The Complainant is Association des Centres Distributeurs E. Leclerc - A.C.D Lec, France, represented by Inlex IP Expertise, France.
The Respondent is “On behalf of owner”, Whois Privacy Service, United States of America (“United States”) / Chimon Sultan, France. 2. The Domain Name and Registrar
The disputed domain name is registered with Amazon Registrar, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2019. On July 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 8, 2019, 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 July 9, 2019 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 July 10, 2019.
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 July 11, 2019. On July 11, 2019, an email communication was sent to the Center, stating “Dear Ms, The domain subject of this request has already been cancelled. Regards”. The Registrar confirmed on July 11, 2019, that the disputed domain name was not deleted and remained “Locked”. The Center sent an email communication to the Parties on July 12, 2019, requesting the sender of the email communication to identify itself, and to clarify its relationship to the Respondent. The sender of the email communication did not reply to the Center’s request for clarification.
In accordance with the Rules, paragraph 5, the due date for Response was July 31, 2019. The Respondent did not submit any response. Accordingly on August 1, 2019, the Center informed the Parties that it would proceed to appointment of the Administrative Panel.
The Center appointed Jane Seager as the sole panelist in this matter on August 8, 2019. 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, Association des Centres Distributeurs E. Leclerc – A.C.D. Lec, is a French association, headquartered in France. The Complainant operates a chain of retail supermarkets and hypermarkets in France as well as in several other European countries. Since 2015, the Complainant has been offering energy-related products and services including fuels, charge stations for electric vehicles, gift cards and discount cards for fuel purchases. These offerings are made under the name “Énergies E. Leclerc”. As part of its energy-related business, the Complainant also offers a sponsorship program whereby new customers who are identified as being connected to existing customers may benefit from discounts or loyalty rewards.
For use in connection with its retail and energy business operations, the Complainant owns, inter alia, the following trademarks:
- European Union Trade Mark Registration No. 002700656, LECLERC, registered on February 26, 2004;
- French Trademark Registration No. 4208114, ÉNERGIES E.LECLERC L (semi-figurative), registered on September 8, 2015;
- International Trademark Registration No. 1298402, ÉNERGIES E.LECLERC L (semi-figurative), registered on January 13, 2016, designating Italy, Poland, Portugal, Slovenia and Spain.
In addition, the Complainant is the owner of various domain names reflecting its trademark, including and . The Complainant offers its Énergies E. Leclerc sponsorship program via the website “www.”.
The disputed domain name was registered on March 13, 2019, using a privacy service. Prior to filing the Complaint, the disputed domain name resolved to a website in French purporting to be connected to the Complainant’s Énergies E. Leclerc sponsorship program, inviting Internet users to “subscribe” by providing certain information in order to receive vouchers valued at EUR 20 (the “Respondent’s website”). The Respondent’s website included a contact email address for queries “[…]@”.
On April 10, 2019, the Complainant sent a cease-and-desist letter to the Respondent via the privacy service with which the disputed domain name had been registered, giving notice of the Complainant’s trademark rights, requesting suspension of the website at the disputed domain name and cancellation of the disputed domain name. The Respondent did not reply to the Complainant’s cease-and-desist letter, nor to the Complainant’s subsequent reminder. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to its trademarks. The Complainant observes that the disputed domain name reproduces its LECLERC trademark together with the French descriptive terms “parrainage” (“sponsorship) and “énergies” (“energy”). Furthermore, the disputed domain name reproduces the elements “LECLERC” and “ÉNERGIES” from the Complainant’s ÉNERGIES E.LECLERC L trademark. The Complainant claims that the addition of the term “parrainage” does not help to avoid a risk of confusion, but on the contrary, enhances this risk.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant notes that the disputed domain name was registered using a privacy service, which is indicative of the Respondent attempting to hide its identity on account of having no rights or legitimate interests in the disputed domain name. The Complainant submits that there is no evidence to suggest that the underlying registrant is commonly known by the disputed domain name. The Complainant states that the Respondent has not been granted any authorization to make use of its trademarks, nor does the Complainant have any business relationship with the Respondent. The Complainant submits that the disputed domain name is not used in connection with a bona fide offering of goods or services as Internet users may be led to believe that the Respondent’s website is operated by or linked to the Complainant. The Complainant asserts that the Respondent seeks to benefit from the Complainant’s notoriety under its trademarks to unduly profit from the Complainant’s sponsorship program and to obtain advantages within the program.
The Complainant submits that the disputed domain name was registered and is being used in bad faith. At nearly 70 years since the opening of the Complainant’s first store in France, the Complainant states that it has become the leading European organization of independent storekeepers. The Complainant claims that the name “Leclerc” is immediately associated in the minds of French consumers with the Complainant’s brand. The Complainant notes that it has some 690 stores in France and approximately 100 stores in other countries in Europe. In addition, the Complainant states that it has been an importer of fuel and gasoline since 1979 and has 660 gas stations throughout France. In light of the above, the Complainant submits that it is unlikely or implausible that the Respondent, who appears to be located in France, was unaware of the Complainant and its prior trademark rights at the time that the disputed domain name was registered. In fact, the terms “parrainage” and “énergies” in the disputed domain name refer directly to the Complainant’s business activities carried out under the name “Énergies E. Leclerc”. Moreover, the Complainant asserts that the disputed domain name is highly similar to the Complainant’s ÉNERGIES E.LECLERC L trademarks as well as its domain name . The Complainant further claims that the Respondent is using the disputed domain name in order to take undue profit from the Complainant’s sponsorship program. As noted above, the Complainant submits that the Respondent’s website may lead Internet users to believe that it is operated or endorsed by the Complainant. The Complainant asserts that the Respondent’s website is not being used to offer any real or substantial offering of goods or services. The Complainant observes that mail-exchanger (“MX”) records have been set up for the disputed domain name, and further notes the presence of the email address “[…]@” on the Respondent’s website, alleging that there is a risk that the Respondent may be engaged in a phishing campaign. The Complainant asserts that the Respondent’s failure to reply to the Complainant’s cease-and-desist letter is a further indication of the Respondent’s bad faith.
The Complainant requests transfer of the disputed domain name. B. Respondent
The Respondent did submit any substantive reply to the Complainant’s contentions. 6. Discussion and Findings
In order to prevail under the Policy, a complainant must prove on the balance of probabilities that it has satisfied the requirements of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights in the LECLERC and ÉNERGIES E.LECLERC L trademarks by virtue of its trademark registrations and use of the same, the details of which are provided under the factual background section above.
The disputed domain name incorporates the Complainant’s LECLERC trademark in its entirety, together with the elements “parrainage-” and “-energies” on either side, under the generic Top-Level Domain (“gTLD”) “.com”. The disputed domain name also incorporates dominant elements of the Complainant’s ÉNERGIES E.LECLERC L trademark in the “leclerc-energies” portion of the disputed domain name. The Panel finds that the Complainant’s LECLERC trademark is readily recognizable in the disputed domain name. The Complainant’s LECLERC trademark comprises the central element of the disputed domain name and is separated from the other elements by hyphens. The addition of the elements “parrainage-” and “-energies” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s LECLERC trademark, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. Furthermore, the Panel finds that the dominant textual elements of the Complainant’s ÉNERGIES E.LECLERC L trademark are recognizable in the disputed domain name. The gTLD “.com”, being a technical requirement of registration, may be disregarded for the purposes of assessing confusing similarity under the first element, see WIPO Overview 3.0, section 1.11.1.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
At the time of filing, the disputed domain name resolved to a website that purported to offer a means for the Complainant’s customers to obtain vouchers for use in connection with the Complainant’s Énergies E. Leclerc products under its sponsorship program. The contents of the Respondent’s website gave the impression that the website was an official website of the Complainant, including a link to the Complainant’s website, ostensibly to reinforce such an impression. The Panel accepts the Complainant’s assertions that such activities do not amount to a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy. The Panel finds that the Respondent, who has no business relationship with the Complainant or other authorization to make use of the Complainant’s trademarks, is attempting to create a misleading impression of association with the Complainant, most likely to obtain personal or financial information from customers of the Complainant, or to take advantage of customer details to obtain financial rewards through the Complainant’s sponsorship program. Prior UDRP panels have categorically held that the use of a domain name for illegal activity, e.g., for purposes of impersonation or other types of fraud, can never confer rights or legitimate interests on a respondent, see WIPO Overview 3.0, section 2.13.
The Respondent has not presented any arguments to rebut the Complainant’s assertions in this regard, nor has it come forward with any evidence to suggest that it owns trademarks in the “Leclerc” name. The Panel considers that the Respondent’s use of the disputed domain name does not support any inference that the Respondent is commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy, nor is there anything in the case record to suggest that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name under paragraph 4(c)(iii) of the Policy.
In light of the above, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant has provided press articles detailing the extent of its business operations, particularly with regard to the Complainant’s presence as a leader in the retail sector in France where the Respondent is located, as well as prior UDRP decisions recognizing the strength and reputation of the Complainant’s trademarks. The Panel further notes that the Complainant’s trademarks predate the registration of the disputed domain name by several years. The Panel infers from the use to which the disputed domain name has been put, as described above, that the Respondent had the Complainant and its trademarks in mind at the time that it registered the disputed domain name, and did so in an effort to create a likelihood of confusion with the Complainant and its commercial offerings. The Panel accepts the Complainant’s assertion that the inclusion of the term “parrainage” in the disputed domain name serves to reinforce the association between the disputed domain name and the Complainant’s Énergies E. Leclerc business.
The Respondent has made use of the disputed domain name, which clearly comprises the Complainant’s LECLERC trademark, in connection with a website that gives the impression of being operated by or otherwise connected to the Complainant’s Énergies E. Leclerc sponsorship program. As mentioned under the preceding section, the Panel finds that the Respondent’s website was created in an attempt to mislead Internet users seeking the Complainant, either to obtain personal or financial information from customers of the Complainant or to take advantage of customer details to obtain financial rewards through the Complainant’s sponsorship program. Such misleading behavior amounts to bad faith use of the disputed domain name pursuant to paragraph 4(b)(iv) of the Policy, and is manifestly considered to be evidence of bad faith, see WIPO Overview 3.0, section 3.1.4.
The Panel also considers the Respondent’s failure to reply to the Complainant’s cease-and-desist letter, together with the fact that the disputed domain name no longer resolves to an active website, also supports a finding of bad faith on the part of the Respondent.
For the above reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith. The Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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.
Jane Seager
Sole Panelist
Date: August 20, 2019
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