The Complainant is Association des Centres Distributeurs E. Leclerc - A.C.D. Lec., France, represented by Inlex IP Expertise, France.
The Respondent is Farid Hamed Aryaee, Ivory Coast. 2. The Domain Name and Registrar
The Disputed Domain Name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2020. On September 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 26, 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 September 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 20, 2020. The Center appointed Jacques de Werra as the sole panelist in this matter on October 23, 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 (whereby the abbreviation ACD stands for “ASSOCIATION DES CENTRES DISTRIBUTEURS E. LECLERC”) which reflects the last name of its founder (Mr. Edouard LECLERC). The Complainant operates a chain of 721 supermarkets and hypermarkets stores in France with approximately 133,000 employees. In 2019, the turnover of the Complainant was 48.20 billion Euros in France. The Complainant owns several trademarks bearing the word LECLERC including European Union Trademark LECLERC No. 002700656 filed on May 17, 2002 and registered on February 26, 2004 for various goods and services (“the Trademark”). The Disputed Domain Name was registered on June 8, 2020. It is not actively used. By email of August 10, 2020, the Complainant attempted to enter in contact with the Respondent in order to find an amicable settlement in this matter without success. This email as well as the subsequent reminders remained unanswered because the email does not seem to be active (the Complainant received an error message). 5. Parties’ Contentions A. Complainant The Complainant claims that the denomination LECLERC has no meaning in French or English and is highly distinctive and that the addition of the term “Socodis” in the Disputed Domain Name does not rule out the likelihood of confusion between the Disputed Domain Name and the Complainant’s Trademark. On the contrary, the association of the well-known Trademark LECLERC with the name “Socodis” increases the likelihood of confusion as it corresponds to the corporate name of the French company “Société Colmarienne de Distribution (SOCODIS)” which is one of the Complainant’s partners. On this basis,the Disputed Domain Name registered by the Respondent shall be considered as confusingly similar to the Complainant’s Trademark. The Complainant further alleges that the Respondent, which has no link of any nature with the Complainant, does not seem to have legitimate interests or rights in the registration and in the use of the Disputed Domain Name because neither the content of the associated website nor the WhoIs details indicate that the name of the Respondent is composed of the term “LECLERC” or that the Respondent is commonly known under the name LECLERC, that the Disputed Domain Name is linked to an official registered company named LECLERC and that the Respondent has rights, including trademark rights, on the name LECLERC. In addition, the Respondent has not been authorized by the Complainant to use the name LECLERC and the Complainant has not authorized, licensed, or permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating the Complainant’s Trademark. Moreover, there is no business relationship existing between the Complainant and the Respondent. The Respondent’s Disputed Domain Name is neither used in connection with a bona fide offering goods or/and services nor constitutes a legitimate non-commercial fair use because the Disputed Domain Name resolves to an inactive page. Such a use is clearly deprived of any real and substantial offer of goods or services and cannot be considered as a legitimate non-commercial or fair use. The Complainant further claims that the Disputed Domain Name was registered in bad faith. Indeed, it is unlikely that the Respondent was unaware of the Complainant’s activities and of the existence and use of the Trademark at the time the registration was made because of the reputation of the Complainant and of the Trademark. The registration of the Disputed Domain Name cannot be a coincidence because the Disputed Domain Name incorporates the term “Leclerc” which is the famous personal name of the founder of the Complainant’s organization (Mr. Edouard Leclerc), associated with the term ”Socodis”, which is the company name of one of the Complainant’s partners and because the terms “Leclerc” and “Socodis” have no meaning in French nor English and are not dictionary or common words. There is consequently no reasonable explanation for choosing these names. Because of the strong public awareness of the Complainant’s Trademark, any attempt to actively use the said domain name would inevitably lead to a likelihood of confusion to the source, sponsorship, affiliation, or endorsement of the Respondent website among Internet users who would inevitably be led to believe that such website would be owned by, controlled by, established by or in some way associated with the Complainant. It follows from this that the Respondent has undoubtedly registered the Disputed Domain Name precisely because he was well aware of the existence of the Complainant’s activity and organization, of the Trademark and of his partnership with the company “Socodis”. Since the Disputed Domain Name incorporates the Complainant’s Trademark together with one of his partner’s name, the Internet users and especially the Complainant’s customers may wrongly believe that the website to which it resolves is the Complainant’s site or that the Complainant’s website is not correctly functioning or has been hacked. This perception will obviously be very harmful for the activities and image of the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that the complainant must prove each of the following three elements in order to succeed in a UDRP proceeding: (i) the respondent’s domain name is 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 domain name; and (iii) the respondent’s domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel is satisfied that the Complainant has rights to a trademark or service mark as reflected in the Trademark. A comparison between the Disputed Domain Name and the Trademark shows that the Disputed Domain Name can be considered as confusingly similar to the Trademark, because the Trademark is clearly recognizable within the Disputed Domain Name to which the term “socodis” has been added. Given that the Complainant’s Trademark is recognizable within the Disputed Domain Name, the addition of the term “socodis” (which corresponds to the abbreviation of the corporate name of a partner of the Complainant) is insufficient in itself to avoid a finding of confusing similarity to the Complainant’s Trademark under the first element. See, by analogy, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.12 (“Where the complainant’s trademark is recognizable within the disputed domain name, the addition of other third-party marks (i.e., Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the Disputed Domain Name by demonstrating any of the following: (i) before any notice to it 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 has been commonly known by the Disputed Domain Name, even if it 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. “Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests, and once such prima facie case is made the burden of production shifts to the respondent to come forward with relevant evidence of rights or legitimate interests in the domain name”, See WIPO Overview 3.0, section 2.1. In the Panel’s opinion, the Complainant has made a prima facie case against the Respondent. The Respondent indeed registered the Disputed Domain Name which features the Trademark owned by the Complainant as its first and distinctive element without the authorization of the Complainant, in a way which can only reasonably be explained as a reference to the Complainant corporate name and to the Complainant’s Trademark. The selection of the Disputed Domain Name as targeting the Complainant and the Trademark is confirmed by the presence of the term “socodis” in the Disputed Domain Name knowing that this term identifies a partner of the Complainant. The Panel notes that the address indicated by the Respondent in the registration of the Disputed Domain Name seems to refer to both Togo and Ivory Coast and not to France where the Complainant is based and where the Complainant and the Trademark are particularly well-known. It however remains that the choice of the Disputed Domain Name corresponding to the Trademark of the Complainant and to the name of a partner of the Complainant (“socodis”) cannot be reasonably explained otherwise than by the knowledge by the Respondent of the Complainant, of the Trademark and of the Complainant’s partner “socodis”. The Complainant has thus established without being contradicted that the Respondent has no rights or legitimate interests in the Disputed Domain Name, that the Respondent has not been commonly known by the Disputed Domain Name and that the Respondent does not use the Disputed Domain Name (which thus cannot constitute a use in connection with a bona fide attempt to offer goods and services). On this basis, the Panel accepts the Complainant’s prima facie showing so that it was consequently up to the Respondent to come forward with evidence of rights or legitimate interests in the Disputed Domain Name, which has not been done given the Respondent’s default in this proceeding. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that paragraph 4(a)(ii) of the Policy is met. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to the complainant (the owner of the trademark or service mark) or to a competitor of the complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain Name; (ii) circumstances indicating that the respondent registered the Disputed 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 the respondent has engaged in a pattern of such conduct; (iii) circumstances indicating that the respondent registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent intentionally is using the Disputed Domain Name in an attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location. The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. In this case, the Panel holds that the Respondent registered the Disputed Domain Name in bad faith because the Trademark distinctively identifies the Complainant and the Complainant’s Trademark so that the choice of the Disputed Domain Name cannot be reasonably explained otherwise than as a reference to the Complainant and to the Trademark. The Panel notes in this respect that the Trademark’s reputation has been duly established and recognized by numerous other UDRP panels. See e.g., Association des Centres Distributeurs E. Leclerc - A.C.D Lec v. Domain Administrator, see PrivacyGuardian.org / cunshuo zhang,WIPO Case No. D2019-1580 and Association des Centres Distributeurs E. Leclerc - A.C.D. Lec contre pierre patron,WIPO Case No. D2019-2017. Based on the established practice under the UDRP, the non-use of a domain name (including a blank or “coming soon” page) does not prevent a finding of bad faith under the doctrine of passive holding, See WIPO Overview 3.0, section 3.3. Factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put, See WIPO Overview 3.0, section 3.3. In this case, by application of these factors, the Panel holds that the passive holding of the Disputed Domain Name by the Respondent does not prevent a finding of bad faith. The degree of distinctiveness and of reputation of the Trademark is indeed very high, (ii) the Respondent has failed to submit a response or to provide any evidence of actual or contemplated good-faith use. In addition, the Panel notes that the Respondent seems to have used false contact details given that the address indicated by the Respondent in the registration of the Disputed Domain Name seems to refer to both Togo and Ivory Coast. In addition, the email associated to the Disputed Domain Name was not active as evidenced by the failed attempt made by the Complainant to contact the Respondent before the initiation of these proceedings. With respect to the last factor (i.e. (iv) the implausibility of any good faith use), a good faith use of the Disputed Domain Name might be conceivable if the Disputed Domain Name were to be used in relation to genuine noncommercial free speech. However, the Respondent who has not participated in the proceedings has not brought any evidence of such potential good faith use. On this basis, the Panel finds that the Respondent registered and uses the Disputed Domain Name in bad faith pursuant to paragraph 4(b) of the Policy, so that the conditions of paragraph 4(a)(iii) of the Policy are met. 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 Jacques de Werra
Sole Panelist
Date: October 29, 2020
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