The Complainant is Association des Centres Distributeurs, E. Leclerc - A.C.D. Lec, France, represented by Inlex IP Expertise, France.
The Respondent is Transure Enterprise Ltd, United States of America.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2021. On December 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 13, 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 the Complainant on December 13, 2021 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 December 14, 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 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2022.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on January 24, 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 BackgroundThe Complainant runs a chain of supermarkets and hypermarkets stores under the LECLERC name and trademark. There are 721 LECLERC stores in France and around 100 in the other European countries. In 2019, the turnover of the Complainant was EUR 48.20 billion of in France. The Complainant employs approximately 133.000 people.
The Complainant owns numerous trademark registrations, such as European Union Trade Mark No. 02700656 registered on February 26, 2004, prior to when the Respondent registered the Domain Name.
The Domain Name was registered on July 14, 2021. At the time of drafting the Decision, the Domain Name redirects to different websites with fake news.
5. Parties’ Contentions A. ComplainantThe Complainant provides evidence of trademark registrations. The Complainant argues that the Domain Name is confusingly similar to its distinctive trademark. The Domain Name incorporates the Complainant’s registered trademark in its entirety. The addition of “jeu-concours”, “contest” in English, does not lessen the confusion between the trademark and the Domain Name. On the contrary, the addition increases the risk of confusion.
The Complainant asserts that it has no link of any nature with the Respondent. The Respondent is not authorized to use the Complainant’s trademark. The Complainant asserts that the Respondent is not commonly known by the Domain Name and is not making any legitimate noncommercial use of the Domain Name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name is connection with a bona fide offering of goods. The Domain Name has redirected to a third-party website, which was inactive, and to a website that the Complainant believes was malicious.
The Complainant argues that given the Complainant’s reputation and trademark rights, it is unlikely that the Respondent was unaware of the Complainant’s activities and trademark. The registration of the Domain Name cannot have been a coincidence. There is no plausible explanation as to why the Respondent selected the Domain Name other than to mislead Internet users and create a likelihood of confusion with the Complainant. Moreover, the Respondent has offered the Domain Name for sale for USD 100 to the Complainant. The Complainant asserts that the Respondent has activated the MX servers of the Domain Name that leads the Complainant to believe that the Respondent could use the MX servers for phishing purposes.
After the Registrar revealed the true registrant behind the registration, the Complainant has documented that the Respondent is listed as the respondent in more than 180 WIPO UDPR cases. The Respondent’s bad faith and lack of rights and legitimate interests has been recognized many times, for instance in Berlitz Investment Corporation v. Host Master, Transure Enterprise Ltd,WIPO Case No. D2020-1565, Halliburton Energy Services, Inc., v. Host Master, Transure Enterprise Ltd,WIPO Case No. D2020-1269, Accenture Global Services Limited v. above_privacy / Host Master, Transure Enterprise Ltd, WIPO Case No. D2021-2566, CCA and B, LLC v. above_privacy / Host Master, Transure Enterprise Ltd,WIPO Case No. D2021-1530. This pattern of fraudulent reservation of other domain names underlines the Respondent’s bad faith in the present case.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Complainant has established that it has rights in the trademark LECLERC.
The test for confusing similarity involves the comparison between the trademark and the Domain Name. The Complainant’s trademark is incorporated in the Domain Name. The addition of “jeu-concours” (meaning “contest” in English), does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark; see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
For the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the generic Top-Level Domain (“gTLD”) “.biz”, see WIPO Overview 3.0, section 1.11.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsAs described in WIPO Overview 3.0, section 2.1: “where a complainant makes out a prima facie case 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.”
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register the Domain Name or otherwise make use of its trademark. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired unregistered trademark rights. The Respondent has not offered any explanation as to the registration of the Domain Name, and therefore not provided any evidence of good-faith use. The Respondent cannot establish rights in the Domain Name, as it has not made use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering. The Respondent’s use of the Domain Name indicates bad faith, see further below.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithNoting the Complainant’s reputation, it is likely that the Respondent was aware of the Complainant’s trademark and business prior to registering the Domain Name. Based on the case file, the Panel agrees that it is implausible that the Respondent registered the Domain Name in good faith.
As mentioned, the Respondent has not provided any evidence of good faith use. The actual use of the Domain Name is evidence of bad faith. The Respondent has tried to create a false association between the Domain Name and the trademark LECLERC. The Respondent has tried to attract Internets users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s mark.
Furthermore, the Respondent has offered the Domain Name for sale for USD 100 to the Complainant. The Panel points out that the Domain Name wholly incorporates the Complainant’s trademark with a term related to the Complainant’s area of commercial activity. This indicates that the Domain Name was registered for the bad faith purpose of selling it to the Complainant or to a competitor of the Complainant, see WIPO Overview 3.0, section 3.1.1. The Respondent has activated the MX servers of the Domain Name that may indicate use of the Domain Name for phishing purposes. Finally, based on the previous UDPR decisions, the Respondent appears to be a serial cybersquatter.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Mathias Lilleengen
Sole Panelist
Date: February 1, 2022