contested allegations provided by the Complainant, the latter is the owner of the trademark LECLERC, registered since 1967 as French, European and International trademark. The Complainant, according to it, has many trademarks associating LECLERC to words synonyms or near synonyms of “photos” and “assurance”, such as LECLERC PHOTO.
The Complainant has used the LECLERC mark as above. The Panel is unaware of any further information relative to this case with regard to the Respondent, except that given by the Complainant and mentioned above and that the Respondent appears to be located in China.
The disputed domain name was registered on April 23, 2010. According to the non-contested allegations of the Complainant, the intention of the Respondent is to attract Internet users and to provoke a confusion to the mind of the consumers who may think that its website “www.” is the official website of the Complainant dedicated to insurance. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Before engaging in the threefold discussion of paragraph 4(a) of the Policy, the Panel will briefly address the procedural issue related to the default of the Respondent. The implications of a default in this case are telling: since the Complainant has the burden of proof, according to paragraph 4(a) of the Policy (“In the administrative proceeding, the Complainant must prove that each of these three elements are present”), the Panel may not just grant the Complainant’s request automatically, but it has to examine instead the evidence presented to determine whether or not the Complainant has proved its case, as required by the Policy. See FNAC v. Gauthier Raymond,WIPO Case No. D2004-0881; Sonofon A/S v. Vladimir Aleksic,WIPO Case No. D2007-0668; Gaudi Trade SpA v. Transure Enterprise Ltd,WIPO Case No. D2009-1028.
The Panel shall now proceed to the analysis of the evidence in this case, based on the three elements of paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
The Complainant has presented sufficient evidence that it owns the rights to the trademarks LECLERC and LECLERC PHOTO. The Complainant’ s registrations for the marks in France, the International registrations and the Office for Harmonization in the Internal Market (OHIM) registrations have proven this. The use of the mark in many countries reinforces this ownership. It is to be noted that all of the above marks were registered prior to the registration of the disputed domain name.
The mere fact that the Respondent has added to the LECLERC mark the suffixes “assurance” and the gTLD “.com” does not effect the essence of the matter: the disputed domain name wholly incorporates the trademark LECLERC, registered and owned by the Complainant, and in the circumstances of this case, this is sufficient to establish the criterion of confusing similarity for purposes of the Policy, as many panels have found in the past, See e.g. Oki Data Americas, Inc. v. ASD, Inc,WIPO Case No. D2001-0903; DFDS A/S v. NOLDC INC,WIPO Case No. D2006-1070; American Automobile Association, Inc. v. Bladimir, Boyiko and Andrew Michailov,WIPO Case No. D2006-0252.
In view of the above, the Panel finds that the Complainant has discharged its burden of proof on this point and holds that the disputed domain name is confusingly similar to the Complainant’s trademark LECLERC. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exhaustive list of three circumstances which, if found by a panel to be proved based on its evaluation of the evidence presented, shall demonstrate a registrant’s right to and the legitimate interest in a domain name. These examples are discussed in turn below, with regard t to the specific facts of this case.
(i) Demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute. In this case, the Respondent is not using the disputed domain name to make any bona fide offering of goods or services. The evidence provided by the Complainant shows that the website associated with the disputed domain name has been used as a pay-per-click website. The Respondent has no rights including trademark rights in LECLERC, according to the non-contested allegations of the Complainant.
(II) An indication that the registrant has been commonly known by the disputed domain name, even if it has acquired no trademark rights. In this case, there is no such indication from the present record.
(iii) Legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue. Again, in this case, there is no such indication from the record.
Furthermore, it is to be noted that the Respondent did not present evidence of any license by the Complainant, with whom there seems to exist no relationship whatsoever.
As a conclusion on this point, the Panel holds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant’s argumentation is based on the four circumstances mentioned in paragraph 4(b) of the Policy, in order to demonstrate the Respondent’s bad faith registration and use of the disputed domain name.
In reviewing the present case, the Panel has noted that the Respondent has used the disputed domain name as a pay-per-click website to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s marks as to the source, affiliation, etc., of the website. The fact that some of the links appearing on the website associated with the disputed domain name referred to products similar to those sold by the Complainant clearly shows to the Panel that the Respondent must have known, when registering the disputed domain names, of the existence of the widely known trademark LECLERC, and its affiliation to the Complainant’s products and services, and that the Respondent has used the domain name in bad faith under paragraph 4(b)(iv) of the Policy.
The Panel also notes the default of the Respondent, which, in the present circumstances, “reinforces the inference of bad faith registration and bad faith use”. The Hongkong and Shanghai Banking Corporation Limited v. Bill Lynn,WIPO Case No. D2001-0915.
The bad faith of the Respondent may also be inferred through a simple, logical process, as well, in the sense that it would, indeed, be highly unlikely that the Respondent would register randomly and unintentionally a domain name, that includes the LECLERC trademark in combination with “assurance” for a pay-per-click website.
As a consequence to the above, the Panel holds that the Respondent registered and used the disputed domain name in bad faith. 7. Decision
The Complainant has successfully proven that the disputed domain name is identical or confusingly similar to trademarks and service marks in which it has rights, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent registered and used the disputed domain name in bad faith.
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 be transferred to the Complainant.
Christos A. Theodoulou
Sole Panelist
Dated: March 31, 2011
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