The Complainant is Société Coopérative Groupements D’achats des Centres Leclerc, SC Galec, France, represented by Inlex IP Expertise, France.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2020. On April 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 3, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 April 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 27, 2020. The Center appointed Jane Lambert as the sole panelist in this matter on May 6, 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 corporation under French law. Its full corporate name indicates that it is the procurement entity for the Leclerc stores. The Leclerc stores are well-known retailers in France and a number of other countries. The Complainant’s somewhat lengthy corporate name is often abbreviated to “SCGALEC” or “GALEC”. The Complainant has registered the word GALEC as a national trade mark with the French intellectual property office (INPI) for a variety of goods and services in class 35 under registration number 3644736 with effect from April 17, 2009. Evidence of registration appears in Annex 7 to the Complaint. The disputed domain name was registered on March 14, 2020. The Respondent operates through a privacy service with the Registrar’s website as a forwarding address. The disputed domain name has been used to set up an email account in the name ofa senior executive of a business entity that is connected with the Complainant. Anyone who has dealt with the Complainant or any of the group of companies of which the Complainant forms a part would wrongly assume that an email from such email address was sent by the Complaintant and that the Complainant would pay for the goods that had been ordered. Such account has been used to send deceptive email communications without the authority of the Complainant. Evidence of such use is included in Annex 10 and Annex 11 to the Complaint. The disputed domain name does not appear to have been used for an active website. Rather, the disputed domain name redirects to one of the Complainant’s web pages, which is evidenced in Annex 9 to the Complaint. 5. Parties’ Contentions A. Complainant The Complainant claims the transfer of the disputed domain name on the following grounds: - the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; - the Respondent has no rights or legitimate interests in respect of the disputed domain name; and - the Respondent has been registered and is being used in bad faith. As for the first ground, the trade mark in which the Complainant claims rights is the French trade mark number 3644736 mentioned above. The Complainant makes the following arguments in support of its contention that the disputed domain name is identical or confusingly similar to that mark. First, the trade mark was registered before the registration of the disputed domain name. Secondly, as the letters “sc” and “galec” have no meaning, the Complainant argues that they must have strong distinctiveness. Thirdly, the word “galec” is incorporated into the disputed domain name in its entirety. Fourthly, the letters “scgalec” are an abbreviation of the Complainant’s corporate name. The Complainant adds that such an abbreviation is likely to induce Internet users to believe that the disputed domain name is the URL of one of the Complainant’s websites. Fifthly, the Complainant alleges that in Société Coopérative Groupements D’achats des Centres Leclerc, SC Galec v. Paul Veron, WIPO Case No. D2018-2794 the panel recognized the possibility of confusion between the trade mark and the domain name On the second ground, the Complainant makes the preliminary point that while it is under a duty to prove that the Respondent has no rights or legitimate interests in the disputed domain name it is not required to prove a negative. The Complainant can discharge that duty if it can make out a prima facie case that the Respondent had no such rights or legitimate interests. Once the Complainant has done that, the evidential burden passes to the Respondent. The Complainant states that the Respondent has no link with the Complainant whatsoever. In its submission, that would explain why the Respondent applied to register the disputed domain name in a clandestine manner. There is no evidence that the Respondent is known by a name colourably similar to the disputed domain name, that it has incorporated a company in such a name or registered a trade mark in anything like that name. The Complainant has never authorized the Respondent to use its trade mark or corporate name. The disputed domain name is not used for any legitimate commercial or noncommercial activity. With regard to the third ground, the Complainant contends that the registration of a domain name that is the same or similar to the trade mark of a well-known retailer is itself an act of bad faith. However, the Complainant also relies on the setting up of the fictitious email account mentioned above and its use to perpetuate fraud. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The agreement for the registration of the disputed domain name incorporated paragraph 4 (a) of the Policy: “You are required to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) you have no rights or legitimate interests in respect of the domain name; and (iii) your domain name has been registered and is being used in bad faith. In the administrative proceeding, the complainant must prove that each of these three elements are present.” A. Identical or Confusingly Similar The Panel is satisfied that the first element is present. The Complainant has provided evidence is the registered proprietor of the French trade mark number 3644736. It is therefore a trade mark in which the Complainant has rights. The disputed domain name differs from the trade mark only in the addition of the letters “s” and “c”, which may stand for “société” and “coopérative” in French, especially when juxtaposed. The dominant element of the disputed domain name is “galec” which is identical to the trade mark. The addition of the letters “s” and “c” do not prevent a finding of confusing similarity. The Panel therefore finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests The Panel is satisfied that the second element is present. As the Complainant rightly submits: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element 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” (see paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The Complainant has listed a lot of reasons why the Respondent is unlikely to have rights or legitimate interests in the disputed domain name. The most compelling is that the Complainant has never authorized or licensed the Respondent to use the Complainant’s trademark or a domain name incorporating the Complainant’s trademark. Furthermore, the fraudulent use of the disputed domain name does not constitute a bona fide offering of goods or services, nor a noncommercial or fair use. If the Respondent had been entitled to register the disputed domain name either for one of the reasons set out in paragraph 4(c) or otherwise it had a reasonable opportunity in these proceedings to make representations or adduce evidence of such entitlement. The Respondent has failed to take advantage of that opportunity. The Complainant has fulfilled its obligation to show a prima facie case. The burden of production has shifted to the Respondent where it remains undischarged. The Panel therefore finds the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith The Panel is satisfied that the third element is present. Paragraph 4(b) of the Policy lists a number of circumstances which if found to be present shall be evidence of the registration and use of a domain name in bad faith. The Panel is not persuaded that the registration of a domain name that is the same or similar to the mark or name of a well-known business is eiusdem generis the circumstances in paragraph 4(b) of the Policy but notes that the use of such a domain name to set up an email account for a dishonest purpose certainly is. In fact, paragraph 4(b)(iv) of the Policy appears to cover such mischief. Paragraph 4(b)(iv) of the Policy indicates: “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.” There is no dispute that a domain name has been used. An “online location” can include an email account. The sending of deceptive emails impersonating the Complainant to its suppliers, for the purpose of soliciting payment, products without payment, sensitive or confidential information, or other purposes, is clearly done for “commercial gain”. There is no reason why “Internet users” should not include suppliers of the Complainant. As to the last ingredient, the Panel has already found the disputed domain name to confusingly similar to the Complainant’s mark. Furthermore the Panel notes the scenarios described in paragraph 4(b) are non‑exclusive, and noting, among other factors, the impersonation of an employee of a business entity connected with the Complainant and the use of the Complainant’s trademark to perpetuate a fraudulent scheme, it is clear that the Respondent registered the disputed domain name in order to take advantage of the Complainant and its trademark, and subsequently used the disputed domain name in bad faith by sending deceptive email communications. See WIPO Overview 3.0, section 3.4. Accordingly, in the circumstances of this case, the Panel finds that registration and use in bad faith have been proved. 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 Jane Lambert
Sole Panelist
Date: May 21, 2020
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