The Complainant is Association des Centres Distributeurs E. Leclerc - A.C.D. Lec, France, represented by Inlex IP Expertise, France.
The Respondent is Kouassi, Gbodo Hugues, 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 February 5, 2021. On February 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 9, 2021, 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 for the disputed domain name. 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 February 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 5, 2021. The Center appointed Christian Schalk as the sole panelist in this matter on March 11, 2021. 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. The language of the proceeding is English. 4. Factual Background The Complainant was founded by Mr. Eduard Leclerc about 70 years ago. Today, it is one of the biggest chains of supermarkets and hypermarket stores in France. The Complainant owns about 721 stores in France which are located all over the country. In 2019, the Complainant employed around 133.000 people and had a turnover of EUR 48,2 billion. In addition, the Complainant owns supermarket and hypermarkets stores also in several European countries, especially in Andorra, Poland, Portugal and in Slovenia. The Complainant is owner of the European Union Trademark No. 002700656, LECLERC, covering goods and services in the International Classes 1 – 45 with filing date of May 17, 2002, and registration date of February 26, 2004. The high reputation of the Complainant’s trademark LECLERC has been already recognized by several panels in cases under the UDRP, for instance, Association des Centres Distributeurs E. Leclerc – A.C.D. Lec v. WhoisGuard Protected, WhoisGuard, Inc. / yop poyo,WIPO Case No. D2020-2142; Association des Centres Distributeurs E. Leclerc – A.C.D. Lec contre patron,WIPO Case No. D2019-2017; Association des Centres Distributeurs E. Leclerc v. Privacy Protection / Andrei Kislovodskii,WIPO Case No. D2019-0108; Association des Centres Distributeurs E. Leclerc v. Registration Private, Domains By Proxy, LLC / Quentin Leclerc,WIPO Case No. D2018-1185. The Complainant has a web presence under the domain names The Respondent registered the disputed domain name on August 20, 2020. According to the material brought before the Panel, the disputed domain name resolves to a domain-parking page displaying several links written in French and English, which apparently lead to third parties’ sponsored links related to various categories of interest. 5. Parties’ Contentions A. Complainant The Complainant alleges that the disputed domain name is identical or confusingly similar to his trademark LECLERC. The Complainant explains that the term “leclerc” is a distinctive term which has no meaning neither in French nor in English. It submits that the addition of the term “online” within the disputed domain name does not have any effect as to the likelihood of confusion between the disputed domain name and the Complainant’s LECLERC trademark. The Complainant refers in this context to decisions where the UDRP panel recognized similarities between a complainant’s trademark and a domain name which featured a complainant’s trademark and the denomination “online”, for example, Allianz SE v. Contact Privacy Inc. Customer 0158491442 / Terry Sybert,WIPO Case No. D2020-2167; and LEGO Juris A/S v. Private Whois, Knock Knock WHOIS Not There, LLC / Legos Deak,WIPO Case No. D2019-2385. According to the Complainant it is the same with regard to the letter combination “fr” being the country code for France and the Complainant cites as evidence several decisions under the UDRP such as, for example, Association des Centres Distributeurs E. Leclerc - A.C.D Lec v. Oneandone Private Registration,1&1 Internet Inc. - www.1and1.com / Sharon Ulrich, WIPO Case No. D2014-2171; JanSport Apparel Corp v. Name Redacted, WIPO Case No. D2018-0063;and Accor v. Pierre Masson, WIPO Case No. D2018-1645. The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant argues that the Respondent has not been authorized, licensed or permitted by the Complainant to use any of its trademarks or to apply for or use any domain name incorporating the Complainant’s LECLERC mark. The Complainant continues that the disputed domain name is neither used in connection with a bona fide offering of goods and/or services nor constitutes a legitimate non-commercial fair use. The fact that the disputed domain name resolves to a parking page is clearly deprived of any real and substantial offer of goods or services and cannot be considered as a legitimate noncommercial or fair use. Furthermore, the Complainant alleges that the disputed domain name was registered bad faith. The Complainant is convinced that the Respondent must have been aware of the Complainant when he registered the disputed domain name and that its registration by the Respondent cannot be a coincidence. The Complainant refers in this context to the strong presence of LECLERC - supermarkets and hypermarkets in France and other countries and their high reputation resulting from their strong presence in those countries. The Complainant states further that the disputed domain name has no meaning in English nor in French language and is not a dictionary or common word. Therefore, the Complainant concludes that there is no reasonable explanation for choosing this disputed domain name. The Complainant also argues that the disputed domain name is being used in bad faith. The Complainant states that the disputed domain name disrupts the Complainant’s business and causes harm to the Complainant’s brand image. The Complainant explains in this context that since the disputed domain name incorporates the Complainant’s trademarks and the dictionary and generic terms “online” and “fr”, Internet users and especially the Complainant’s customers may wrongly believe that the website belongs to the Complainant and that the Complainant’s website is not correctly functioning or has been hacked. Such perception could be very harmful for the activities and image of the Complainant. The Complainant sees another indication of the Respondent’s bad faith behavior by the fact that the Complainant’s attorney has attempted to communicate with the Respondent and it was without success because the emails to the email address displayed on the WhoIs of the disputed domain name remained unanswered. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Panel finds that the Complainant has established trademark rights in the term LECLERC and that the disputed domain name is confusingly similar to the Complainant’s trademark rights in LECLERC. It has been decided by previous UDRP panels that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see, for instance, Yahoo! Inc. v. Blue Q Ltd., Romain Barissat,WIPO Case No. D2011-0702; Casa Editorial El Tiempo, S.A. v. Montanya Ltd,WIPO Case No. D2009-0103; Todito.com, S.A. de C.V. v. Francisco Gómez Ceballos,WIPO Case No. D2002-0717; Bayerische Motoren Werke AG v. bmwcar.com,WIPO Case No. D2002-0615; Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA,WIPO Case No. D2002-0504; Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; and EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047). The disputed domain name features the trademark LECLERC in its entirety. Furthermore, in accordance with previous decisions rendered under the Policy, the addition of descriptive terms to a trademark does not prevent a finding of confusing similarity (see Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis*,WIPO Case No. D2000-1807; Bellsouth Intellectual Property Corporation v. Henry Chan,WIPO Case No. D2004‑0550; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims,WIPO Case No. D2000-0819; Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0565; Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0624; and Toyota France and Toyota Motor Corporation v. Computer-Brain,WIPO Case No. D2002-0002). As set out in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), “[w]here 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”. Therefore, the addition of the terms “online” and “fr” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. The term “online” is commonly known as a description of a company’s activities in the Internet. The letter combination “fr” is the official country code for France. In addition, the generic Top-Level Domain (“gTLD”) “.com” in the disputed domain name does not affect the determination that the disputed domain name is identical or confusingly similar to the Complainant’s trademark LECLERC. It is well-established that gTLDs, such as “.com”, are generally disregarded when determining if there is identity or confusing similarity (see Compagnie Générale des Etablissements Michelin v. Trendimg,WIPO Case No. D2010-0484; Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp.,WIPO Case No. D2001-0936; and Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan,WIPO Case No. D2001-0615 and cases cited therein). For all these reasons, the Panel finds that the Complainant has fulfilled the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Based on the submissions and materials filed in this case, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. It is the consensus view of UDRP panels that once the complainant has made out a prima facie showing on this element, the burden of production shifts to the respondent (see section 2.1 of the WIPO Overview 3.0; Ustream.TV, Inc. v. Vertical Axis, Inc,WIPO Case No. D2008-0598; mVisible Technologies, Inc v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141; and Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). The Respondent has not provided any evidence of circumstances specified in paragraph 4(c) of the Policy or of any other circumstances showing a right to or legitimate interest in the disputed domain name. Specifically, the Panel finds no evidence that the Respondent has been or is commonly known by the disputed domain name. The Respondent is neither affiliated with the Complainant nor has a license to use its trademark. Furthermore, the Respondent has not provided the Panel with any substantial explanations as to the Respondent’s rights or legitimate interests in the disputed domain name. In accordance to the material brought before the Panel, the Respondent has directed the disputed domain name to a domain parking page displaying several links written in French and in English, which apparently lead to third parties’ sponsored links related to various categories of interest. It is well established by previous UDRP panels, that parking pages built around a third party’s distinctive trademark do not constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, nor do they constitute a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) (see Ustream.TV, Inc. v. Vertical Axis, Inc,WIPO Case No. D2008-0598; mVisible Technologies, Inc v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141; Mobile Communication Service Inc v. WebReg, RN,WIPO Case No. D2005-1304; Gerber Products Company v. LaPorte Holdings,WIPO Case No. D2005-1277; Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; Champagne Lanson v. Development Services/MailPlanet.com,WIPO Case No. D2006-0006; and, The Knot, Inc. v. In Knot we Trust LTD,WIPO Case No. D2006-0340). Therefore, the Panel is convinced that the only reason for the Respondent to register the disputed domain name was, on balance, to capitalize on the Complainant’s goodwill by redirecting Internet traffic intended for the Complainant away from it. Such behaviour cannot constitute a bona fide or legitimate use of the disputed domain name (see also Bright Imperial Ltd. v. Cleiton da Silva Pardim, WIPO Case No. D2013‑1548). In addition, searches for the term “leclerc” in a search engine reveals the Complainant’s company in a prominent manner. The same search result comes up even in Germany, where the Panel is located and where the Complainant does not appear to have any commercial presence. The Panel therefore finds that the Respondent was aware of the Complainant when it registered the disputed domain name and the Panel cannot find any plausible circumstances in which the Respondent could legitimately use the disputed domain name (see also Microsoft Corporation v. Superkay Worldwide, Inc.,WIPO Case No. D2004-0071). For all these reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and therefore, the requirement of paragraph 4(a)(ii) of the Policy is met. C. Registered and Used in Bad Faith The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Policy, paragraph 4(b) sets forth four non-exclusive circumstances, which evidence bad faith registration and use of a domain name: (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 disputed domain name registration to the Complainant who is owner of the trademark or service mark or to a competitor of the 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 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 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 its website or location or of a product or service on its website or location. The Panel finds that the Respondent must have been aware of the Complainant’s trademark and its services when he registered the disputed domain name. The Complainant has a strong Internet presence and had the Respondent carried out even a basic Internet search, he would have found a number of references to the Complainant. Furthermore, the combination of the Complainant’s trademark LECLERC with the terms “online” and “fr” in the disputed domain name is an unusual combination and allows the conclusion by the Panel that the Respondent knew of the Complainant when registering the disputed domain name. Including the term “fr” in the disputed domain name makes only sense if the Respondent is offering information or services intended for French customers. Therefore, the Panel is convinced that the Respondent was aware of the Complainant when he registered the disputed domain name. The Panel further finds that the disputed domain name is used in bad faith by the Respondent. The disputed domain name, which incorporates the Complainant’s LECELRC trademark in its entirety, resolves to a parking page apparently featuring sponsored advertising links. Such behavior is calculated to attract Internet users to the site in the mistaken belief that they are visiting a site of or associated with the Complainant or that they will somehow reach the Complainant’s services when clicking on such links. The Respondent’s intention appears to be commercial gain, namely PPC or referral revenue achieved through the visitors to the site clicking on the sponsored advertising links. Even if visitors arriving at the website, to which the disputed domain names resolves, become aware that this website is not operated by the Complainant, the Respondent (or any operators of these websites) will nonetheless have achieved commercial gain in the form of a business opportunity, namely the possibility that a proportion of those visitors will click on the sponsored links (see also: Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320; and Paris Hilton v. Deepak Kumar,WIPO Case No. D2010-1364). Therefore, the Panel believes that the main purpose of the Respondent was to attract Internet users for commercial gain to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. In addition, the Respondent’s behaviour could also disrupt the Complainant’s business since Internet users may get frustrated when they reach the Respondent’s website instead of the Complainant’s website. Especially potential customers of the Complainant may wrongly believe that the website to which the disputed domain name resolves is the Complainant’s site and that this website is not correctly functioning or has been hacked. As a consequence, they may seek for the Complainant’s competitor’s services instead or may even not return to the Complainant’s real website and use the services offered there. The only reason for this situation is the registration of the disputed domain name by the Respondent. Furthermore, the Respondent has apparently also provided inaccurate contact details when it registered the disputed domain name or failed at least to correct such false contact details. The Center has used the contact details given in the WhoIs record as provided by the Registrar when it tried to contact the Respondent. However, the courier service provider could not reach the Respondent in order to deliver the Written Notice of the Complaint. Therefore, the Panel notes that the Respondent may have given incorrect contact details to frustrate or at least to delay this proceeding (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The Panel finds that this further corroborates the finding of bad faith. 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, Christian Schalk
Sole Panelist
Date: March 27, 2021
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