The Complainant is Association des Centres Distributeurs E. Leclerc - A.C.D. Lec, France, represented by Inlex IP Expertise, France.
The Respondent is Contact Privacy Inc. Customer 0158155795, Canada / Milen Radumilo, Romania. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2020. On October 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 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. On October 9, 2020, the Registrar confirmed the disputed domain name expiry date. The Center sent an email communication to the Complainant on October 9, 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 October 12, 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 October 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 6, 2020. The Center appointed Anna Carabelli as the sole panelist in this matter on November 16, 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 - Association des Centres Distributeurs E. Leclerc - A.C.D. Lec - is a chain of supermarkets and hypermarkets stores, with about 721 stores in France and around 100 throughout Europe (as shown by the extracts from the Complainant’s websites “www.e-leclerc.com” and “www.mouvement.lecler.com” attached as Annex 5 to the Complaint). The Complainant owns several trademark registrations for LECLERC including the European Union Trademark Registration No. 002700656 for LECLERC, filed on May 17, 2002 and registered on February 26, 2004 (Annex 4 to the Complaint). The Respondent registered the disputed domain name on May 31, 2020, using a proxy service. While the disputed domain name does not currently resolve to an active page, it previously resolved to ever changing pages over time, leading alternatively to: the Complainant’s official website, parking pages with hyperlinks in relation to the Complainant’s area of business, or pages with various contents or infected pages (content of the website associated with the disputed domain name at the date of August 20, September 18, September 21 and October 7, 2020 are attached to the Complaint as Annex 6). 5. Parties’ Contentions A. Complainant The Complainant asserts and contends that: (a) It owns valid and enforceable trademark rights in the LECLERC trademark. The Complainant’s trademark LECLERC is an inherently distinctive mark being the last name of the founder of the Complainant. The disputed domain name is confusingly similar to the Complainant’s trademark, since it wholly contains the word “leclerc” with the addition of the prefix “www-“. The “www” stands for the well-known “world wide web” and will therefore have no impact on the overall impression of the dominant part of the disputed domain name, “leclerc”. (b) The Respondent has no rights or legitimate interests in the disputed domain name since: (i) the Complainant has no relationship with the Respondent; (ii) the Respondent is not commonly known by the disputed domain name, and (iii) the Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. (c) The disputed domain name was registered in bad faith. The Complainant’s trademark LECLERC is well known in France and in several other European countries, as recognized in previous panel decisions. The fact that the disputed domain name comprises the Complainant’s distinctive trademark indicated that the Respondent was well aware of the Complainant’s trademark when registering the disputed domain name. (d) The Respondent has a history of registering domain names that have value to the rights holder of particular brands, and has been involved in 15 UDRP proceedings and five Alternative Dispute Resolution (“ADR”) proceedings where the panels have recognized the Respondent was acting in bad faith. (e) The disputed domain name is being used in bad faith to disrupt the Complainant’s business. (f) The Respondent attempted to conceal its identity by using a privacy service. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint based on the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Under paragraph 4(a) of the Policy, the Complainant must prove each of the following: (i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) The disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for the purposes of paragraph 4(a)(iii) of the Policy, shall be evidence of registration and use of a domain name in bad faith. Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the disputed domain name for the purpose of paragraph 4(a)(ii) of the Policy above. A. Identical or Confusingly Similar The Complainant has proved that it owns trademark registrations for LECLERC in several countries including the European Union. The disputed domain name contains exactly the Complainant’s trademark LECLERC with the addition of the prefix “www-“ which does not obviate confusing similarity, as recognized by previous panels (see Association des Centres Distributeurs E. Leclerc- A.C.D. Lec v. PrivacyProtect.org/ Private Registration,WIPO Case No. D2010-1529; Boursorama S.A. v. Etesse Patrick,WIPO Case No. D2020-1023; Allianz SE v. Paulo c/o Paulo Kann,WIPO Case No. D2010-2199); GROUPAMA SA v. Privacy Protection / DELTA-X Ltd. / Thomty vaiya,WIPO Case No. D2014-0057). Accordingly, the Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant states that it has not authorized, licensed or permitted the Respondent to use the Complainant’s trademark. The Complainant asserts that the Respondent is not commonly known by the disputed domain name and cannot demonstrate any legitimate noncommercial or fair use of the disputed domain name. In this connection, the Complainant has provided evidence that the disputed domain name resolved to ever changing pages over time, leading alternatively to: the Complainant’s official website, parking pages with hyperlinks in relation to the Complainant’s area of business, or pages with various contents or infected/fraudulent pages. Now the disputed domain name resolves to an inactive page. The Complainant further underlines that the disputed domain name was registered through a privacy service and this suggests that the Respondent is willing to hide his identity because he has no rights or legitimate interests in respect of the disputed domain name. The Complainant has established prima facie evidence that none of the three circumstances establishing rights or legitimate interests provided for in paragraph 4(c) of the Policy applies. As stressed by many UDRP decisions, in such a case the burden of production shifts to the Respondent to rebut the evidence (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1). In the absence of a Response to the Complaint, the Respondent has failed to rebut the prima facie case made by the Complainant or advance any other arguments supporting his rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the Complainant has established paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, which includes: “(iv) 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”. The disputed domain name incorporates the Complainant’s trademark and was registered long after this trademark became well known to consumers. Given the well-established reputation of the Complainant’s LECLERC trademark (also recognized in Association des Centres Distributeurs E. Leclerc - A.C.D. Lec v. Pierre Patron,WIPO Case No. D2019-2017; Association des Centres Distributeurs E. Leclerc v. Quentin Leclerc Registration Private, Domain By Proxy LLC,WIPO Case No. D2018-1185; Association des Centres Distributeurs E. Leclerc v. Privacy Protection / Andrei Kislovodskii,WIPO Case No. D2019-0108; Association des Centres Distributeurs E. Leclerc - ACD Lec v. Guziewicz Ryszard,WIPO Case No. D2018-0482; Association des Centres Distributeurs E. Leclerc - ACD 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; Association des Centres Distributeurs E. Leclerc - ACD Lec v .Domain Administrator, See PrivacyGuardian.org / cunshuo zhangWIPO Case No. D2019-1580), it is not conceivable that the Respondent did not have in mind the Complainant’s trademark when registering the disputed domain name. This suggests that the disputed domain name was registered in bad faith (see WIPO Overview 3.0, section 3.2.2). Previous panels have considered that concealing identity and contact information may point to bad faith in itself (see, e.g., Accenture Global Services Limited v. ICS Inc./PrivacyProtect.org, supra; Schering Corporation v. Name Redacted, WIPO Case No. D2012-0729; see also WIPO Overview 3.0, section 3.2.1). This concept applies to the present case, as the Respondent registered the disputed domain name using a proxy service. The evidence submitted by the Complainant indicates that the disputed domain name initially led to different pages over time, such as the Complainant’s official website, parking pages including hyperlinks in relation to the Complainant’s area of business, infected pages, and now resolves to an inactive page. Each of the above instance indicates bad faith for the Policy purpose. The fact that the disputed domain name does not currently resolve to a web page does not affect the above conclusions. It is an established principle that the lack of active use of a domain name does not as such prevent a finding of bad faith (see Vertu Corporation Limited v. David Szn and Jun Luo,WIPO Case No. D2015-0185; Accor, So Luxury HMC v. Youness Itsmail,WIPO Case No. D2015-0287; McGrigors LLP v. Fraser Coutts,WIPO Case No. DCO2011-0022; see also WIPO Overview 3.0, section 3.3). The Respondent’s cybersquatting history and attempt to conceal his identity by using a privacy service further support a finding of bad faith. The Panel concludes in these circumstances that the Respondent’s registration and use of the disputed domain name constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case. 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 Anna Carabelli
Sole Panelist
Date: November 30, 2020
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