The Complainant is the Association des Centres Distributeurs E. Leclerc - A.C.D Lec of Ivry-sur-Seine, France, represented by Inlex IP Expertise, France.
The Respondent is Fabrice Guigonnat of Paris, France. 2. The Domain Names and Registrar
The disputed domain names , and are registered with CORE Internet Council of Registrars (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2013. On September 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 3 and 4, 2013, the Registrar transmitted by email to the Center its verification responses respectively 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 October 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 30, 2013.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on November 5, 2013. 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 corporation in the business of operating supermarkets and hypermarkets.
The Complainant owns several French, Community and International registered trademarks composed of the term “Leclerc” alone or combined with generic terms. “Leclerc” is the family name of the promoter of the organization.
The Complainant owns in particular the following Community trademarks:
- LECLERC, No. 2700656, registered on February 26, 2004, and duly renewed ; and
- LA PARAPHARMACIE E.LECLERC L, No. 2914919, registered on October 1, 2004, and duly renewed.
The disputed domain names were registered on February 21, 2013. 5. Parties’ Contentions A. Complainant
The Complainant claims the transfer of the three disputed domain names on the grounds that they are confusingly similar to trademarks in which it has rights and in particular the trademarks LECLERC and LA PARAPHARMACIE E.LECLERC L. The Complainant contends that the disputed domain names combine the distinctive element “Leclerc”, with the French possessive adjective “ma”, and/or the French generic/descriptive term “pharmacie” or its usual abbreviation “pharma”. According to the Complainant, the elements “pharmacie” or “pharma” serve merely to inform Internet users of the type of products offered by the Respondent and the French possessive adjective “ma” is not helping to avoid the risk of confusion. As for the Complainant, the disputed domain names, which may be considered as a variation of the prior trademark LA PARAPHARMACIE E.LECLERC L, are likely to enhance the confusion.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant mentions that the name of the Respondent is not composed of the name “Leclerc”, that he is not commonly known under the name “Leclerc” and that he does not make any use of a business name including the name “Leclerc”. The Complainant adds that it has never authorized the Respondent to use the name “Leclerc” and that there is no business relationship between them. In conclusion, according to the Complainant, the Respondent has no rights in the sign “Leclerc”, which is the distinctive element of the disputed domain names.
The Complainant then contends that the Respondent registered the disputed domain names in bad faith, to the sole purpose of obtaining financial compensation from the Complainant, which is the leader and one of the most renowned supermarket/hypermarket chains in France. The Complainant argues that it attempted to find an amicable settlement with the Respondent, but without success. In fact, the Complainant asserts that the Respondent would have accepted to transfer the disputed domain names in counterpart of EUR 3,500, to reimburse his expenses. This amount was considered “obviously excessive” by the Complainant. Moreover, the Complainant contends that, since 1988, it has developed an activity of “parapharmacy” under the name “Leclerc”. The Complainant recalls that under French Law, only pharmacists are entitled to sell drug products in France and contends that it is itself an active actor of the campaign for legalizing the sale of drugs in supermarkets in France. Therefore, the Complainant considers that the registration of the disputed domain names, associating the trademark LECLERC with the term “pharmacy” or its abbreviation, is an attempt to block the Complainant for registering those domain names once it will be entitled to sell pharmacy products, and an attempt to tarnish the reputation of the Complainant, since Internet users would believe that the Complainant has finally decided to sell such products even though it is not entitled to do so. Furthermore, as for the Complainant, as the Respondent is the commercial director of a pharmaceutical distribution network, he could not ignore the prior rights of the Complainant, its activity in parapharmacy and its campaign for stopping the pharmacists’ monopoly in France.
The Complainant also contends that the Respondent used the disputed domain names in bad faith. Indeed, the Complainant noticed that the disputed domain names were registered in February, 2013, but still direct to websites under construction. As for the Complainant, this is a classic case of passive holding. It considers that the Respondent is a cybersquatter who uses the disputed domain names to block the Complainant and to tarnish its reputation. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain names, the Complainant shall prove the following three elements:
(i) The disputed domain names are 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 names; and
(iii) The disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Panel observes that the Complainant has provided evidence of ownership of two trademark registrations including the terms “Leclerc” and one with the term “parapharmacie”, namely the LECLERC and LA PARAPHARMACIE E.LECLERC L community trademarks.
The Panel observes that the LECLERC trademark has been registered for various classes of the Nice classification, among which class 5 designating “Pharmaceutical […] preparations”.
These trademarks rights are still in force.
In this case, the disputed domain names , and are composed of the distinctive element “Leclerc”, to which were added the generic terms “ma” (meaning “my” in French) and “pharmacie” or its diminutive, “pharma” (meaning “pharmacy” in French).
The Panel concurs with the opinion of several prior UDRP panel decisions which held that, when a domain name wholly incorporates a complainant’s registered mark, that may be sufficient to establish confusing similarity for purposes of the Policy (see, e.g. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. ,WIPO Case No. D2002-0615).
In this case, the three disputed domain names incorporate the trademark LECLERC.
Moreover, it is a well-established principle that the addition of generic terms to a complainant’s trademark in a domain name does not dispel confusion. In fact, prior UDRP panel decision stated that the prefix “my-” is insufficient to dispel the confusion between the domain name and the complainant’s trademark and that “the prefix “my-” may intensify the confusing similarity as this prefix is widely used on the Internet in combination with a trademark to create a personal identification of consumers with a product or service”. (See DHL Operations B.V. and DHL International GmbH v. Diversified Home Loans, WIPO Case No. D2010-0097).
In the same way, it appears to the Panel that in the disputed domain names, the addition to the term “Leclerc” of the French generic terms “pharmacie”, or its usual abbreviation “pharma”, has for sole purpose to describe the services in relation with the pharmaceutical and parapharmaceutical products and services the Complainant’s trademarks are registered for. Furthermore, the terms “pharmacie” and “pharma” are also part of the Complainant’s registered trademark LA PARAPHARMACIE E.LECLERC L.
As a consequence, regarding the disputed domain name , the Panel finds that the addition of the descriptive word “pharma” to the term “Leclerc” is not sufficient to exclude the confusing similarity. In the same way, regarding the disputed domain names and , the Panel finds that the addition of the descriptive words “ma” and “pharma” or “pharmacie” is not sufficient to exclude the confusing similarity with the registered trademarks LECLERC and LA PARAPHARMACIE E.LECLERC L.
In view of the above, the Panel considers that the Complainant has proved that the disputed domain names are confusingly similar to the trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
The Policy outlines circumstances (paragraph 4(c)), if found by the panel to be proved, shall demonstrate the respondent’s rights or legitimate interests to the domain name. These circumstances are:
(i) before any notice to the respondent of the dispute, the respondent use of, or demonstrable preparations to use, the 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 domain name, even if he has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
According to prior UDRP decisions, it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names in order to shift the burden of production to the Respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
In the absence of response of the Respondent, the Panel accepts as true the Complainant’s allegations that the Respondent has no authorization or license to use the Complainant’s trademarks into the disputed domain names, that there is no business relationship existing between the Complainant and the Respondent, that the Respondent’s name is not composed of the name “Leclerc” and that he is not himself commonly known under the disputed domain names.
The Panel also considers that, as the three disputed domain names redirect to websites that are still under construction, there is no bona fide offering of goods and services by the Respondent.
In view of the above, the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
The Policy outlines circumstances (paragraph 4(b)) which, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith. These circumstances are:
(i) circumstances indicating that the respondent 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website 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 the respondent’s website or location or of a product or service on the respondent’s website or location.
Based on the evidence outlined by the Complainant according to which the Respondent tried to sell the disputed domain names to it for a total amount of EUR 3,500, amount which is way more than the sole out-of-pocket expenses related to the disputed domain names, it appears clear to the Panel that the Respondent intentionally registered these disputed domain names for the sole purpose of selling them.
Moreover, the Complainant outlined that the Respondent is a commercial director of a pharmaceutical distribution network based in France. Based on this circumstance, the Panel considers it is likely that the Respondent could not have ignored the prior rights of the Complainant and the nature of its activity when he registered the disputed domain names, particularly with regards to “parapharmacy” and with regards to its aim at developing drug selling activities, if such activity were not reserved anymore to the sole pharmacists. As a consequence, the Panel considers that the Respondent registered the disputed domain names:
- in order to prevent the Complainant from reflecting the trademark in the disputed domain names; and
- in order to tarnish the reputation of the Complainant since the confused Internet users could think that the Complainant had finally decided to sell pharmaceutical products, whereas it is legally not entitled to in France, where both parties are located.
Furthermore, in line with prior UDRP decisions, the Panel considers that the fact the websites to which the disputed domain names resolve are still under construction and are not actively used, does not, as such, prevent to infer a use in bad faith of the disputed domain names by the Respondent (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Westdev Limited v. Private Data,WIPO Case No. D2007-1903).
In this case, the Panel infers that the disputed domain names were registered to be used in a way which could be detrimental to the Complainant, particularly given the circumstances previously examined, such as:
- the registration by the Respondent of disputed domain names including a trademark he could not ignore;
- the attempt of the Respondent to sell to the Complainant the disputed domain names for an amount excessing the sole out-of-pockets costs directly related to the registration of the said disputed domain names; and
- the absence of response from the Respondent to the Complaint.
Therefore, the Panel considers this is a classic situation of “passive holding” which can be considered as a use in bad faith of the disputed domain names.
For these reasons, the Panel finds that the Respondent has registered and is using the disputed domain names in bad faith. 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 names , and be transferred to the Complainant.
Christiane Féral-Schuhl
Sole Panelist
Date: November 20, 2013
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