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 Anton Beloshitskiy of Moscow, the Russian Federation; PrivacyP of Munsbach, Luxembourg. 2. The Domain Name and Registrar
The disputed domain name is registered with UK2 Group Ltd. 3. Procedural History
The Complaint 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 UK2 Group Ltd. a request for registrar verification in connection with the disputed domain name. On January 24, 2011, UK2 Group Ltd. 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 January 28, 2011 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 amendment to the Complaint on February 1, 2011.
The Center verified that the Complaint together with the amendment to 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 February 2, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 22, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 2011.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on March 3, 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. 4. Factual Background
The Complainant is a French association of independent shopkeepers, active foremost in France, but also in other countries in Europe such as Spain, Italy, Slovenia, Poland and Portugal.
Furthermore, the Complainant is the holder of
French trademark registration No. 1307790,
LECLERC, covering classes 1-35 and class 39, registered May 2, 1985;
Community trademark registration No. 002700656,
LECLERC, covering classes 1-45, registered February 26, 2004; and
International trademark registration No. 511972,
LECLERC, covering classes 1-37, 39 and 42, registered January 27, 1987, designating Spain, Croatia and Italy.
The disputed domain name was registered on May 26, 2010. 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant’s registered trademark which furthermore is well known and reputed in France and in other countries in Europe. The addition of the name “Cannes”, a French city, is not distinguishing but only descriptive of where the services and/or products on the website of the disputed domain name are offered.
The Respondent has no legitimate interest in the disputed domain name. The Respondent is not commonly known as “leclerc”, the Respondents has no rights such as trade mark or trade name rights to the name “leclerc” and the Complainant has not authorized the Respondent to use Complainant’s trademark. No serious or fair use is being made of the disputed domain name.
The Respondent has registered and is using the disputed domain in bad faith. Several cease and desist letters starting with one sent on September 22, 2010, have been sent to the Respondent PrivacyP without any reply. The same letter has also been sent to the Registrar on November 29, 2010, which allegedly was forwarded to the Respondent. In view of the fact that the Complainant is a well known and reputed network of supermarkets, the Respondent knew of the Complainant’s rights in its trademark. The Respondent has intentionally attempted to attract, for commercial gain, Internet users searching for the Complainant’s business in Cannes. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Who is to be considered Respondent?
As catalogued in Divex Limited v. ZJ, Sam Chang and Tim NG,WIPO Case No. D2007-0861, most panels appear to treat as the respondent the person or entity that has engaged the privacy service, even when that person or entity cannot be identified, see Association Robert Mazars v. Private Whois Service, c/o ,WIPO Case No. D2009-0183. Other panels, including some recent cases, such as Mark Alan Pearson and Markco Media Limited v. Domains by Proxy, Inc. and China Snake Media,WIPO Case No. D2009-0253, where the panel did proceed to find the party that had engaged the privacy service to be the beneficial holder have suggested that the definition of the respondent in the Rules should be interpreted literally. The different interpretations and its adherence to the Policy and the Rules have been comprehensively discussed in e.g., Research In Motion Limited v. PrivacyP/Pluto Domain Services Private Limited,WIPO Case No. D2009-0324.
In most cases where a privacy service has been used by the registrant, the registrar has in its verification email disclosed to the Center of the actual registrant of the disputed domain name. However, as noted by the panel in the decision cited above, a registrant that chooses to register through a privacy service and the registrar that provides such registration must bear some of the consequences of anonymous registration. See F. Hoffmann-La Roche AG v. PrivacyP, Domain Admin and Mark Sergijenko,WIPO Case No. D2007-1854; Ohio Savings Bank v. 1&1 Internet, Inc. and David Rosenbaum,WIPO Case No. D2006-0881. This should also be the case for the agency providing these kinds of privacy services.
This Panel however, is of the view that the amendment of the Complaint to include an underlying registrant while “desirable from a clerical perspective” may not be wholly necessary as to legal significance, see Mrs. Eva Padberg v. Eurobox Ltd.,WIPO Case No. D2007-1886. The identity of the Respondent
The Complainant has identified one natural person Anton Beloshitskiy, and one entity, PrivacyP, as the Respondent in this case.
As stated in the panel decision Research In Motion Limited v. PrivacyP / Pluto Domain Services Private Limited,WIPO Case No. D2009-0324, “the ICANN name registration system requires a registrar to register a domain name upon its receipt of a proper registration agreement duly completed by a registrant; a registrar is forbidden to undertake any investigation to verify for example, the truth of a registrant’s representation and warranty that ‘to [the registrant’s] knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party.’ (Policy, paragraph 2(b)).” However, if, as in this case, a privacy service is entered into the registrar’s registers for its own account, when faced with Policy proceedings it still must demonstrate its own legitimate interest in the disputed domain name, and may not be willfully blind to the marks of third parties. Thus, if a privacy service registers as agent, as appears to be the case here, it obtains no greater rights than its principal, the person engaging its privacy service. This is also a general legal rule in agency relations. Acts taken by the agent are binding on the principal.
However, in this case, the Registrar has duly released the identity of the Registrant of the disputed domain name. The Registrant is in fact the natural person Anton Beloshitskiy. Given that the identity of the Registrant is known, this Panel will decide on the merits of this case in relation to Anton Beloshitskiy only. There is no reason to assess the circumstances under the supposition that PrivacyP is a party to this case. A. Identical or Confusingly Similar
The disputed domain name consists of the elements “leclerc” and ”cannes”. The element “leclerc” is identical with the Complainant’s registered trademarks and the element “cannes” is merely a geographical description that does not serve to distinguish the disputed domain name from the Complainant’s trademarks.
Further, according to the well established consensus view of the UDRP Panels, the “.com” suffix denoting second-level domain status in the Respondent’s domain name does not affect the fact that the disputed domain name is confusingly similar to Complainant’s marks pursuant to paragraph 4(a)(i) of the Policy.
The conclusion of the Panel is thus that the disputed domain name is confusingly similar to the mark in which the Complainant has rights. B. Rights or Legitimate Interests
The consensus view of the Panels of the WIPO UDRP proceedings is that the respondent’s default does not automatically result in a decision in favour of the complainant. The complainant must still establish each of the three elements required by paragraph 4(a) of the UDRP and while a panel may draw the appropriate negative inferences from the respondent’s default, paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.1
In view of the submissions of the Complainant, the Panel finds that the Respondent is not connected with the Complainant and is not commonly known by the disputed domain name, but uses the Complainant’s mark with an intention to derive commercial advantage from the trademarks of the Complainant. Such use by the Respondent is not a legitimate noncommercial or fair use and does not confer any rights in favour of the Respondent. Moreover, the file contains no evidence to suggest a legitimate interest, and the lack of a reply from the Respondent only adds to this perception. Hence, the second element of paragraph 4(a) of the Policy is fulfilled. C. Registered and Used in Bad Faith
The Complainant has asserted that the Respondent must have known of the Complainant’s trademark rights because of the well-known character of the Complainant’s marks. No supporting evidence to this fact has been submitted by the Complainant. It is therefore impossible to establish a finding of bad faith registration and use on this assertion alone.
However, in the absence of a reply from the Respondent, the Panel finds the following circumstances to be of importance.
As stated by the majority of the UDRP Panel in Ustream.TV, Inc. v. Vertical Axis, Inc,WIPO Case No. D2008-0598, the use of a privacy shield can support a finding of bad faith registration. Although privacy shields might be legitimate in some cases – such as protecting the identity of a critic against reprisal – no facts have been raised to show such a need here, except to frustrate the purposes of the Policy or make it difficult for a brand owner to protect its trademarks against infringement, dilution and cybersquatting.
The evidence of bad faith of the Respondent when registering and using the disputed domain name is further supported by the additional element of “Cannes” the French city which most probably is familiar to most people in Europe and the western part of the Russian Federation. The addition of the city name supports the conclusion that the Respondent was aware of the Complainant’s trademark rights and the possibly well-known and reputed status of the mark in France.
Further supporting the conclusion is the lack of response to the several cease and desist letters sent by the Complainant, which has been forwarded to the Respondent firstly some time after October 7, 2010, by PrivacyP and secondly by the Registrar on or after November 29, 2010.
Although the Panel cannot see any actual use of the disputed domain name at the time of this Decision, the Complainant’s assertion that the disputed domain name has been linked to websites of various contents is sufficient for the Panel to conclude that bad faith use has been made of the disputed domain name as well.
The Panel thus finds, particularly in the absence of any reply from the Respondent, that the Complainant has fulfilled its evidentiary burden and proved that the disputed domain name has been registered and used in bad faith. 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.
Jonas Gulliksson
Sole Panelist
Dated: March 24, 2011
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions and e.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064, and Berlitz Investment Corp. v. Stefan Tinculescu,WIPO Case No. D2003-0465.
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