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 Zhang Xin of Shenyang, Liaoning, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (the “Registrar”). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2016. On December 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 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.
On December 27, 2016, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On the same day, the Respondent requested Chinese be the language of the proceeding. On December 28, 2016, the Complainant confirmed its request that English be the language of the proceeding.
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 in both Chinese and English of the Complaint, and the proceedings commenced on January 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 23, 2017. On January 24, 2017, the Center informed the Parties that it would proceed with panel appointment.
The Center appointed Douglas Clark as the sole panelist in this matter on January 27, 2017. 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 Association des Centres Distributeurs E. Leclerc- A.C.D. Lec. “E. Leclerc” refers to the family name of the founder and promoter of the association – Mr. Edouard Leclerc.
The Complainant is the proprietor of the European Union Trade Mark Registration E LECLERC No. 002700664, filed on May 17, 2002 and registered on January 31, 2005 in classes 1 to 45.
The Complainant uses its E LECLERC trademarks in connection with a chain of super and hypermarket stores. The Complainant’s chain of stores and the E LECLERC trademarks are widely known in France and in several other European countries.
The Respondent is an individual based in China.
The disputed domain name was registered on December 1, 2016 and does not resolve to any active page. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions are as follows:
Identical or confusingly similar
The Complainant contends that the disputed domain name and the trademark
E LECLERC are identical or confusingly similar. The disputed domain name contains E LECLERC in its entirety and the addition of the generic Top-Level Domain (“gTLD”) “.online” does not reduce its similarity.
No rights or legitimate interests
The Complainant contends the Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for E LECLERC. The disputed domain name does not resolve to any page and therefore the Respondent has not made any reasonable use of nor can it demonstrate preparations to use the disputed domain name. The Complaint contends the Respondent, therefore, has no rights or legitimate interests in the disputed domain name.
Registered and used in bad faith
The Complainant submits that there is no doubt that before registration of the disputed domain name, the Respondent knew of the Complainant’s rights in the E LECLERC trademark given its worldwide reputation. The Respondent is making no bona fide use of the disputed domain name, having acquired the disputed domain name only to disrupt the business of the Complainant and to prevent the Complainant from reflecting its mark in a corresponding domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions other than a brief email in response to the Center’s communication concerning the language of the proceeding. 6. Discussion and Findings 6.1 Language of proceeding
The language of the Registration Agreement is Chinese.
The Complainant requests that the language of proceeding be English on a number grounds including: that that the Complainant does not understand or speak Chinese; English is the language of international commerce; the disputed domain name was registered with the English gTLD “.online”; and, the Respondent had been involved in previous domain name cases where English had been the language of proceedings. The Complainant argued the obligation to translate all relevant case documents would be an unfair burden on the Complainant.
The Respondent responded with an email in Chinese stating that it did not fully understand English and requesting that Chinese be the language of the proceeding. The Respondent subsequently did not file a response.
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the parties, or specified otherwise in the Registration agreement, the language of the administrative proceeding shall be the language of the registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings.”
The Center made a preliminary determination to:
(1) Accept the Complaint as filed in English;
(2) Accept a Response in either English or Chinese;
(3) Appoint a Panel familiar with both languages mentioned above, if available.
As set out below, the Panel considers the merits of the case to be strongly in favor of the Complainant. Translating the Complaint would cause unnecessary delays and expense. The Respondent has received the Complaint and understands its nature. It has previously been involved in domain name disputes. All of the Center’s communications to the Parties have been in both Chinese and English. These factors lead the Panel to determine to follow the Center’s preliminary determination. If a Response had been filed in Chinese, the Panel would have accepted it. As the only pleading before the Panel is in English, the Panel will render its decision in English. 6.2 Substantive Issues
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is 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 name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name , other than the new gTLD “.online”, and hyphen is identical to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s E LECLERC mark in full. The disputed domain name is therefore identical or confusingly similar to the Complainant’s registered trademark.
The Panel notes that according to the evidence submitted, the Complainant does not have a registered trademark for E LECLERC in China. However, the ownership of a trademark is generally considered to be a threshold standing issue. The location of the trademark, its date of registration (or first use) and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. However, such factors may bear on a panel’s determination whether the respondent has registered and used the domain name in bad faith under the third element of the UDRP. (See paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”))
The first element of paragraph 4(a) of the Policy is therefore satisfied. B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests. Paragraph 2.1 of the WIPO Overview 2.0 provides:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
The Complainant is a relatively well-known company in France. E LECLERC has no apparent meaning in Chinese. The Respondent has no business or any kind of relationship (licensor, distributor) with the Complainant, and is not making any use of the disputed domain name.
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy sets out ways in which a respondent may establish they have rights or legitimate interests. These are:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
The Respondent has not responded to the Complaint to present any evidence to establish rights or legitimate interests under these heads. None of the circumstances in paragraph 4(c) of the Policy are present in this case.
Considering the absence of a response by the Respondent to the Complainant’s contentions and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant’s trademark, the Panel finds the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
The second element of paragraph 4(a) of the Policy is therefore satisfied. C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name was registered in bad faith and is being used in bad faith.
While the disputed domain name is not being used, this does not as such prevent a finding of bad faith (see paragraph 3.2 of the WIPO Overview 2.0). The disputed domain name comprises of the whole of the Complainant’s mark. The Complainant is relatively well-known in France and its name has no apparent meaning in Chinese. The Panel considers that it is very likely that the Respondent knew of the Complainant especially given the Complainant’s worldwide reputation and the fact that the Respondent has been a respondent in other UDRP proceedings. The Panel finds that the Respondent’s registration and passive holding of the disputed domain name in the circumstances of the present proceeding accounts to registration and use of the disputed domain name in bad faith.
Having examined all the circumstances of the case, the Panel finds that the disputed domain name was registered and is being used 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 name be transferred to the Complainant.
Douglas Clark
Sole Panelist
Date: February 15, 2017
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