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 Name Redacted1 of Nice, France. 2. The Domain Names and Registrars
The disputed domain names and are registered with Register.IT SPA (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2017. On January 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 1, 2017, 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 February 1, 2017, the Center notified the Parties in both English and French that the language of the Registration Agreement for the disputed domain name was French. On February 2, 2017, the Complainant requested for English to be the language of the proceeding, to which the Respondent did not reply.
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, in English and in French, and the proceedings commenced on February 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 7, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 8, 2017.
The Center appointed Isabelle Leroux as the sole panelist in this matter on March 16, 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 of independent storekeepers, which is well-known in France and in several other European countries.
The Complainant is the owner of the European Union trademark registration LECLERC Number 002700656 registered on February 26, 2004 in classes 1 to 45.
The disputed domain names and were registered respectively on October 25, 2016 and on October 20, 2016. The disputed domain names both resolve to a web hosting parking page. 5. Parties’ Contentions A. Complainant
The Complainant argues that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
(a) The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant submits that it owns several LECLERC trademarks. It argues that the disputed domain names reproduce identically the “Leclerc” denomination in association with the French generic words “groupe” and “centre” and with the French city “Issenheim” where is located one of the Complainant’s stores. It considers that the addition of these elements does not permit to differentiate the signs and to avoid the likelihood of confusion and that the disputed domain names are highly similar to the prior rights owned by the Complainant.
(b) The Respondent has no rights or legitimate interests in respect of the domain names.
The Complainant submits that, to the best of the Complainant’s knowledge, the Respondent:
- is not commonly known under the name “Leclerc”,
- does not make any use of a business name including the name “Leclerc”,
- has no rights on the term “Leclerc”.
The Complainant also submits that the Respondent has not been authorized by the Complainant to use the name “Leclerc”, that there is no business relationship between them and that the disputed domain names are neither used in connection with a bona fide offering of goods or services, nor constitute a legitimate noncommercial or fair use.
(c) The domain names were registered and are being used in bad faith.
The Complainant considers that the Respondent, who resides in France, was necessarily aware of the activities of the Complainant and of the existence of the LECLERC trademarks. In addition, the term “Leclerc” is the name of the famous founder of the Complainant’s business organization and it has no meaning in French. Finally, there is every reason to believe that the Respondent has misused the identity of a famous accounting firm.
In addition, the Complainant submits that there is no legitimate or fair use of the disputed domain names since they resolve to the holding pages of the French web hosting company AMEN. This use disturbs the Complainant’s business since customers may be led to think that the websites are not correctly functioning.
Finally, the Complainant explains that its representative tried to reach the Respondent before submitting the Complaint but did not receive any answer. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving each of the following:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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. Language of Proceeding
The language of the Registration Agreement for the disputed domain names is French.
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant has requested that English be the language of the proceeding, for the following reasons:
- The Registration Agreement displayed on the official website of the Registrar Register.IT SPA is only available in Italian or in English languages. For this reason, the Complainant decided to file its complaint in English.
- The website of the Registrar is only available in English and in Italian, but not in French. It should therefore be assumed that the Respondent has a sufficient knowledge of the English language, which is the most usual language worldwide.
- Submitting a translated Complaint would unduly delay the proceeding and the Complainant would incur important expenses.
The Respondent did not make any submissions regarding the language of the proceeding.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
In light of the Complainant’s submissions and the Respondent's decision to take no part in this proceeding, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. B. Respondent’s Name Redacted
As a preliminary matter, the Panel notes that the Complainant has submitted persuasive and sufficient evidence that the Respondent has misused the identity of a well-known accounting firm. Therefore it is appropriate in this proceeding to redact the actual name of the Respondent. See Independent Health Association Inc. v. Registration Private, Domains By Proxy, LLC / [K. A.],WIPO Case No. D2016-1625 and Boursorama SA v. Name Redacted,WIPO Case No. D2016-2224. C. Identical or Confusingly Similar
The Complainant has provided evidence that it owns the LECLERC trademark registration Number 002700656 covering a wide variety of goods and services.
The disputed domain names reproduce identically the “Leclerc” sign which is the dominant component of said domain names.
According to the consensus view of UDRP panels, the addition of merely generic, descriptive, or geographical wording to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9).
This principle applies to the addition of the word “centre”, which means “center” in French, all the more as the Complainant’s stores are sometimes referred to in France as “Leclerc’s centers”.
It also applies to the addition of the term “groupe”, which means “group” in French (see Arkema France v. Armand Riquier,WIPO Case No. D2016-0720).
Similarly, the addition of geographical term such as the city “Issenheim” does not serve to distinguish the disputed domain name from the Complainant’s trademark (see Association des Centres Distributeurs E.Leclerc - A.C.D. Lec v. Joao Pedro Pereira,WIPO Case No. D2011-1357).
On the contrary, the addition of the descriptive words such as “groupe” and “centre” and of the city “Issenheim”, where one of the Complainant’s stores is located, may enhance the risk of confusion.
The hyphens, between “leclerc” and “groupe” on the one hand and between “centreleclerc” and “issenheim” on the other hand can be considered as irrelevant as regards such risk of confusion.
Finally, previous UDRP panels have regularly ruled that the generic Top-Level Domain (“gTLD”) “.com” should be disregarded (see Association des Centres Distributeurs E. Leclerc - A.C.D Lec v. Oneandone Private Registration, 1&1 Internet Inc. - / Sharon Ulrich,WIPO Case No. D2014-2171).
Therefore the Panel finds that the disputed domain names are confusingly similar to the trademark LECLERC to which the Complainant has rights and thus the requirement under paragraph 4(a)(i) of the Policy is met. D. Rights or Legitimate Interests
The Complainant submits that the Respondent is not commonly known under the name “Leclerc”.
Moreover, the Respondent has not been authorized by the Complainant to use said name and there is no business relationship existing between the Complainant and the Respondent.
In addition, the disputed domain names are not used in connection with a bona fide offering of goods or services and no legitimate noncommercial or fair use is made of said domain names. Indeed the websites “www.” and “www.” associated to the disputed domain names redirect to the hosting company’s webpages.
Accordingly, the Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names.
Since the Respondent has not replied to the Complaint and, thus, has not presented any other evidence or elements to justify any rights or legitimate interests in connection with the disputed domain names, the Panel finds no indication that any of the circumstances described in paragraph 4(c)(i) to (iii) of the Policy could apply to the present matter.
Therefore, given the circumstances described above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names and thus the requirement under paragraph 4(a)(ii) of the Policy is met. E. Registered and Used in Bad Faith
It has been proven to the Panel’s satisfaction that the Complainant’s trademark LECLERC is well-known, and the Panel accepts that the Respondent, whose address is in France, could not reasonably ignore the Complainant’s activities.
In addition, the reservations of the disputed domain names cannot be a coincidence since the term “Leclerc” correspond to the name of the Complainant’s founder and has no meaning whatsoever in French.
Moreover, the Panel is convinced that the Respondent has misused the identity of a well-known accounting firm since the evidence communicated by the Complainant shows that there is no office at the Respondent’s address related to this well-known accounting firm. The fact that the disputed domain names are abusively registered in this name clearly shows the Respondent’s intent to deceive.
The above elements all indicate that the disputed domain names have been registered in bad faith.
Furthermore, the disputed domain names redirect to the hosting company’s webpages. Customers may believe that these webpages are associated with the Complainant’s official websites and may think that they are not functioning properly, thus causing harm to the Complainant’s image.
In addition, it has been recognized that inaction (e.g. passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). In the present circumstances, the Respondent’s passive holding does amount to a bad faith use.
Consequently, the Panel finds that the disputed domain names have been registered and are used in bad faith, so that the requirement under 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 names and be transferred to the Complainant.
Isabelle Leroux
Sole Panelist
Date: March 30, 2017
1 The Respondent’s name has been redacted for reasons explained below.
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