The Complainant is Société Coopérative Groupements d’achats des Centres Leclerc, SC GALEC, France, represented by Inlex IP Expertise, France.
The Respondent is Failly Jacques, France. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2020. On November 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 18, 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 November 18, 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 November 23, 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 November 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 16, 2020. The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on December 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 the French company named Société Coopérative Groupements d’Achats des Centres Leclerc – SC GALEC, “SC GALEC” corresponding to the combination of the letters “S” for “Société”, “C” for “Coopérative”, “G” for “Groupements”, “A” for “Achats” and “LEC” for “Leclerc”. The Complainant, which started its activity in 1962, is part of the French hypermarket and supermarket chain named E. Leclerc, which is well known in France and several other European countries. The Complainant’s activities consist in negotiating the commercial terms and conditions of the suppliers for all the E. Leclerc stores. The Complainant is the owner of the French semi-figurative trademark GALEC No. 3644736, registered on April 17, 2009 in class 35 and duly renewed. The disputed domain name In accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complainant relies are set out below. First of all, the Complainant asserts the disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights, since not only does it identically reproduce the entire GALEC trademark, but also its corporate name “SC GALEC”. The Complainant considers that the addition of the term “SA” does not avoid the likelihood of confusion between the disputed domain name and the GALEC trademark and on the contrary reinforces it, since this term which is an abbreviation for “Société Anonyme” in French directly refers to the legal form of the Complainant, that is organized under such SA form. Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since the name of the Respondent is not composed of the name “SC GALEC”, and the Respondent is not commonly known under this name and has not been authorized by the Complainant to use this name or any of its trademarks, nor to register and use any domain name incorporating its trademarks. The Complainant also considers that the Respondent is not making a bona fide offering of goods or services, nor any legitimate noncommercial or fair use of the disputed domain name, since it redirects to an inactive page, and since it has been used to create an email address from which fraudulent emails have been sent to suppliers in order to place fake orders by impersonating the Complainant and the director of a company belonging to the Complainant’s organization. Finally, the Complainant claims that the disputed domain name was registered and is used in bad faith. The Complainant states that the Respondent was perfectly aware of the existence and activity of the Complainant and deliberately chose a domain name that identically reproduced its trademark and corporate name. The Complainant adds that the disputed domain name was registered in order to create email addresses aimed at sending fraudulent emails by impersonating the Complainant, and thus used in order to illegally take advantage of the Complainant’s rights, reputation and activities, and to disrupt its trademark, corporate name and activities. In view of all these circumstances, it is requested that the disputed domain name be transferred to 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 in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has right; (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. A. Identical or Confusingly Similar According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. First of all, the Panel finds that the Complainant has provided evidence that it has rights in the GALEC trademark. Then, the Panel notices that the disputed domain name is composed of (i) the letters “s” and “c” followed by the GALEC trademark in its entirety, to which has been added the term “sa”, “scgalec” and “sa” being separated by a hyphen, and (ii) the generic Top-Level Domain (“gTLD”) “.com”. The applicable gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark. The Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least 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 purposes of the UDRP (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”)). Moreover, the Panel concurs with the opinion of several prior UDRP panels which have considered that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms, whether descriptive or meaningless, would not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview 3.0). Regarding the disputed domain name, the Panel notes that it wholly incorporates the GALEC trademark, to which have been added, on the one hand, the letters “s” and “c”, and, on the other hand, the term “sa”. In view of these circumstances, the Panel considers that the confusing similarity between the disputed domain name and the Complainant’s trademark, as established by the incorporation into the disputed domain name of the GALEC trademark in its entirety, is not prevented by the addition of the letters “s” and “c” and the term “sa”. Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain name is confusingly similar to the Complainant’s trademarks. B. Rights or Legitimate Interests According to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are: (i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. According to prior UDRP panel decisions, it is sufficient that the complainant shows prima facie that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455). Indeed, 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 prima facie 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 section 2.1 of the WIPO Overview 3.0). According to the Panel, the Complainant has shown prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Panel finds that the Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services, nor corresponds to any legitimate noncommercial or fair use, since, on the one hand, it resolves to an inactive webpage, and, on the other hand, it has been used for the creation of email addresses aimed at sending fraudulent emails by impersonating the Complainant and the director of a company belonging to the Complainant’s organization. Panels have categorically held that the use of a domain name for illegal activity (e.g., phishing, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent (see section 2.13 of the WIPO Overview 3.0). Moreover, the Panel considers that the Respondent has not been commonly known through the disputed domain name. However, the Respondent did not reply to the Complainant’s contentions and consequently has not rebutted the Complainant’s prima facie case. Therefore, the Panel considers that the Complainant has established that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the disputed domain name has been registered and is being used in bad faith. Thus, paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith: “(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 domain name; or (ii) the respondent has registered the 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 domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted 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 the respondent’s website or location.” Moreover, section 3.4 of the WIPO Overview 3.0 provides that “Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. (In some such cases, the respondent may host a copycat version of the complainant’s website.) Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers”. First of all, the Panel finds that it is established that the Complainant’s trademark was registered before the registration of the disputed domain name which wholly incorporates the GALEC trademark, to which have been added the letters “s” and “c”, that enable a reference to be made to the Complainant’s corporate name, and the term “sa”, that directly refers to its legal form. The Panel finds that the choice of these terms shows that the Respondent knew that its registration would be confusingly similar to the Complainant’s trademark. Furthermore, the circumstances in which the disputed domain name was used strengthen this conclusion, since the Respondent created at least one email address from the disputed domain name, in order to send fraudulent emails to potential suppliers by impersonating both the Complainant, using its official contact information, and the director of a company belonging to the Complainant’s organization, using its name. Finally, the Panel notes that the Respondent has registered the disputed domain name concealing its identity, which supports an inference of bad faith, according to prior UDRP panel decisions (see section 3.6 of the WIPO Overview 3.0). In view of all these elements, the Panel considers that the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant, and that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s trademark within the meaning of paragraph 4(b)(iv) of the Policy. Consequently, the Panel finds that the disputed domain name has been registered and is being used in bad faith according to Policy, paragraph 4(a)(iii). 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, Christiane Féral-Schuhl
Sole Panelist
Date: January 6, 2021
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