Complainant is Société Coopérative Groupements d’Achats des Centres Leclerc, SC GALEC, France, represented by Inlex IP Expertise, France.
Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States of America / Failly Jacques, Ivory Coast. 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 15, 2021. On February 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 17, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 17, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 18, 2021. 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 Respondent of the Complaint, and the proceedings commenced on February 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 10, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 11, 2021. The Center appointed John C. McElwaine as the sole panelist in this matter on March 18, 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. 4. Factual Background Complainant is a French company named Société Coopérative Groupements d’Achats des Centres Leclerc – SC GALEC. Complainant is part of the group E. LECLERC, which is a French hypermarket and supermarket chain based in France. Complainant’s business activities consist of negotiating the commercial terms and conditions of the suppliers for all the E. Leclerc stores. Complainant is the owner of French national trademark registration for the stylized mark GALEC (Reg. No. 3644736) registered on April 17, 2009. On July 6, 2020, Respondent registered the Domain Name with the Registrar. The Domain Name does not resolve to an active website but has been used to set up an email account used to impersonate a director of SPILEC, one of the other companies comprising the E. LECLERC group of companies, in order to contact to suppliers in an attempt to generate fake purchase orders. 5. Parties’ Contentions A. Complainant Complainant contends that the Domain Name should be transferred because each of the three elements required in paragraph 4(a) of the Policy has been established. With respect to the first element of the Policy, Complainant contends that the Domain Name is confusingly similar to Complainant’s distinctive and well-known GALEC trademark and SC GALEC company name. To that end, Complainant contends that the Domain Name is comprised, in part, of Complainant’s GALEC trademark preceded by “sc-“ and that these additional elements, when ignoring the hyphen, create Complainant’s SC GALEC company name. With respect to the second element of the Policy, Complainant alleges Respondent is not commonly known as “SC-Galec”. Instead, Complainant asserts that according to the Registrar’s records, Respondent’s name is Failly Jacques. Complainant further claims that there is no relationship between Complainant and Respondent, and that Complainant has not licensed the GALEC trademark to Respondent or authorized Respondent to register the Domain Name. Complainant provided evidence in the form of an email that Respondent has used the Domain Name to impersonate Complainant to defraud Complainant’s suppliers in an attempt to generate false orders and asserts that this is not a legitimate use of the Domain Name. With respect to the third element of the Policy, Complainant alleges that unlawful use of a Domain Name is evidence of bad faith. Complainant claims that Respondent registered the Domain Name to impersonate Complainant for fraudulent purposes. As evidence, Complainant provided an email where Respondent held themselves out to be Mr. […], director of SIPLEC (SOCIETE D’IMPORTATION LECLERC), a company associated with Complainant’s E. LECLERC organization, using the email address “[...]@sc-galec.com”. In the email, “[…]” solicited product catalogs and price lists from suppliers, purportedly on Complainant’s behalf, using Complainant’s company name, trademark, address, website, and European VAT number. Furthermore, Complainant contends that Respondent’s registration of the Domain Name is part of a pattern of bad faith domain name registrations wherein Respondent is impersonating Complainant in order to target Complainant’s suppliers in furtherance of Respondent’s fraudulent activities. See Société Coopérative Groupements d’achats des Centres Leclerc, SC GALEC v. Failly Jacques,WIPO Case No. D2020-3068 ( Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc.,WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2. On this point, Complainant has provided evidence that it is the owner of a French national trademark registration for the stylized mark GALEC (Reg. No. 3644736) registered on April 17, 2009. The Domain Name is comprised of Complainant’s GALEC trademark preceded by “sc-” . When 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, then the domain name will normally be considered confusingly similar to that mark for purposes of the UDRP. WIPO Overview 3.0, section 1.7. Furthermore, where the relevant trademark is recognizable within the domain name, the addition of other terms, be they descriptive or meaningless, would not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8. Here, Complainant’s GALEC trademark is clearly recognizable in the Domain Name. Moreover, the additional elements of the Domain Name are not meaningless. In fact, the addition of “sc-“ to Complainant’s GALEC trademark results in the creation of a domain name that is identical to Complainant’s company name - SC Galec, which Complainant has been using since 1962. Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s GALEC trademark, in which Complainant has valid trademark rights. Therefore, Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant needs to only make a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence that it has rights or legitimate interests in the Domain Name. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi,WIPO Case No. D2000-0252. The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name: “(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are 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.” Complainant contends that Respondent does not have any rights or legitimate interests in the Domain Name because: (i) Respondent is not commonly known by SC Galec; (ii) Respondent does not have any trade name or trademark rights in SC Galec; (iii) Respondent has not been authorized, permitted, or licensed to use the GALEC trademark; (iv) Respondent’s use of the Domain Name does not constitute a bona fide offering of goods or services nor a legitimate noncommercial fair use; and (v) Respondent has used the Domain Name for fraudulent purposes, namely, fraud through impersonation. Respondent has not denied any of Complainant’s assertions and has not put forth any evidence showing that it has rights or legitimate interests in the Domain Name. The Panel observes that the Domain Name does not resolve to active webpage, but rather has been allegedly used to send emails in an attempt to impersonate a director of SIPLEC, one of the organizations comprising Complainant’s LECLERC organization, for fraudulent purposes. Moreover, the Panel finds that the purpose of registering the Domain Name was to engage in an email scam or a phishing scheme, none of which is a bona fide offering of goods or services. WIPO Overview 3.0, section 2.13.1 (“Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”); see also, CMA CGM v. Diana Smith,WIPO Case No. D2015-1774 (finding that the respondent had no rights or legitimate interests in the disputed domain name holding, “such phishing scam cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name”.) The undisputed evidence of impersonation, deception, and fraud nullifies any possible basis for the acquisition of rights or legitimate interests by Respondent. See Afton Chemical Corporation v. Meche Kings,WIPO Case No. D2019-1082. The Panel further notes that Respondent appears to be engaged in a pattern of trademark-abusive domain name registrations specifically targeting Complainant and such conduct is additional evidence of Respondent’s lack of any rights or legitimate interests in the Domain Name. See Société Coopérative Groupements d’achats des Centres Leclerc, SC GALEC v. Failly Jacques,WIPO Case No. D2020-3068 ( Accordingly, Complainant made a prima facie showing of Respondent’s lack of any rights or legitimate interests and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s default as it considers appropriate. The Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy. Here, Respondent registered the Domain Name to perpetrate an email scam or phishing scheme. Complainant’s GALEC trademark and SC Galec trade name were intentionally chosen when the Domain Name was registered with the intent to target Complainant’s suppliers in an attempt to generate false orders via the receipt of fraudulent emails. The Domain Name does not appear to have been registered for any other purpose as the Domain Name does not resolve to an active website. The use of a confusingly similar, deceptive domain name for an email scam has previously been found by panels to be sufficient to establish that a domain name has been registered and is being used in bad faith. See Samsung Electronics Co., Ltd. v. Albert Daniel Carter,WIPO Case No. D2010-1367; Securitas AB, supra,WIPO Case No. D2013-0117. Moreover, in finding a domain name used only for an email scam was bad faith, the panel in Kramer Law Firm, P.A. Attorneys and Counselors at Law v. BOA Online, Mark Heuvel,WIPO Case No. D2016-0387, pointed out that numerous UDRP panels have found such impersonation to constitute bad faith, even if the relevant domain names are used only for email. See, e.g., Terex Corporation v. Williams Sid, Partners Associate,WIPO Case No. D2014-1742 (“Respondent was using the disputed domain name in conjunction with…an email address for sending scam invitations of employment with Complainant”); and [] Investments Company v. Anthono Maka, Alahaji, Koko, Direct investment future company, ofer bahar,WIPO Case No. D2011-0128 (“although the disputed domain names have not been used in connection with active web sites, they have been used in email addresses to send scam emails and to solicit a reply to an ‘online location’”). As noted in Section B above, the Panel also finds that Respondent has engaged in a pattern of trademark-abusive domain name registrations specifically targeting Complainant and such conduct is evidence of Respondent’s bad faith registration and use of the Domain Name. See Société Coopérative Groupements d’achats des Centres Leclerc, SC GALEC v. Failly Jacques,WIPO Case No. D2020-3068 ( For this reason, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in 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 Domain Name, John C McElwaine
Sole Panelist
Date: March 29, 2021
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