WIPO Domain Name Decision D2021-3902 for siplec-leclerc.com, siplec-leclerc.shop

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Association des Centres Distributeurs E. Leclerc - A.C.D. Lec. v. Privacy Service Provided by Withheld for Privacy ehf/ Name Redacted and Chantal Humbert Case No. D2021-3902 1. The Parties

The Complainant is Association des Centres Distributeurs E. Leclerc - A.C.D. Lec., France, represented by Inlex IP Expertise, France.

The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Name Redacted1 and Chantal Humbert, Côte d'Ivoire.

2. The Domain Names and Registrars

The disputed domain name is registered with Combell NV.

The disputed domain name is registered with NameCheap, Inc. (the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2021. On November 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 23, 2021, the Registrar Namecheap Inc. 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. On November 26, 2021, the Registrar Combell NV 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 26, 2021 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint including consolidation arguments on November 30, 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 the Respondent of the Complaint, and the proceedings commenced on December 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 22, 2021.

The Center appointed Alistair Payne as the sole panelist in this matter on January 4, 2022. 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 operates one of the largest chain of supermarkets / hypermarkets in France with 721 stores throughout the country and also has stores in various European countries. The Complainant has a separate company called the “Societe D’Importation Leclerc” with the acronym “Siplec” that undertakes international purchasing for the Complainant’s group of companies. The Complainant owns numerous trade mark registrations for its LECLERC mark including European Union Trade Mark registration No. 002700656 registered on February 26, 2004. Its owns the domain names and from which it operates its official websites at “www.chezmoi.leclerc” and “www.leclercdrive.fr” from which it operates its online stores. It also owns the domain name from which it operates the official website of “Siplec”.

The disputed domain name was registered on June 30, 2021, and at the time of filing redirected to the Complainant’s official website at “www.e.lerclerc”. The disputed domain name was registered on June 25, 2021, and at the time of filing redirected to an inactive page. At the time of this Decision, both disputed domain names resolve to inactive pages.

5. Parties’ Contentions A. Complainant

The Complainant seeks the consolidation of the complaints for the disputed domain names which at the date filing did not reveal registrant identity but which appear to be under common control, according to the Complainant, on the basis that: (i) the disputed domain names are identical prior to the top level domain root and both use the Complainant’s trade mark and Siplec company acronym; and (ii) the registration of the disputed domain names occurred only four days apart in June 2021. The Complainant notes that following verification by the Registrar for each of the disputed domain names the contact details for both of them appear to be inaccurate and false and overall that both the disputed domain names have been registered with the purpose taking advantage of the Complainant’s rights in the LECLERC mark.

The Complainant submits that it owns registered trade mark rights as noted above and that each of the disputed domain names wholly incorporate its LECLERC trade mark. As a consequence the Complainant asserts that both the disputed domain names are confusingly similar to its registered trade mark and the inclusion of the “Siplec” acronym does not detract from this finding but rather heightens the potential level of confusion in circumstances that it refers to the Complainant’s importation company and other than the top level domain name root is identical to its domain name.

The Complainant submits that it has not authorised the Respondent to use the name or mark LECLERC or to register the disputed domain names and that there is no business relationship existing between the parties. The Complainant says that there is nothing to indicate that the Respondent is known by the name LECLERC or that it has any trade mark rights in the name or that it uses this name as a registered company name. It notes that the disputed domain name redirects to the Complainant’s official website at “www.e.leclerc” without the Complainant’s authority and that the disputed domain name resolves to an inactive page, which suggests that neither of the disputed domain names are being used in connection with a bona fide offering of goods or services or a legitimate noncommercial fair use.

The Complainant also says that the disputed domain name has been falsely registered in the name of a director of Siplec which is part of the Complainant’s organisation and that there is no evidence that the registrant of the disputed domain name has any trade mark rights in the “Leclerc” name.

The Complainant submits that the LECLERC mark is very established and well reputed in France and that both the LECLERC mark and the Siplec acronym are distinctive and have no common meaning and it is implausible that the Respondent would not have been aware of both when it registered the disputed domain names and in these circumstances the mere fact of registration and any attempt to actively use either of the disputed domain names would lead to a likelihood of confusion and amount to bad faith.

Further, says the Complainant, the fact that the Respondent has in both cases sought to hide its identity and has used the name of one of the Complainant’s directors as the registrant of further supports an inference of the Respondent’s bad faith. The Complainant also notes that MX servers are configured to operate with the disputed domain name which currently re-directs to the Complainant’s official website. This is indicative of the likelihood, says the Complainant, that the Respondent intended to engage in a phishing scheme and sought to make Internet users believe that they are dealing with the Complainant when that is not the case.

In this regard, the Complainant notes that the domain name (which is not part of this proceeding) has also been registered fraudulently in the name of the same director of Siplec and it submits therefore that the registration of this domain name and of the disputed domain names are linked and were undertaken for fraudulent purposes. Finally, the Complainant says that it sent a cease and desist letter to the contact electronic address of all three domain names on September 1, 2021, but that it never received any response.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The key considerations in determining whether cases should be consolidated where they involve multiple respondents are identified at section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions a being whether: (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency is also noted as being a relevant consideration.

In this case, both disputed domain names are identical except that they are in different Top Level Domains (“TLDs”). Importantly they both incorporate as the first element, not just the Complainant’s LECLERC mark, but also the very distinctive and unusual acronym used by its group, importation company, namely “Siplec”. The disputed domain names were registered only four days apart and both appear to have been registered with false registrant names and contact details as noted under Part B below. Neither Respondent has sought to challenge the Complainant’s request for consolidation in these proceedings or has even replied to the cease and desist letter sent by the Complainant to the registered contact details for each disputed domain name.

In these circumstances, the Panel finds that it is more likely than not that the disputed domain names are under common control and that their registration was instructed by the same party and that it is fair and equitable procedurally efficient to proceed to consider them in the same complaint, which the Panel will now proceed to do below.

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns registered trade mark rights for its LECLERC mark in European Union Trade Mark registration No. 002700656. Each of the disputed domain names wholly incorporates the LECLERC mark immediately after the term “Siplec-“. The Panel finds that the incorporation of the LECLERC mark in each of the disputed domain names renders each of them confusingly similar to the Complainant’s registered trade mark for LECLERC and that the addition of “Siplec-“ does not prevent a finding of confusing similarity. Accordingly, the Complaint succeeds under the first element of the Policy.

B. Rights or Legitimate Interests

The Complainant has submitted that it has not authorised the Respondent to use the name or mark LECLERC and neither has it permitted the Respondent to register the disputed domain names and that there is no business relationship existing between the parties. The Complainant has also submitted that there is nothing to indicate that either Respondent is known by the name LECLERC, has any trade mark rights in the name, or uses this name as a registered company name. The Complainant has also asserted that the disputed domain name redirects to the Complainant’s official website at “www.e.leclerc” without the Complainant’s authority and that the disputed domain name resolves to an inactive page, which suggests that neither of the disputed domain names are being used in connection with a bona fide offering of goods or services, or a legitimate noncommercial fair use.

Based on the assertions made and evidence put forward by the Complainant, it appears that the disputed domain name has been fraudulently registered in the name of a director of Siplec which company is part of the Complainant’s corporate group. Secondly, there is no evidence on the record that the individual who is allegedly the registrant of the disputed domain name has any trade mark rights in the “Leclerc” name. These circumstances together with the fact that the disputed domain name diverts without the Complainant’s permission to its main website and is configured to operate with MX servers and that the disputed domain name diverts to an inactive page all support the Complainant’s submission.

The Panel finds that the Complainant has made out a prima facie case that the Respondents have no rights or legitimate interests in the respective disputed domain names. As the Complainant’s case has not been rebutted by the Respondents the Panel finds that the Complainant has successfully made out its case and that the Complaint succeeds under this element of the Policy.

C. Registered and Used in Bad Faith

Both the disputed domain names were registered many years after registration of the Complainant’s LECLERC trade mark. As also noted by a number of previous UDRP panels, the LECLERC mark is very established and well-reputed in France as a consequence of the establishment and growth of the Complainant’s extremely successful retail businesses throughout the country. Further, both the LECLERC mark and the Siplec acronym are very distinctive in relation to supermarket or hypermarket retail businesses. It seems to the Panel entirely implausible that the Respondents would have chosen to include them both in the disputed domain names just by coincidence. Accordingly, the Panel finds that it is very likely that the Respondents were well aware of the Complainant’s LECLERC mark and business upon the registration of each of the disputed domain names.

The disputed domain name has not been actively used by the Respondent other than to divert (without permission) to the Complainant’s official website. The disputed domain name diverts to an inactive page.

Previous UDRP panels have considered various factors in determining whether holding disputed domain names amounts to a passive holding in bad faith, or not as set out at section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. The factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.

In this case, the LECLERC mark is highly distinctive in the retail field and enjoys a very high level of repute and recognition in France at the least. The Respondents have failed to submit a response in either case or to provide any evidence of actual or contemplated good faith use and they have used a privacy service in an effort to conceal the identity of each registrant of the disputed domain names.

Finally, considering the level of distinctiveness and repute attaching to the LECLERC name and mark and the very distinctive and specific nature of the Siplec acronym, it seems extremely implausible that either disputed domain name was registered for a purpose other than to somehow use them in bad faith for the Respondent’s own gain. In this regard, it is notable that in registering the disputed domain name, the Respondent fraudulently used the name of a director of the Complainant’s Siplec business as the registrant. The fact that MX servers are configured to operate with this disputed domain name is also indicative that the Respondent probably intended to use this disputed domain name for the purposes of “phishing” by seeking to make Internet users believe that they were dealing with the Complainant when that was not the case. The Panel notes the Complainant’s assertion that the similarly configured domain name has also been registered fraudulently in July 2021 in the name of the same director of Siplec, although that domain name is not at issue in these proceedings. Finally, the fact that the Respondent failed to respond to the Complainant’s cease and desist letter sent in September 1, 2021, or to explain its conduct in registering the disputed domain names, only reinforces the Panel’s view of the Respondents’ bad faith.

In sum, the Panel considers that the has been passively held in bad faith and that the disputed domain name has either been used passively in bad faith or been used by the Respondent to divert to the Complainant’s official website, most likely for the purpose of being used as part of a phishing scheme to make Internet users believe that they were dealing with the Complainant when that was not the case. Accordingly, the Complaint succeeds in relation to each of the disputed domain names under this element 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 names and be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: January 18, 2022

1 One of the Respondents appears to have used the name of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted this Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST‑12785241 Attn. Bradescourgente.net / Name Redacted,WIPO Case No. D2009-1788.

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