The Complainant is Societe Cooperative Groupements d'Achats des Centres Leclerc, SC GALEC of Ivry Sur Seine, France, represented by Inlex IP Expertise, France.
The Respondent is Privacydotlink customer 770524 of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland / Blue Nova INC. of St. Michel, Barbados, represented by ESQ, P.C., United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Uniregistrar Corp (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 5, 2016. On April 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 5, 2016, 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 April 6, 2016 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 April 8, 2016.
The Center verified that the Complaint together with the amended Complaint (hereinafter both referred together as 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2016. The Respondent requested an extension of the Response due date for four days by email received by the Center on April 21, 2016. The Center confirmed by email to the Parties on April 21, 2016 that the Response due date was extended to May 6, 2016. The Response was filed with the Center on May 6, 2016.
The Center appointed Luca Barbero, Nathalie Dreyfus and The Hon Neil Brown Q.C. as panelists in this matter on May 30, 2016. The Panel finds that it was properly constituted. Each member of 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 company established in 1962 belonging to the group E. Leclerc, a French hypermarket and supermarket chain.
The Complainant is the owner of the French trademark registration No. 3644736 for GALEC (figurative mark), filed on April 17, 2009 in class 35.
The disputed domain name was registered on November 20, 2003 and is pointed to a landing page displaying generic sponsored links. 5. Parties' Contentions A. Complainant
The Complainant states that SC GALEC is the acronym of its company name Societe Cooperative Groupements d'Achats des Centres Leclerc and that it is most commonly referred to as GALEC.
The Complainant contends that the disputed domain name identically reproduces the word element "galec" of the Complainant's trademark and submits that the graphical part of the Complainant's trademarks as well as the ".com" extension should be disregarded as they are devoid of any distinctiveness and with no effect when comparing the signs at issue.
With reference to the circumstance that the Complainant's trademark was registered after the registration of the disputed domain name, the Complainant cites paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), stating that registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity.
The Complainant claims that the Respondent has no rights or legitimate interest in the disputed domain name since:
- The Respondent has not been authorized by the Complainant to use the mark GALEC and there is no business relationship existing between the Complainant and the Respondent;
- The circumstance that the disputed domain name was registered anonymously may be regarded as an indication that the Respondent wants to hide its identity because it has no rights or legitimate interests in respect of the disputed domain name;
- The Respondent is not commonly known under the name Galec since the name of the Respondent is not composed of the term "galec", the Respondent does not make any use of a business name including the term "galec" and the Respondent has no rights, including trademark rights, on the sign GALEC;
- The disputed domain name is neither used in connection with a bona fide offering of goods or services nor constitute a legitimate non-commercial or fair use because the disputed domain name is currently pointed to a parking website with several hyperlinks where the disputed domain name is also offered for sale, and also in the past it has never been redirected to an active web site but only to a parking page or to a website without content.
The Complainant asserts that it is unlikely that the Respondent was unaware of the Complainant's activities and of the existence and use of the denomination "Galec" at the time the registration was made for the following reasons:
- The Complainant and its supermarkets and hypermarkets are well known in France and in several other countries of the European Union where the Complainant runs its business under the trademark LECLERC, including in Italy, Spain, Portugal, Poland, Andorra and Slovenia. The Complainant highlights that there are 640 hypermarkets and supermarkets LECLERC in France and 88 hypermarkets and supermarkets LECLERC in Europe and that, with a 20 % of market shares on all products, the Complainant is the leader of distribution in France;
- The registration of the disputed domain name cannot be a coincidence, since the Complainant widely used the name Galec well before the registration of the disputed domain name;
- When introducing the term "galec" in the Google search engine, the results displayed on the two first pages are exclusively related to the Complainant's company and to the Complainant's name Galec;
- There is no reasonable explanation for choosing a domain name identical to the term "galec", which is not a dictionary or common word and corresponds to the acronym of the Complainant's name Groupements D'Achats des Centres Leclerc, other than to refer to the Complainant's name.
The Complainant also states that the Respondent, by registering the disputed domain name, aimed at taking advantage of the confusion between the disputed domain name and the Complainant's business, run for more than 50 years under the name "Galec", as well as to prevent the Complainant from reflecting the name Galec in a corresponding domain name. The Complainant therefore concludes that these elements demonstrate that the disputed domain name was registered primarily for the purpose of taking an unfair advantage of the well-established Complainant's name in order to attract the Internet users for commercial gain.
The Complainant asserts disputed domain name is also used in bad faith because:
- During the 13 years of its existence, the disputed domain name never redirected to a website offering goods or services or constituting any other legitimate non-commercial use, since the disputed domain name currently resolves to a parking site which is used to take an unfair advantage of the Complainant's name and trademark by diverting Internet users looking for the Complainant to the Respondent's website "www.", where it benefits from the confusion and diversion by receiving pay-per-click commissions. The Complainant's further verifications on the Internet Archive website also highlighted that the disputed domain name was never redirected in the past to any active web site but only to a parking page or to a website without content;
- The disputed domain name could deceive Internet users, including the Complainant's customers, suppliers and partners, and lead them to believe that the site "www.", to which it resolves, is the Complainant's website and that the website not be functioning, thus harming the activities and image of the Complainant;
- The Complainant took measures in order to find an amicable settlement in this matter without success, since, on January 26, 2016, the representative of the Complainant sent a cease and desist letter to the Respondent to the address indicated in the WhoIs database asking it to assign the disputed domain name back to the Complainant, but its email as well as a subsequent reminder remained unanswered. B. Respondent
The Respondent states that there is no basis for transferring the disputed domain name to the Complainant since, even if the Panel accepts the validity of the Complainant's trademarks for the purposes of paragraph 4(a)(i) of the Policy, it cannot be argued that the Respondent targeted the Complainant.
The Respondent also claims that it has a legitimate interest in the disputed domain name and that its registration and use of the disputed domain name does not amount to bad faith for the following reasons:
- The Respondent registered the disputed domain name (through its predecessor in interest), on or around June 25, 2005, because of its inherent value as a 5-letter domain name corresponding to a phonetic representation (as well as a common misspelling) of the dictionary word "Gaelic", i.e. relating to the Celtic Language, as well to many other possible acronyms;
- The Respondent has used the disputed domain name for nearly ten years in connection with a bona fide offering of goods and services consisting in the redirection to a web site displaying pay-per-click advertising links related to the general interest topics based on a Google advertiser feed on hosted domain names, sharing the advertising revenue with the domain name owners;
- The Respondent has registered thousands of generic dictionary common word domain names, three to five letter domain names, and common surnames as domain names. In particular, common word domain names best fulfill the purpose of a domain name which is to be easy to remember and, therefore, serve well as online identities and, as a result, are commercially valuable;
- The links published on the web site at the disputed domain name, which are not selected by the Respondent and are auto-generated by Google, do not relate to the Complainant or its business;
- A business based on reselling domain names also satisfies the legitimate interest prong of the Policy, provided there is no evidence a trademark was targeted by the registrant;
- The Complainant has failed to show that its trademark would be well known all over the world and it can hardly be argued that Galec is a "household name" outside of the area in which the Complainant operates;
- The Respondent was not aware of the Complainant or its mark when it registered the disputed domain name, several years before the filing of the Complainant's figurative trademark, and at any time prior to the contact initiated by the Complainant. In addition, the Respondent did not register the disputed domain name with the intent to sell it to the Complainant, to disrupt the Complainant's business, to confuse consumers seeking to find Complainant's web site or to prevent the Complainant from owning a domain name incorporating its trademark;
- Absent direct proof that a common term domain or combined letter name was registered or acquired solely for the purpose of profiting from Complainant's trademark rights, there can be no finding of bad faith registration or use;
- Where, as here, a party registers a short domain name, and also the phonetic spelling of a common word, the lack of advertisements targeting goods or services offered by the Complainant suggests that the Respondent did not intend to confuse Internet users into thinking that the Complainant was somehow associated with the Respondent's website. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of a French trademark registration No. 3644736 for GALEC (figurative mark), filed on April 17, 2009 in class 35.
As stated in paragraph 1.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), ownership of a trademark generally satisfies the threshold requirement of having trademark rights, the location of the trademark, its date of registration, and the goods and/or services for which it is registered being irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.
In addition, as indicated in paragraphs 1.11 of the WIPO Overview 2.0, figurative, stylized or design elements in a trademark are typically disregarded for the purpose of assessing identity or confusing similarity, being generally incapable of representation in a domain name.
The Panel notes that the disputed domain name incorporates the denominative part of the mark GALEC in its entirety, with the addition of the gTLD suffix .com, which can be disregarded being a mere technical requirement of registration.
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the figurative trademark GALEC in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Because of the Panel's findings below, it is not necessary to address the issue of whether the Respondent has rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel finds that the Complainant has not proven that the Respondent targeted the Complainant and its trademark GALEC, or otherwise acted in bad faith towards the Complainant and its trademark, at the time of registration and/or thereafter.
As mentioned in the paragraphs above, the disputed domain name was originally registered on November 20, 2003, and the Respondent claims to have acquired it, through its predecessor in interest, "on or around June 25, 2005".
The Complainant's figurative trademark GALEC was registered, according to the evidence on records, only in France, and was filed only on April 17, 2009, several years after the acquisition of the disputed domain name by the Respondent.
As highlighted in paragraph 3.1 of the WIPO Overview 2.0, when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established, on a registered or unregistered basis, the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right. However, bad faith can be found in certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights. The Panel notes that the Complainant did not make reference to any situation that could have constituted an exception to the general rule.
In view of the above, the Panel finds that the Complainant has failed to demonstrate that the Respondent was or could have been aware of the Complainant's trademark at the time of its acquisition of the disputed domain name.
Furthermore, the content of the web site to which the disputed domain name currently resolves and the historical screenshots of the Respondent's web site available on records do not suggest any intention of the Respondent to target the Complainant, since the disputed domain name has been pointed to parking pages displaying generic pay-per-click links not related to the Complainant's business or products.
Therefore, the Panel finds that the Complainant has not proved that the Respondent has intended to take, or actually has taken, advantage of the disputed domain name for its significance as the Complainant's trademark and that the Respondent's registration and use of the disputed domain name amount to bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied.
Luca Barbero
Presiding Panelist
Nathalie Dreyfus
Panelist
The Hon Neil Brown Q.C.
Panelist
Date: June 13, 2016
Full & Egal Universal Law Academy