The Complainant is Distribution Leader Price SNC of Gretz-Armainvilliers, France, represented by SafeBrands, France.
The Respondent is Magna Solution of Atlanta, Georgia, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2016. On September 15, 2016 the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 16, 2016 the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2016.
The Center appointed Luis Miguel Beneyto Garcia-Reyes as the sole panelist in this matter on October 18, 2016. 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 following facts must be taken into account in the case at hand.
The Complainant is part of the Casino Group, one of the world’s foremost food retailers. At December 2015 there were 1,224 stores of the Complainant in France.
The complainant is the owner of several French LEADER PRICE trademark registrations. For instance, French Trademark Registration No. 1,551,685 LEADER PRICE (and device), registered on September 21, 1989 for goods and services in International classes 2, 3, 8, 11, 16, 1820, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33 and 34. The mark is also protected in other European Union (“EU”) and non−EU jurisdictions through several registrations owned by Gemex, one of the Casino Group subsidiaries.
The complainant is the owner of several active domain names including the trademark LEADER PRICE as the main element, and among them.
Before the registration by the Respondent, the disputed domain name had been previously registered and used by the Complainant to promote the Complainant’s LEADER PRICE trademark.
The disputed domain name was registered by the Respondent on January 13, 2016. The Respondent has used the disputed domain name by including on the corresponding website several links of different natures, including some providing access to pictures of young “hot girls”.
The Complainant contacted the Respondent to try to settle the matter and offering a price in exchange for the transfer of the disputed domain name; the Respondent never responded and finally shut down the website of the disputed domain name. 5. Parties’ Contentions A. Complainant
- The Complainant is part of the Casino Group, one of the world’s foremost food retailers with 325,820 employees worldwide. It was created in 1990 and its Leader Price stores are located in urban areas across France with 1,224 stores at December 31, 2015
- The Complainant is the owner of French Trademark Registrations No. 3,375,006 LEADER PRICE with priority of August 10, 2005; No. 1,551,685 LEADER PRICE with priority of September 21, 1989; No. 95,554,746 LEADER PRICE with priority of January 24, 1995; No. 99,812,607 LEADER PRICE with priority of September 16, 1999; and No. 94,535,787 LEADER PRICE with priority of September 13, 1994. Additionally, Gemex, one of the Complainant’s subsidiaries, owns other non-EU trademark registrations that protect the mark LEADER PRICE.
- The mark LEADER PRICE has a strong reputation, in France particularly.
- The disputed domain name identically reproduces the sign LEADER PRICE protected by the Complainant’s trademarks and other protected intellectual property rights. The element of the disputed domain name which commands the attention and is distinctive is “leader price”, since the word “recrute” is a generic term in French (meaning “recruit/hire” in English). But at the same time, since the Complainant is a major recruiter in France, the added word “recrute” in the disputed domain name would be perceived by Internet users as descriptive of a website where they could find information for employment. In consequence, the presence of the term “recrute” increases the risk that, when accessing the disputed domain name, Internet users would be under the impression that they would find recruiting information coming from the Complainant.
- The Respondent has no rights or legitimate interests in the disputed domain name, given that the Respondent is not commonly known by the name “Leader Price”, the Respondent did not obtain any authorization from the Complainant to use the registered trademark LEADER PRICE, and “Leader Price” is not in the name or indication of the activity of the Respondent.
- In order to attempt to resolve this matter amicably, the Complainant sent several emails to the Respondent who never replied or provided the Complainant with any evidence of its use of the disputed domain name, or demonstrable preparations for its use in connection with a bona fide offering of goods or services before any notice of the present dispute.
- The Complainant was the former Registrant of the disputed domain name, via its public relations agency, but due to a mistake the disputed domain name was not renewed. The Complainant used the disputed domain name for the purpose of recruitment, offering job opportunities and information regarding the Complainant to French Internet users.
- The Respondent registered the disputed domain name in bad faith as it could not have been unaware at the time of registration of the existence of the trademark LEADER PRICE, considering the use made of the Complainant’s trademark since 1990 and the extremely high reputation of the Complainant in France.
- The disputed domain name was previously linked to a French website which, inter alia, had some sections with reference to “hot girls” and inappropriate content such as, in particular, videos of “porno foods”, images of very young girls with suggestive wording in French like “attractive hot girls for 2015”, “delighted with attractive girls” or “attractive girls for desktop background”. That content has had a negative impact on the Complainant’s reputation and its trademark LEADER PRICE in France and constitutes obvious evidence of the Respondent’s bad faith in respect of the use of the disputed domain name.
- The Respondent’s bad faith can also be perceived through the fact that the Complainant offered USD 150 to the Respondent as fair financial compensation for the transfer of the disputed domain name and later raised that offer to the substantial amount of USD 1,500. Not only was a response never received but the Respondent shut down its website. By acting thus, the aim of the Respondent is to prevent the Complainant from once again being the owner of the disputed domain name. Such an attitude shows that the Respondent registered and has used the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The LEADER PRICE trademark is clearly identifiable in the disputed domain name.
The presence of the word “recrute” in the disputed domain name in no way suffices to prevent the two from being confusingly similar, particularly considering that “recruitment” is an activity that the Complainant has actively engaged in, according both to the evidence submitted by the Complainant and to the information found by the Panel itself.
The Panel therefore finds the first requirement set out in paragraph 4(a) of the Policy to have been proven. B. Rights or Legitimate Interests
Respondent has not replied to the Complaint, hence there is no way to get its version regarding the possible existence of rights or legitimate interests in the disputed domain name.
The Panel is of the opinion, noting that there is no relationship between the Complainant and the Respondent, that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. After examining the case file and considering all the facts and circumstances on record in the file, the Panel has determined that:
- No evidence has been submitted to show that the Respondent may have been commonly known by the disputed domain name, has used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services, or is making a legitimate noncommercial or fair use of the domain name, without intent to misleadingly divert consumers for commercial gain or to tarnish the trademark LEADER PRICE.
- The Respondent’s failure to reply to the Complaint in this case may be regarded as acquiescence to the unanswered Complaint and as confirmation of the non-existence of any rights or legitimate interests on its part. This same finding has been made in countless previous URDP decisions, for instance, Montes de Piedad y Cajas de Ahorro en Ronda, Cádiz, Málaga, Almería y Antequera (UNICAJA) v. Fernando Labadía Pardo,WIPO Case No. D2000-1402; and Promoconcert S.L. v. Katarzyna Wolosz,WIPO Case No. D2014-1150. Further, had there been any such rights or legitimate interests, it is to be assumed that the Respondent would have pointed to them upon receiving the communication sent by the Complainant on April 1, 2016 and the subsequent reminders.
Consequently, the Panel finds that the second requirement laid down in paragraph 4(a) of the Policy has likewise been fulfilled. C. Registered and Used in Bad Faith
The Panel considers that the evidence submitted by the Complainant clearly suffices to support the conclusion that there has been bad faith on the part of the Respondent. In this regard the following circumstances, particularly, should be taken into account:
Although it has not been proved that LEADER PRICE is a sign that enjoys worldwide fame, it has been shown that it has a major presence in France, where it may be considered well known to the public, and on the Internet, that there are numerous registrations of the LEADER PRICE trademark in many jurisdictions outside France, and that the disputed domain name had actually been registered by the Complainant before it was registered by the Respondent. In this light it may be concluded that it is not plausible that the disputed domain name may be the consequence of an independent act of creation on the part of the Respondent, who must have been fully aware that a third party already held rights in the trademark LEADER PRICE.
The Panel therefore takes the view that the disputed domain name was registered in bad faith.
The Panel will now turn to the question of possible bad faith on the part of the Respondent in the use of the disputed domain name. In this regard, it is to be noted that in the decision in the case of J.Garcia Carrion S.A v. Mª Jose Catalan Frias,WIPO Case No. D2000-0239, which was followed by many others, it was observed that:
“… there would appear to be no doubt that whoever has registered a domain name in bad faith and without a legitimate interest will also be using it in bad faith, as any other interpretation would be entirely contradictory. Whoever acts in bad faith in registering a domain name will use it in bad faith, given that the bad faith is linked to the knowledge he had at the time of registration that he was causing detriment, without due cause, to the rights of a third party.”
Having registered the disputed domain name, the Respondent inserted on the website under the disputed domain name various links, including some facilitating access to photographs of young girls called “hot girls”. Aside from the harm which this could cause to the image of the LEADER PRICE mark, the fact that the Respondent then emptied the website in question of its content could likewise be construed as a tacit acknowledgment that the use being made thereof was not in good faith. At present the website identified by the disputed domain name is devoid of content. It is not possible to obtain any information other than the message “Service Temporarily Unavailable” or to contract any form of service. This may be considered a passive holding of the disputed domain name, which in many of previous UDRP decisions has been held tantamount to use in bad faith. By way of example we may mention the decision given in FEIYUE v. Asís, Mouhmouh,WIPO Case No. D2011-1225.
This Panel therefore takes the view that the conduct of the Respondent also exhibits bad faith with respect to use and consequently concludes that the requirement of paragraph 4(a)(iii) of the Policy is met. 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 name be transferred to the Complainant.
Luis Miguel Beneyto Garcia-Reyes
Sole Panelist
Date: October 31, 2016
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