The Complainant is Association des Centres Distributeurs E. Leclerc - A.C.D. Lec, France, represented by Inlex IP Expertise, France.
The Respondent is Registration Private, Domains By Proxy, LLC / Name Redacted. 2. The Domain Name and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2019. On October 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 17, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 24, 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 October 28, 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 October 31, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 20, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 21, 2019. The Center appointed Alexandre Nappey as the sole panelist in this matter on November 26, 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 is the French association “Association des Centres Distributeurs E. Leclerc – A.C.D Lec.”, one of the most renowned chain of supermarkets stores in France. The Complainant owns several trademarks composed of the term “E LECLERC”, among which the European Union Trademark E LECLERC No. 002700664, filed on May 17,, 2002 and registered on January 31, 2005. The disputed domain names are: - - At the time the Complaint was filed, the disputed domain names resolved to error pages. The Panel is requested to transfer the two disputed domain names to the Complainant. 5. Parties’ Contentions A. Complainant (1) The Complainant first alleges that the disputed domain names The disputed domain names incorporate the Complainant’s earlier trademark E LECLERC in its entirety within the disputed domain names themselves. The addition of the French word “groupe/s” in the disputed domain names does not reduce the confusing similarity between each disputed domain names and the Complainant’s earlier trademark E LECLERC. On the contrary, it reinforces the impression of an affiliation amongst the domain names and the Complainant as the terms “groupe/s” refer to sets of companies. (2) Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain names. - The disputed domain names were registered anonymously. - The Respondent has not been authorized by the Complainant to use the term “E LECLERC” or register the disputed domain names. - The disputed domain names are neither used in connection with a bona fide offering of goods of services nor constitute a legitimate noncommercial fair use as they both resolve to an error page. - Both disputed domain names were registered by misusing the identity of “Name Redacted”, a purchasing manager of the Complainant. - The identity of the Respondent has been used in another recent similar case involving the domain name (3) Finally, the Complainant claims that the disputed domain names were registered and are being used in bad faith. - Registered in bad faith The Complainant alleges that the trademark E LECLERC is well-known in France and in several other countries of Europe. The Complainant alleges that the Respondent was well-aware of the existence of the Complainant as well of its activities when he registered the disputed domain names. The disputed domain names were registered anonymously. The registration of the disputed domain names were made by misusing the identity of the Complainant’s employee. - Use in bad faith: There is no legitimate or fair use of the domain names as both domain names resolve to an error page. Email servers has been configured to operate with the domain names, which create a risk that the Respondent may be engaged in a phishing scheme. The Respondent did not answer to the cease and desist letter sent by the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that: (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. However, under paragraph 14(b) of the Rules, where a Party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”. Having considered the Parties’ contentions, the Policy, the Rules, the Supplemental Rules and applicable law, the Panel’s findings on each of the above-mentioned elements are the following. A. Preliminary consideration: Multiple Respondents The Complainant has requested the consolidation of multiple Respondents in respect of the disputed domain names. Under paragraph 3(c) of the Rules: “The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.” Under section 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), proceedings against more than one respondent may be consolidated where “(i) the domain names or corresponding websites to which are subject to common control, and (ii) the consolidation would be fair and equitable to all parties”. In this case: - both domain names have been registered in the name of “Name Redacted”; - the two disputed domain names are almost identical: they share an identical construction since both reproduce in the identical way the Complainant’s trademark E LECLERC associated to the dictionary word in French “groupe/s”; - the date of registration of the two disputed domain names are very close: May 9, 2019 and May 14, 2019; - both disputed domain names are hosted on Google servers. Based on the above, and taking into consideration that the Respondents did not rebut the Complainant’s assertions, the Panel is satisfied that the disputed domain names are subject to common control, and it would be fair and equitable to all parties to proceed with the consolidation. See: Oculus VR, LLC v. Alexey Slobodchicov / Michail Molovzorov, WIPO Case No. D2018-2175. In light of the above, the Respondents will hereinafter be referred to as the “Respondent”. A. Identical or Confusingly Similar The Panel is satisfied that the Complainant owns exclusive trademark rights in E LECLERC, which predate the registration of the disputed domain names The Panel finds that the disputed domain names are confusingly similar to the registered E LECLERC, trademark owned by the Complainant. Indeed, both disputed domain names incorporate the entirety of the Complainant’s E LECLERC, trademark with the mere addition of the French dictionary word “groupe/s” (singular/plural) which does not avoid confusing similarity. Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s mark under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names. Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or (iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Considering the difficulty to demonstrate a negative, UDRP panels generally find that if the complainant raises a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy, and then the burden of production shifts to the respondent to demonstrate its rights or legitimate interests. See De Beers Intangibles Limited v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2016-1465. Here, the Complainant has stated that it has not authorized, licensed or consented to the Respondent any use of its E LECLERC trademark. It results from the circumstances that the Respondent does not own any right on the trademark E LECLERC or is commonly known by the disputed domain names. In the light of what is stated above, the Panel finds that the Complainant has made an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. As the Respondent has not provided otherwise, the Panel finds from the available record that the second element of paragraph 4(a) of the Policy is fulfilled. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name. “For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (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 (iii) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” Since E LECLERC is a well known and distinctive trademark, the Panel finds it more likely than not that the Respondent was aware of the Complainant’s trademark at the time it registered the disputed domain names In addition, it appears that the identity of “Name Redacted” has already been misused to register another domain name including the Complainant trademark and the French word “groups” (Association des Centres Distributeurs E. Leclerc - A.C.D. Lec v. Whois Agent, Whois Privacy Protection Service, Inc. / Name Redacted,WIPO Case No. D2019-1007). Moreover, the Complainant submitted printouts showing that email servers have been configured with regard to the disputed domain names by the Respondent. This is likely reflective of a phishing attempt which further supports a finding of bad faith registration and use of the disputed domain names by the Respondent. It appears therefore that the Respondent, by making reference to the E LECLERC trademark, is trying to create a likelihood of confusion in order to attract, for commercial gain, Internet users to websites on which third parties, including the Complainant’s competitors are promoting their own competitive products. The Panel finds that the Respondent’s use of the disputed domain names cannot therefore constitute use of the disputed domain names in the bona fide offering of the goods. Conversely, the Panel finds that the Respondent registered the disputed domain names with the Complainant in mind and with the intention of capitalizing on the reputation of the Complainant within the meaning of paragraph 4(b)(iv) of the Policy. The Panel finds that the above constitutes registration and use in bad faith pursuant to the third requirement of paragraph 4(a) 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 names Alexandre Nappey 1 As stated in the amended complaint, the Respondent has fraudulently used the identity of a third party when registering the disputed domain name. The Panel has decided that no purpose can be served by including the named Respondent in this Decision and has therefore redacted the Respondent’s name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published due to exceptional circumstances. Virgin Enterprises Limited v. Moniker Privacy Services / Name Redacted WIPO Case No. D2019-1854.
Sole Panelist
Date: January 9, 2020
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