The Complainant is Association des Centres Distributeurs E. Leclerc - A.C.D. Lec, France, represented by Inlex IP Expertise, France.
The Respondent is Placid Romuald Diago, 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 27, 2020. On October 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 27, 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 October 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 20, 2020. The Center appointed Mariya Koval as the sole panelist in this matter on November 24, 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, founded in 1948, is one of the most renowned chain of supermarkets and hypermarkets stores in France. The Complainant has about 721 stores in France, located all over the country, and 100 other stores in other countries in Europe, such as Poland, Spain, Portugal, Andorra, and Slovenia. Almost 70 years after the opening of its first E LECLERC store in France, the Complainant has become one of the first European organizations of independent storekeepers. Also, with more than 20 percent of the market share on all products, the Complainant is one of the leaders of the large-scale distribution in France. In 2019, the turnover of the Complainant was EUR 48.20 billion in France, and the Complainant employs approximately 133,000 people. The Complainant is the owner of numerous E LECLERC (E.LECLERC) trademark (the “E LECLERC Trademark” or the “Trademark”) registrations in many jurisdictions throughout the world, including but not limited to the following: - International Trademark Registration No. 603839 in classes 1 to 42, registered on June 28, 1993; - European Union Trade Mark Registration No. 002700664 in classes 1 to 45, registered on January 31, 2005. The Complainant has made substantial investments to develop a strong presence online by being active on social-media platforms such as Facebook and Twitter and having its own different mobile applications. The Complainant operates different domain names reflecting its E LECLERC Trademark for sale and promotion of its goods: The Disputed Domain Name was registered on July 17, 2020. At the date of this decision, the website under the Disputed Domain Name resolves to a parking page containing only sponsored links, some of which resolve to third-party sites. On September 18, 2020, the Complainant sent a cease-and-desist letter to the Respondent, giving notice of the Complainant’s trademark rights, requesting to remove the Disputed Domain Name or to transfer it to the Complainant for free. The Respondent did not reply to the Complainant’s cease-and-desist letter, nor to the Complainant’s subsequent reminders. 5. Parties’ Contentions A. Complainant The Complainant asserts that the Disputed Domain Name is confusingly similar to the E LECLERC Trademark. It should be stressed that the denomination “E Leclerc” has no meaning in French or in English and is highly distinctive. The addition of the term “online” within the Disputed Domain Name does not rule out the likelihood of confusion between it and the Complainant’s Trademark. On the contrary, the association of the well-known E LECLERC Trademark with the generic term “online” increases the likelihood of confusion as it could suggest that the Disputed Domain Name leads to the services offered under the E LECLERC Trademark online. The Complainant further asserts that the Respondent, which has no link of any nature with the Complainant, does not seem to have rights or legitimate interests in the registration and in the use of the Disputed Domain Name in view of the following: - neither the content of the associated website nor the WhoIs database details indicate that the name of the Respondent is composed of the term “E Leclerc” or that the Respondent is commonly known under the name “E Leclerc”, or that the Disputed Domain Name is linked to an official registered company named “E Leclerc”, or that the Respondent has rights, including trademark rights, in the name “E Leclerc”; - 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 Disputed Domain Name is neither used in connection with a bona fide offering of goods or/and services nor constitutes a legitimate noncommercial or fair use. The Complainant contends that the Disputed Domain Name was registered in bad faith. It is unlikely that the Respondent was unaware of the Complainant’s activities and of the existence and use of its E LECLERC Trademark at the time the registration of the Disputed Domain Name was made. The Complainant’s E LECLERC Trademark is well-known for many years and enjoys a great reputation in France. The Complainant notes that the supermarkets/hypermarkets under the E LECLERC Trademark also enjoy a reputation in several other European countries where the Complainant runs its business. The reputation of the Complainant’s E LECLERC Trademark has been recognized by previous UDRP panels. The following facts also evidence the Respondent’s awareness of the Complainant’s Trademark: - the Disputed Domain Name incorporates in the identical way, as its essential distinguishing feature, the term “E Leclerc” which is the famous personal name of the founder of the Complainant’s organization, Mr. Edouard Leclerc; - “E Leclerc” has no meaning in French nor English and is not a dictionary or common words; - the reservation of a domain name reproducing in the identical way the denomination “E Leclerc” cannot be in any case a coincidence and clearly demonstrates that the Respondent was perfectly aware of the Complainant’s Trademark and business. Because of the strong public awareness of the Complainant’s Trademark, any attempt to actively use the Disputed 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. The Complainant also alleges that the Respondent is using the Disputed Domain Name in bad faith in view of the Disputed Domain Name resolves to a parking page. Such 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. The Disputed Domain Name disrupts the Complainant’s business and causes harm to the Complainant’s brand image. The Internet users and especially the Complainant’s customers may wrongly believe that the website to which the Disputed Domain Name resolves is the Complainant’s website or that the Complainant’s website is not correctly functioning or has been hacked. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In accordance with the paragraph 4(a) of the Policy, the complainant must prove that each of the following three elements are present: (i) that the domain name is identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has properly asserted its rights in the E LECLERC Trademark due to the long use and number of registrations globally. The E LECLERC Trademark has been continuously and extensively used for more than 60 years. The Panel agrees with the Complainant that the Trademark is highly distinctive and well known. Previous UDRP panels acknowledged the E LECLERC Trademark as well-known. The Disputed Domain Name reproduces the E LECLERC Trademark in its entirety in combination with two hyphens, the dictionary term “online” and the generic Top-Level Domain (“gTLD”) “.com”. According to section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements. The Panel finds that in view of the fact that in this case the Disputed Domain Name incorporates the entirety of the Complainant’s well-known E LECLERC Trademark, the addition of the dictionary term “online” does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s Trademark. It is also well established that the gTLD, in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. Also, pursuant to section 1.7 of the WIPO Overview 3.0, in cases where a domain name incorporates the entirety of a trademark, the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. Furthermore, the use of hyphens in the Disputed Domain Name is irrelevant in a finding of confusing similarity, see e.g. Royale Indian Rail Tours Limited v. Divino Indian Memoirz Tours Pvt. Ltd.,WIPO Case No. D2010-2107(“In the present case, the Panel finds that… adding a hyphen between the two words “maharaja” and “express” in the disputed domain name are insignificant modifications that do not reduce the confusing similarity between the disputed domain name and the Complainant’s mark”). In light of the above, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s E LECLERC Trademark and that the Complainant has established the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests In accordance with section 2.1 of the WIPO Overview 3.0 while the overall burden of proof in UDRP proceedings is on the Complainant, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. If 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. If the Respondent fails to come forward with such relevant evidence, the Complainant is generally deemed to have satisfied the second element. The Complainant has used its E LECLERC Trademark for more than 60 years, which is long before the Respondent registered the Disputed Domain Name in 2020. The Panel finds that the Complainant has made out a prima facie case, clearly contending that it has never licensed or authorized the Respondent to use its E LECLERC Trademark in the Disputed Domain Name or in any other manner. Moreover, the Panel finds that there is no evidence that the Respondent is commonly known by the Disputed Domain Name. Also, there is no evidence that the Respondent is using the Disputed Domain Name to offer bona fide goods and services or making a legitimate noncommercial or fair use of the Disputed Domain Name. On the contrary, the website under the Disputed Domain Name is a parking page containing only sponsored links, some of which resolve to third-party sites. The Panel also notes that, having observed the content of the website under the Disputed Domain Name, the website contains a link for “webmail login”, where the Internet users are requested to disclose personal and confidential information such as email and password. The Panel agrees with the Complainant that this creates a risk that the Respondent may be engaged in a phishing scheme aiming to deceive Internet users and make them believe that they are dealing with the Complainant. In pursuance of section 2.9 of the WIPO Overview 3.0 “applying UDRP paragraph 4(c), panels have found 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”. With respect to the circumstances of this case, the Panel considers that it is more likely that the Respondent registered the Disputed Domain Name with the sole intention of commercial gain by attracting Internet users to his website. The Panel also considers it is likely that the Respondent was well aware of the Complainant’s Trademark when registering the Disputed Domain Name, taking into account the long use and reputation of the Complainant’s E LECLERC Trademark and the fact that the Respondent registered the Disputed Domain Name only in 2020. The Respondent did not respond to the Complaint and did not participate in this proceeding, accordingly, the Respondent has failed to present any evidence to support any rights or legitimate interests in the Disputed Domain Name. In light of the above, the Panel finds that the Respondent has no rights or legitimate interests to use the Disputed Domain Name. Therefore, the second element of the paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that indicate bad faith conduct on the part of the respondent, namely: “(i) circumstances indicating that the respondent has registered or has acquired the disputed 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 the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or (ii) the respondent has 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; or (iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to 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 the respondent’s website or location or of a product or service on the respondent’s website or location.” Taking into consideration that the E LECLERC Trademark has been in use more than 60 years and that the Complainant has spent huge amounts and efforts for promotion of the Trademark, the Panel considers it is obvious that the Respondent was well aware of the Complainant and the Trademark at the time of registration of the Disputed Domain Name. In the Panel’s opinion, the fact that the Respondent was well aware of the Complainant’s Trademark and business at the time of the registration of the Disputed Domain Name is undisputable in view of that the Disputed Domain Name completely reproduces the Complainant’s Trademark. Furthermore, the Respondent is using Disputed Domain Name to access a website, which contains the Complainant’s Trademark and almost completely copies the Complainant’s domain name Furthermore, the Respondent did not respond to the Complainant’s cease and desist letter in which the Complainant requested to transfer the Disputed Domain Name, accordingly the Respondent ignored the Complainant’s attempts to settle this dispute without initiation of this proceeding. Such Respondent behavior supports the Panel’s finding that the Respondent has registered and is using the Disputed Domain Name in bad faith. Previous UDRP panels have considered that a respondent’s failure to respond to the complaint supports an inference of bad faith, see e.g. Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787. Finally, the Respondent, not participating in these proceedings, has failed to indicate any facts and/or evidence, which would show the good faith registration and use of the Disputed Domain Name. In light of the above, the Panel concludes that the third element has been established by the Complainant with respect to the Disputed Domain Name. 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 Mariya Koval
Sole Panelist
Date: December 8, 2020
Full & Egal Universal Law Academy