The Complainant is Association des Centres Distributeurs E. Leclerc of Ivry-sur-Seine, France, represented by Inlex IP Expertise, France.
The Respondent is Raphael Haltz of Aix en Provence, France. 2. The Domain Name and Registrar
The disputed 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 October 8, 2018. On October 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 2018, 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 October 10, 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 October 10, 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 October 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 5, 2018.
The Center appointed Isabelle Leroux as the sole panelist in this matter on November 14, 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 French association specialized in large-scale distribution and retail, founded by Mr. Edouard Leclerc 70 years ago.
The Complainant owns several trademarks consisting of the term “leclerc”, last name of the founder, in particular the following:
- European Union verbal trademark LECLERC No. 002700656, registered on February 26, 2004 and duly renewed, designating products and services in classes 1 to 45 (hereafter “Trademark”).
The Trademark is widely used in connection with a chain of supermarket and hypermarket stores operated by the Complainant. There are altogether 680 stores in France and around 100 stores in other European countries.
The disputed domain name was registered on May 19, 2018 by the Respondent who is an individual located in Aix en Provence, France.
The disputed domain name used to be inactive and now resolves to a Registrar parking page displaying pay-per-click (“PPC”) links. 5. Parties’ Contentions A. Complainant
(i) Firstly, The Complainant contends that the disputed domain name is identical or confusingly similar to the Trademark.
(ii) The Complainant contends that the Respondent is not commonly known under the name “leclerc” and has no rights or legitimate interests in the disputed domain name. The Complainant also submits that the disputed domain name is neither used in connection with a bona fide offering of goods or services nor constitutes a legitimate noncommercial or fair use.
The anonymous registration of the disputed domain name is a further indication of absence of rights or legitimate interests according to the Complainant.
(iii) Finally, the Complainant contends that the disputed domain was registered in bad faith, since the Respondent should have been aware of the existence of the Complainant’s prior rights in the Trademark.
The Complainant further submits that the registration of the disputed domain name would create a risk of confusion in the mind of consumers who may consider the associated website to be an official website of the Complainant offering mobile applications, which is harmful for the activities of the Complainant.
(iv) The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Procedural Aspects
The Panel notes that the Respondent is formally in default pursuant to paragraphs 5(f) and 14(a) of the Rules because no response was received from the Respondent within the time limit set by the Policy and the Rules.
However, the Panel finds that this does not mean that the remedies requested should automatically be awarded. The Panel will have to establish whether the Complainant’s prima facie case meets the requirements of paragraph 4(a) of the Policy, which will be examined in turn below. 6.2 Requirements of paragraph 4(a) of the Policy A. Identical or Confusingly Similar
The Complainant provided evidence that it has rights in the Trademark, well before the Respondent registered the disputed domain name. This satisfies the Panel that the Complainant has registered trademark rights in LECLERC.
According to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the applicable generic Top-Level Domain (“gTLD”) in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus the Panel disregards the gTLD “.app” for the purposes of the confusing similarity test.
A domain name is normally considered as identical or confusingly similar where it incorporates the entirety of a trademark for the purposes of UDRP standing (section 1.7, WIPO Overview 3.0).
The Panel notes that the disputed domain name reproduces the Trademark in its entirety. Thus, the Panel finds that the disputed domain name is identical to the Trademark in which the Complainant has rights.
The requirements of paragraph 4(a) (i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests
It is well established that, once a prima facie case is made by the Complainant, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence the complainant is deemed to have satisfied the second element (section 2.1, WIPO Overview 3.0).
The Complainant has provided evidence that it has never authorized the Respondent to use or register the trademark LECLERC nor there is any business relationship with the Respondent.
In addition, the Complainant has provided evidence that the disputed domain name was inactive. The Panel further noted that the disputed domain name is now active and resolves to a Registrar parked page displaying PPC links related to the Complainant’s trademark. Previous UDRP panels have found that the use of a domain name to host a parked page comprising PPC links related to the Complainant, which presumably generated revenue, is not a legitimate noncommercial or fair use without intent for commercial gain. See TDBBS, Inc. v. Mark Dimitrijevic,WIPO Case No. D2016-2111 and UniCredit S.p.A. v. Adedoyin Abimbola,WIPO Case No. D2018-1723.
Accordingly, the Panel finds that such use does not represent a bona fide offering of goods or services. The Complainant has therefore established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name.
Since the Respondent has not replied to the Complaint, the Panel finds no indication that any of the circumstances described in paragraph 4(c) of the Policy could apply to the present matter.
Thus, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant provided evidence that the LECLERC trademark is widely known in France and has been registered well before the disputed domain name.
Given the above elements, the Panel accepts that the Respondent, whose alleged address is in France, could not reasonably ignore the Complainant’s trademark and activities and knew, or should have known that its registration would be identical or confusingly similar to the Complainant’s trademark.
The Panel further noted that the disputed domain name directs to a parked page with PPC links that seem to be generated “automatically” by the Registrar.
According to section 3.5 of the WIPO Overview 3.0, the fact that such links are generated “automatically” or by a third party such as a registrar would not by itself prevent a finding of bad faith.
UDRP panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name, even if such registrant may not be exercising direct control over such content, unless it can show some good faith attempt toward preventing inclusion of advertising or links that profit from trading on third-party trademarks. See Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315 and SAP SE v. Domains by Proxy, LLC / Kamal Karmakar,WIPO Case No. D2016-2497.
By not submitting a Response, the Respondent offered no information on any good faith attempt that might have led the Panel to question the Complainant’s arguments.
Under the circumstances described above, the Panel finds that the intention of the Respondent to take undue advantage of the Complainant’s trademark rights has been demonstrated.
For the above reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith, and thus the condition of paragraph 4(a)(iii) of the Policy has been 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 disputed domain name be transferred to the Complainant.
Isabelle Leroux
Sole Panelist
Date: November 28, 2018
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