The Complainant is Association des Centres Distributeurs E. Leclerc - A.C.D. Lec, France, represented by Inlex IP Expertise, France.
The Respondent is Perfect Privacy, LLC, United States of America / Raymond Chijioke, Côte d’Ivoire. 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 26, 2020. On October 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 26, 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 October 27, 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 October 27, 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 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2020. The Center appointed Tobias Malte Müller as the sole panelist in this matter on November 25, 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 who runs about 721 supermarkets and hypermarkets in France under the brand LECLERC. It owns, amongst others, the registered European Union Trade Mark No. 002700656 for LECLERC, filed on May 17, 2002, and registered on February 26, 2004 for goods and services in all 45 International classes. The disputed domain name was registered on July 27, 2020 and resolves to a parking page with pay-per-click (“PPC”) links which are connected to the term “Leclerc”. Finally, the Complainant’s representative contacted the Respondent prior to the proceedings requesting the Respondent to remove the disputed domain name or transfer it to the Complainant. However, the Complainant did neither receive any answer to this request nor to the reminders. 5. Parties’ Contentions A. Complainant Firstly, the Complainant points out that the disputed domain name is confusingly similar to the registered mark LECLERC. The trademark LECLERC is wholly incorporated in the disputed domain name, which is sufficient to establish identity or confusing similarity for purposes of the Policy. The mere addition of the descriptive term “online” is not sufficient to exclude confusion between the disputed domain name and the trademark. Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Complainant submits that the Respondent has no link of any nature with the Complainant and has not been authorized by the Complainant to use the name “Leclerc”. Furthermore, the Respondent is not commonly known by the disputed domain name or the trademark. Finally, the Complainant considers the LECLERC trademark as being distinctive, that the Respondent must have been aware of those rights at the time of registration of the disputed domain name. Finally, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Finally, the Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, the Respondent registered the disputed domain name precisely because it was well-aware of the existence of the Complainant’s activity and organization and of its trademark LECLERC, which is well known in France and abroad. Furthermore, the Respondent has no rights or legitimate interests in respect of the disputed domain name, is not legitimately or fairly using the disputed domain name, which disturbs the Complainant’s business. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled: (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. The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to said mark. The Complainant is the registered owner of the European Union Trade Mark No. 002700656 for LECLERC, filed on May 17, 2002, and registered on February 26, 2004 for goods and services in all 45 International classes. The disputed domain name entirely incorporates the LECLERC trademark, preceded by the term “online” under the generic Top-Level Domain (“gTLD”) “.com”. As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, in cases where a domain name incorporates the entirety of a trademark, or at least where a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for the purposes of UDRP standing. The Panel finds the LECLERC mark to be readily recognizable in the disputed domain name. Furthermore, the addition of the term “online” to the trademark in the disputed domain name is insufficient to avoid a finding of confusing similarity under the first element of the UDRP (see WIPO Overview 3.0, section 1.8). The Panel finds the incorporated trademark to constitute the dominant or principal component of the disputed domain name, while the mere addition of the descriptive term will rather be understood as indicating an online shop (see Miniso Life Style Pvt. Ltd. v. Anson Shawn,WIPO Case No. D2019-2196). The gTLD “.com” may be disregarded, as it is viewed as a standard registration requirement (see WIPO Overview 3.0, section 1.11.1). Hence, this Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark LECLERC pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name. First, no evidence or information has been provided that could lead the Panel to conclude that the Respondent is commonly known by the disputed domain name pursuant to paragraph 4(c)(ii) of the Policy. In addition, the Respondent has no connection or affiliation with the Complainant who 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 trademark LECLERC. Second, it results from the evidence provided by the Complainant that the disputed domain name is currently connected to a website displaying sponsored links, amongst others, for websites that are connected with the term “Leclerc”. Such use can neither be considered as a bona fide offering of goods or services nor 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 at issue in the sense of paragraphs 4(c)(i) and 4(c)(iii) of the Policy. In fact, this Panel shares the view of previous UDRP panels holding that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the Complainant’s mark or otherwise mislead Internet users (see WIPO Overview 3.0, section 2.9). In the Panel’s view, this is the case in the present dispute. It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent failed to come forward with any allegations or evidence in this regard, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the domain name’s registration and use in bad faith. One of those circumstances are those specified in paragraph 4(b)(iv) of the Policy, i.e., where the domain name is used to intentionally attempt to attract, for commercial gain, Internet users to your [the respondent’s] 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 [the respondent’s] website or location or of a product or service on your [the respondent’s] website or location. In the Panel’s view, the Respondent has intentionally registered the disputed domain name which identically contains the Complainant’s trademark LECLERC. By the time the disputed domain name was registered, it is unlikely that the Respondent did not have knowledge of the Complainant. The Complainant also proved that the Respondent is using the disputed domain name to lead to a parking page, with sponsored links connected to the term “Leclerc” and the Complainant’s business. These facts confirm that the disputed domain name is being used to intentionally attempt to attract, for commercial gain, Internet users to other websites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of these websites. Finally, the further circumstances surrounding the disputed domain name’s registration and use confirm the findings that the Respondent has registered and is using the disputed domain name in bad faith: (1) The Respondent originally used a privacy service to hide its identity; (2) the Respondent did not react on several communications sent by the Complainant’s representative to the email address indicated in the WhoIs before starting the present UDRP proceedings; (3) the Respondent did not provide any response with conceivable explanation of its behavior so that no legitimate use of the disputed domain name by the Respondent is actually conceivable for the Panel; (4) the lack of the Respondent’s rights to or legitimate interests in the disputed domain name. In light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) 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 name Tobias Malte Müller
Sole Panelist
Date: December 9, 2020
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