The Complainant is Association des Centres Distributeurs E. Leclerc of Ivry-sur-Seine, France, represented by Inlex IP Expertise, France.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Quentin Leclerc of Nice, France. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 30, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 6, 2018, 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 June 8, 2018.
The Center verified that the Complaint together with the amended 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 June 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 2, 2018.
The Center appointed Jane Seager as the sole panelist in this matter on July 13, 2018. 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 well-known operator of supermarkets and hypermarkets in France as well as in several other European Union countries. It has been in operation for over 60 years. There are currently 680 LECLERC stores in France and about 100 elsewhere in Europe. The Complainant is the market leader in France, employs 127,000 people, and its turnover was EUR 44.8 billion in 2017.
The Complainant has supplied evidence that it owns a registered trade mark in the term LECLERC (European Union Trade Mark No. 002700656, registered on February 26, 2004 for services in classes 1-45). It is also the owner of the domain name as well as a registered trade mark in the term E LECLERC (European Union Trade Mark No. 002700664, registered on January 31, 2005 for services in classes 1-45).
The Respondent appears to be an individual based in France. No additional information about the Respondent is known.
The Domain Name was registered by the Respondent on February 5, 2018. At the time that the Complaint was filed it was resolving to an inactive web page displaying the following URL: “e-leclerc.”. 5. Parties’ Contentions A. Complainant
In response to each of the requirements under the Policy, the Complainant asserts as follows:
(i) The Domain Name is confusingly similar to the Complainant’s trade mark
The Complainant asserts that it has developed a strong name and reputation in relation to the LECLERC chain of super and hypermarket stores. The Complainant contends that its LECLERC trade mark, mirroring the surname of the founder and promoter of the Complainant’s business, Edouard Leclerc, is a distinctive indicator of the source of its goods and services in France and several other European countries. As evidence, the Complainant has supplied a copy of its trade mark registration certificate.
Furthermore, the Complainant claims that the Domain Name identically reproduces the denomination LECLERC, having no meaning in French or English and being highly distinctive, with the addition of a generic French term “groupe” (“group” in English). The Complainant claims that the addition of this term does nothing to avoid confusing similarity but may even reinforce the impression of an affiliation between the Domain Name and the Complainant.
(ii) The Respondent has no rights or legitimate interests in the Domain Name
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant claims that it has established a prima facie case, sufficient to shift the evidentiary burden to the Respondent.
Furthermore, the Complainant submits that the Respondent, who has no link with the Complainant, does not seem to have any legitimate rights or interests in the registration and use of the Domain Name because, first of all, the Domain Name was registered anonymously. Secondly, the Complainant underlines that there is no evidence that the information relating to the identity of the Respondent, provided by the Respondent himself at the time of the registration of the Domain Name, is accurate and reliable. Thirdly, according to the Complainant, the Domain Name is neither used in connection with a bona fide offering of goods and/or services nor constitutes a legitimate noncommercial fair use as it redirects to an inactive page displaying the following URL “e-leclerc.”. This URL identically reproduces the denomination “e-leclerc” which matches the Complainant’s domain name (pointing to the Complainant’s official website) and the Complainants trade mark E LECLERC.
(iii) The Domain Name was registered and is being used in bad faith
The Complainant argues that its trade mark for the term LECLERC has been in existence for many years and its brand has received widespread reputation in France, Poland, Italy, Spain, Portugal, Andorra and Slovenia.
The Complainant submits that the notoriety of the trade marks LECLERC and E LECLERC as well as the Complainant’s supermarket and hypermarket network has been recognized in several decisions issued by prior UDRP panels. According to the Complainant, it is highly likely that the Respondent was aware of its brand at the time of registration of the Domain Name, firstly because the Respondent is domiciled in France. Secondly, the Complainant states that the Domain Name reproduces the name “Leclerc”, which is the famous family name of the founder of the Complainant’s business organization. Moreover, the Complainant avers that the combination of the name “Leclerc” with the French generic term “groupe” aims to create confusion in order to have consumers believe that the website associated with the Domain Name is linked to the Complainant’s group. The Complainant states that the associated website redirects to an inactive page displaying a URL which matches the Complainant’s official domain name and the Complainant’s trade mark. The Complainant also contends that the registration of the Domain Name was made anonymously.
Furthermore, the Complainant submits that there can be no legitimate or fair use of the Domain Name and that the Domain Name disturbs the Complainant’s business. The Complainant adds that it took several measures in order to find an amicable settlement in this matter without success. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainant must prove the following three elements:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality, and weight of the evidence.
In addition, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
The Panel notes that the Respondent did not reply to the Complainant’s contentions. The Respondent’s failure to respond, however, does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Taking the aforementioned provisions into consideration, the Panel finds as follows: A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Panel to consider first whether the Complainant has established relevant trade mark rights. The Complainant has provided evidence that it has registered trade mark rights in the term LECLERC in connection with the chain of super and hypermarket stores in France and several other European countries. The Panel is therefore satisfied that the Complainant has established relevant trade mark rights.
The Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Name is identical or confusingly similar to the Complainant’s trade mark. In this regard, the Panel notes that the Domain Name incorporates the Complainant’s distinctive LECLERC trade mark in its entirety with the addition of the descriptive term “groupe” (“group” in French). The Panel finds that this addition is insufficient to avoid confusing similarity with the Complainant’s trade mark. See section 1.7 of the WIPO Overview 3.0: “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. See, for instance, Pfizer Inc. v. William James,WIPO Case No. D2004 0583 (“It is an established principle that the mere addition of generic terms does not create a different trademark in which the respondent has rights and cannot be considered sufficient to avoid confusion between the domain name at issue and the complainant’s trademark”).
Furthermore, it is widely accepted that the “.com” generic Top-Level Domain (“gTLD”) extension is generally irrelevant for the purpose of assessing identity or confusing similarity between a trade mark and a domain name.
The Panel therefore finds that the Domain Name is confusingly similar to the Complainant’s trade mark.
The Complainant has therefore satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to demonstrate that the Respondent has no rights or legitimate interests in the Domain Name. Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including but not limited to:
“(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.”
A complainant is required to make a prima facie case that the respondent does not have rights or legitimate interests in the disputed domain name. 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 in question. If, however, 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. See section 2.1 of the WIPO Overview 3.0.
The Panel has considered the evidence put forward by the Complainant and considers that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the Domain Name and that, as a result of its default, the Respondent has failed to rebut such a showing.
The Complainant has alleged that the Respondent is not in any way affiliated with the Complainant and it has not authorised the Respondent to make any use of its LECLERC trade mark. Furthermore, it is highly unlikely that the Respondent would be “commonly known” by the Domain Name, given the notoriety surrounding the Complainant’s trade mark. The Respondent’s use of the Domain Name to resolve to an inactive web page displaying the URL “e-leclerc.” cannot be considered use in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the Domain Name.
Furthermore, the Respondent’s lack of rights or legitimate interests in the Domain Name may be inferred from the Respondent’s failure to submit a response to the Complaint. See Pomellato S.p.A v. Richard Tonetti,WIPO Case No. D2000-0493 (“non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”) and GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang,WIPO Case No. D2005-0090.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name.
Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to demonstrate that the Domain Name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that may indicate bad faith, including but not limited to:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel finds that the Domain Name was registered in bad faith. The Complainant’s LECLERC trade mark not only predates the registration date of the Domain Name by almost fifteen years, but also enjoys considerable renown in connection with the chain of super and hypermarket stores in France and several other European countries, as shown by the evidence put forward by the Complainant. Furthermore, given the nature of the Domain Name, which identically reproduces the Complainant’s LECLERC trade mark in conjunction with the generic term “groupe”, the Panel is convinced that, on the balance of probabilities, the Respondent had the Complainant in mind at the time of registration of the Domain Name and deliberately registered it to take advantage of the Complainant’s rights. The Panel therefore finds that the Respondent registered the Domain Name in bad faith.
As far as bad faith use is concerned, at the time that the Complaint was filed the Domain Name was resolving to an inactive page displaying the URL “e-leclerc.”. The Panel finds that, on balance of probabilities, it is highly likely that the creation of a third level subdomain identically reproducing the Complainant’s official domain name, website address and trade mark can only have been done in bad faith. In the exercise of its power to undertake limited consultation of publicly available sources (WIPO Overview 3.0, section 4.8) the Panel checked the mail exchanger records (“MX records”) of the Domain Name and found that it had been set up to send and receive email. The Panel finds that this is another indication that the Respondent’s intentions were not in good faith, as any emails sent using the Domain Name would certainly be confusing and unlikely to be linked to a legitimate purpose.
Under the circumstances, including the Complainant’s notoriety, the nature of the Domain Name itself (reflecting not only the Complainant’s distinctive trade mark, but a generic term directly relating to the Complainant’s business), the use of a privacy service to conceal the Respondent’s identity, the almost certainly false underlying WhoIs details (Quentin Leclerc is likely an alias created to make the registration appear legitimate) and the lack of response of the Respondent, both to the Complainant’s emails and to the Complaint, the Panel here finds sufficient indicia of bad faith to satisfy the Policy. Indeed, the Panel finds that it is simply not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate, as it would inevitably result in misleading diversion and taking unfair advantage of the Complainant’s rights.
The Panel therefore finds that the Domain Name has been registered and is being used in bad faith and that paragraph 4(a)(iii) of the Policy is satisfied. 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 Domain Name be transferred to the Complainant.
Jane Seager
Sole Panelist
Date: July 25, 2018
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