The Complainant is Association des Centres Distributeurs E. Leclerc – ACD Lec, France, represented by Inlex IP Expertise, France.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America / Natasha Gupta, India. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2020. On February 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 2, 2020, 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 March 3, 2020 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 March 3, 2020. 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 March 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 27, 2020. The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on April 17, 2020. 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, Association des Centres Distributeurs E. Leclerc or A.C.D. Lec, whereby “E. Leclerc” or “Lec” refers to the last name of the founder of the association, being Mr. Edouard Leclerc. The Complainant is a well-known operator of supermarkets and hypermarkets in France as well as in several other European Union countries. The Complainant is the owner of the European Union Trade Mark registration E LECLERC with registration No. 002700664, registered on January 31, 2005, in International classes 1 to 45. Additionally, the Complainant is also the registrant of the domain names The disputed domain name The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows: (a) the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. According to the Complainant, its trademark is clearly recognizable in the disputed domain name as it incorporates the entirety of the trademark together with the term “anniversaire”. Additionally, the Complainant claims that the mere addition of the generic term “anniversaire” (meaning “birthday” or “anniversary” in English) does not negate the confusingly similarity between the disputed domain name and the Complainant’s trademark. Finally, the Complainant contends that the generic Top-Level Domain (“gTLD”) “.com” does not affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar. (b) the Respondent has no rights or legitimate interests in respect of the disputed domain name. 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 anonymously, 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. In addition, the Complainant submits that there is no evidence to suggest that the Respondent is commonly known by the disputed domain name. Nor is there any indication of any registration of the E LECLERC trademark in the name of the Respondent or that the Respondent is using the disputed domain name in connection with a company name. The Complainant further states that the Respondent has not been granted any authorization to make use of its trademark, nor does the Complainant have any business relationship with the Respondent. Moreover, the Complainant contends that the Respondent does not appear to have used the disputed domain name for any legitimate noncommercial purpose. In fact, the disputed domain name used to resolve to a malicious website. According to the Complainant, such a use is clearly deprived of any real and substantial offer of goods or services and cannot be considered as a legitimate noncommercial or fair use. (c) the disputed domain name was registered and is being used in bad faith. The Complainant asserts that, at the time of registration of the disputed domain name, the Respondent knew of the existence of the Complainant’s trademark and was therefore in bad faith when registering the disputed domain name. 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 “E Leclerc” is immediately associated in the minds of French consumers with the Complainant’s brand but also in Spain, Portugal, Slovenia, Poland, and Andorra. The Complainant further says its E LECLERC trademark is highly distinctive and very well known, as recognized in several UDRP cases: Association des Centres Distribiteurs E. Leclerc – A.C.D. Lec against pierre patron,WIPO Case No. D2019-2017; Association des Centres Distributeurs E. Leclerc – A.C.D. Lec v. Privacy Protection / Andrei Kislovodskii,WIPO Case No. D2019-0108; Association des Centres Distributeurs E. Leclerc v. Registration Private, Domains By Proxy, LLC / Quentin Leclerc,WIPO Case No. D2018-1185; Association of E. Leclerc Distributor Centers - ACD Lec against Guziewicz Ryszard,WIPO Case No. D2018-0482; Association des Centres Distributeurs E. Leclerc - A.C.D. Lec v. Wang Lian Feng,WIPO Case No. D2018-0659; Association des Centres Distributeurs E. Leclerc - A.C.D. Lec v. Domain Administrator, See PrivacyGuardian.org / Jugo Patel,WIPO Case No. D2019-0932; and Association des Centres Distributeurs E. Leclerc - A.C.D Lec v. Domain Administrator, See PrivacyGuardian.org / cunshuo zhang,WIPO Case No. D2019-1580. The Complainant therefore asserts that the registration of the disputed domain name cannot be a coincidence for the following reasons: - The disputed domain name incorporates the name of the founder of the Complainant, “E Leclerc”, as its essential distinguishing feature. - “E Leclerc” has no meaning in French or English. It is not a dictionary or common word. In the Complainant’s opinion, there is thus no reasonable explanation for choosing the disputed domain name. - The inclusion of the generic term “anniversaire” relevant to the business of the Complainant in relation with birthdays celebrations or the anniversary of the Complainant’s organization. Finally, the Complainant further alleges that the Respondent’s concealment of its identity is also indicative of bad faith. Turning to bad faith use, the Complainant argues as follows: - The Respondent has no rights or legitimate interests in respect of the disputed domain name. - There is no legitimate and/or fair use of the website associated with the disputed domain name as it resolved to a malicious website. - The Complainant has attempted to enter into contact with the Respondent. On October 28, 2019, the representative of the Complainant sent a cease-and-desist letter to the address indicated in the WhoIs database. However, there was no response, despite subsequent reminders. - The disputed domain name could deceive Internet users into believing that the Complainant’s website is not correctly functioning or has been hacked. For the above reasons, the Complainant concludes that the disputed domain name was registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s). First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to E LECLERC. Secondly, this Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.com” to the disputed domain name is viewed as a standard registration requirement and as such is disregarded. Thirdly, the disputed domain name fully incorporates the Complainant’s E LECLERC trademark in which the Complainant has rights. Fourthly, this Panel finds that the addition of the term “anniversaire” does not constitute an element so as to avoid confusing similarity for purposes of the Policy. On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s E LECLERC trademark. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads: (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.” This Panel finds that there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name. It is a well-established view of UDRP panels, with which this Panel agrees, that a prima facie case advanced by the complainant is generally sufficient for the complainant to satisfy the requirements under paragraph 4(a)(ii) of the Policy, provided that the respondent does not submit any evidence to the contrary (AGUAS DE CABREIROA, S.A.U. v. Hello Domain,WIPO Case No. D2014-2087; Spigen Korea Co., Ltd., Spigen Inc. v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2016-0145; HubSpot, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Steve Johnson,WIPO Case No. D2016-1338). In the present case, taking into consideration the default of the Respondent, this Panel finds that the Complainant has submitted a sufficient prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, in view of the circumstances of this case, including the following factors: - there is no evidence that the Respondent has been commonly known by the disputed domain name; - there is no evidence that the Respondent has been authorized or licensed to use the disputed domain name by the Complainant; and - there is no evidence that legitimate noncommercial or fair use of the disputed domain name has taken place. The Panel is also of the view that the Respondent’s failure to submit a Response is, in the circumstance of this case also evidence of the Respondent’s lack of rights or legitimate interests in the disputed domain name (see Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493). The fact presented by the Complainant as an indication of lack of rights or legitimate interests, namely that the Respondent tried to hide its real identity by using a so called private registration service, is not decisive. Although in a number of cases such private registration services will be used by bad faith registrants, it does not necessarily mean that the person using a private registration service will lack any rights or legitimate interests in all cases. For all the foregoing reasons, this 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 Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads: “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 (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.” Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of “registration and use of a domain name in bad faith.” With regard to the registration of the disputed domain name, this Panel believes bad faith may be found where the Respondent knew or should have known of the registration and use of the E LECLERC trademark prior to registering the disputed domain name. Such is true in the present case in which the Respondent registered the disputed domain name after the Complainant obtained its trademark registrations for the E LECLERC trademark. The Complainant’s reputation makes it disingenuous for the Respondent to claim that he was unware that the registration of the disputed domain name would violate the Complainant’s rights. The Respondent’s bad faith is emphasized by the fact that the disputed domain name incorporated the term “anniversaire”, a term that relates to the business activities of the Complainant or to the anniversary of the Complainant’s organization. Moreover, the evidence submitted by the Complainant shows that the Respondent has engaged in a pattern of hijacking famous trademarks as domain names (see Delta Air Lines, Inc. v. Whois Privacy Corp.; WhoisGuard, Inc.; Domain Protection Services, Inc.; PrivacyGuardian.org; Steve David; Kamran Khan; Domain Admin, Whois Privacy Corp.; Steven Fransworth; Lisa Alex; Natasha Gupta; Asgar Khan; Marcellus Coleman; Steve David; Raul Bogdan; Irfan Khan; Waseem A Ali; Tonicia Kelly; James Vills; George Eden, YPS,WIPO Case No. D2018-1564 and Société Air France v. Domain Administrator, See PrivacyGuardian.org / Domain Admin, Whois Privacy Corp. / Natasha Gupta,WIPO Case No. D2019-0348). The Respondent’s engagement in pattern of bad faith registration and use of domain names indicates also for the Panel that the disputed domain name has been registered in bad faith. There is ample authority in the previously decided UDRP cases that a pattern of abusive behaviour following registration in bad faith is by itself indicative of bad faith (see Citigroup, Inc v. Party Night Inc. aka Peter Carrington,WIPO Case No. D2003-0480 and Match.com L.p. v Amjad Kausar,WIPO Case No. D2003-0510). Additionally, given the Complainant’s trademark is a word with no meaning in French or English apart from in relation to the name of the founder of the Complainant, it cannot be a mere coincidence that the Respondent has chosen the disputed domain name. As for the use of the disputed domain name, based on the evidence submitted the Respondent is using it to direct consumers to a malicious website and such circumstance is a clear indication of bad faith. At the time of the Decision the disputed domain name does not resolve to an active website. However, non-use of a domain name can, in certain circumstances, constitute a domain name being used in bad faith under the doctrine of passive holding. Under the circumstances of this particular case, including the Complainant’s trademark reputation, the nature of the dispute domain name (reflecting not only the Complainant’s distinctive trademark, but also a dictionary term directly relating to the Complainant) and the lack of response of the Respondent, both to the Complainant’s cease-and-desist letter and to the Complaint, the Panel finds sufficient indications 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 disputed domain name by the Respondent that would not be in bad faith, as it would inevitably result in misleading diversion and taking unfair advantage of the Complainant’s rights. In light of the foregoing, this Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith under 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 Benoit Van Asbroeck
“When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
Sole Panelist
Date: April 29, 2020
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