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 / Amaury Demichelis, France.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2021. On December 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 21, 2021, 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 December 28, 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 29, 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 January 20, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 9, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 10, 2022.
The Center appointed Elise Dufour as the sole panelist in this matter on February 21, 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 is the French association “Association des Centres Distributeurs E. LECLERC (A.C.D. Lec)”, a well-known chain of supermarkets and hypermarkets stores. “E Leclerc” refers to the last name of the founder of the chain, Mr. Edouard Leclerc.
The Complainant owns several trademark registrations composed of the term “e leclerc”, among which:
- the European Union Trademark E LECLERC No. 002700664 filed on May 17, 2002 and registered on January 31, 2005
- the European Union figurative Trademark E. LECLERC No. 011440807 filed on December 5, 2012 and registered on May 27, 2013.
The disputed domain name
A the time of the decision, the disputed domain name does not resolve to an active page but used to resolve to the Registrar’s parking page displaying pay-per-click (“PPC”) links targeting the Complainant’s business.
5. Parties’ Contentions A. ComplainantThe Complainant contends that (i) the disputed domain name is highly confusingly similar to the Complainant’s trademarks; (ii) the Respondent has no rights or legitimate interests in the disputed domain name; and (iii) the Respondent registered and is using the disputed domain name in bad faith.
(i) For the Complainant, the disputed domain name is identical or at least confusingly similar to the trademark E LECLERC. The Complainant also contends that the addition of the term “auredis” accentuates the likelihood of confusion between the disputed domain name and the Complainant's trademark, inasmuch “auredis” corresponds to the corporate name of a French company located in La-Colle-Sur-Loup, in France, which is one of the Complainant’s partner. Finally, the mere addition of a generic Top-Level Domain (“gTLD”) “.net” is not sufficient to distinguish the Complainant’s trademark from the disputed domain name.
(ii) The Respondent is an individual using the Complainant’s trademark E LECLERC without license or authorization and not having any business relations with the Complainant. The Respondent is not commonly known under “auredis” or “eleclerc”. Further, the disputed domain name initially led to an inactive page, with mail servers set up on it. Following a cease-and-desist letter sent by the Complainant, a parking page was set up on the disputed domain name, with commercial links related to the Complainant’s field of activity. In addition, the Respondent registered the disputed domain name under anonymity. Finally, the Complainant highlights that the Respondent has already been involved in a prior UDRP case, involving the Association des Centres Distributeurs E. Leclerc - A.C.D. Lec.
(iii) Due to the strong reputation and well-known character of the trademark E LECLERC, the Complainant considers that the Respondent could not have ignored the existence of the Complainant’s trademark at the time the disputed domain name was registered. The Complainant also claims that the Respondent’s use of the disputed domain name constitutes bad faith use, as it used to point to a parking page with commercial links, directly referring to the Complainant’s field of activity. Finally, the existence of MX servers leads to believe that the Respondent could use said MX servers for phishing purposes by sending fraudulent emails. For the Complainant, such use of the disputed domain name is clearly intended to create confusion with the Complainant and to take advantage of the confusion for illegitimate purposes, amounting to bad faith use.
The Complainant requests the transfer of the disputed domain name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsIn the absence of a formal Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
iii) the disputed domain name was registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances.
A. Identical or Confusingly SimilarThe disputed domain name wholly incorporates the Complainant’s trademarks E LECLERC, which, as long established by previous UDRP panels, may be sufficient to determine that a disputed domain name is identical or confusingly similar to the Complainant’s trademarks.
The addition of the term “auredis”, which has no other signification but being the name of a French company being the Complainant’s partner, does not prevent confusing similarity (see section 1.7, WIPO Overview 3.0).
Finally, the applicable gTLD “.net” in the disputed domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test (see section 1.11, WIPO Overview 3.0).
Thus, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks.
The Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate InterestsThe burden of proof is on the Complainant to demonstrate a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. Once the Complainant has made out a prima facie case, the burden of production then shifts to the Respondent, which has then to demonstrate rights or legitimate interests in the disputed domain name.
On the basis of the submitted evidence, the Panel considers that the Complainant has successfully established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name: The Respondent is not commonly known under the disputed domain name, nor owns any registered rights on the disputed domain name or has been authorized by the Complainant to use the prior trademarks in any way.
The Panel does not find any indications that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or has rights or legitimate interests in any other way in the disputed domain name. On the contrary, the disputed domain name directs to an inactive page and used to direct to a parking page, with commercial links related to the Complainant’s field of activity, which cannot constitute fair use (see, section 2.9, WIPO Overview 3.0).
Finally, the disputed domain name consists of the Complainant’s trademark along with the corporate name of Complainant’s partner, carrying a risk of implied affiliation to the Complainant, contrary to the fact (see section 2.5.1, WIPO Overview 3.0).
Therefore, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Given these circumstances the Panel finds that the second element of the Policy has been satisfied.
C. Registered and Used in Bad FaithRegarding the registration of the disputed domain name, which encompasses the trademark E LECLERC, the Panel considers it unlikely that, at the time of the registration of the disputed domain name, the Respondent did not know about the E LECLERC trademark.
Indeed, given the fact that the Respondent is based in France and that the Complainant’s trademarks are well-known, the Respondent cannot credibly claim to have been unaware of the existence of the previous trademarks (see section 3.2.2 of the WIPO Overview 3.0).
Furthermore, the Panel finds that the Respondent must have had knowledge of the Complainant’s rights in the E LECLERC trademark at the time of registration of the disputed domain name, since the Respondent has chosen to associate the Complainant’s trademark to the name “auredis”, which corresponds to the corporate name of the Complainant’s partner. In addition, the Respondent has previously been involved in WIPO decision involving the Complainant’s trademark. (Association des Centres Distributeurs E. Leclerc - A.C.D. Lec. v. WhoisGuard Protected, WhoisGuard, Inc. / Amaury Demichelis,WIPO Case No. D2019-3011).
As for use of the disputed domain name in bad faith, given the circumstances described in the Complaint, the documentary evidence provided by the Complainant, and the brief verification carried out by the Panel of the website associated with the disputed domain name, the Panel is satisfied that the disputed domain name is used in bad faith.
Indeed, the Complainant provided evidence that the disputed domain name used to resolve to a parking page with commercial links, directly referring to the Complainant’s field of activity. Furthermore, the existence of these MX servers leads to believe that the Respondent could use the MX servers for phishing purposes by sending fraudulent emails.
Taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate.
Therefore, the Panel finds that the requirement of registration and use in bad faith is satisfied, according to the Policy, paragraph 4(a)(iii).
7. DecisionFor 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,
Elise Dufour
Sole Panelist
Date: March 7, 2022