The Complainant is Association des Centres Distributeurs E. Leclerc of Ivry-sur-Seine, France, represented by Inlex IP Expertise, France.
The Respondent is Pan Shuai Lou of Hangzhou, Zhejiang, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2017. On October 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 3, 2017, 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. On October 12, 2017, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. On October 13, 2017, the Complainant requested that English be the language of the proceeding. The Respondent did not reply by the specified due date.
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 November 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 24, 2017.
The Center appointed Sok Ling MOI as the sole panelist in this matter on December 8, 2017. 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 has used the brand LECLERC in connection with supermarkets and hypermarkets for many years. The name LECLERC was adopted from the family name of the founder of the Complainant.
The Complainant has 660 supermarkets and hypermarkets in France and 123 supermarkets and hypermarkets in other European countries including Italy, Spain, Portugal, Poland, Andorra and Slovenia. In 1987, the Complainant started offering travelling services under the brand LECLERC VOYAGES and launched the website “www.m” in 1999 to promote the travelling services. The Complainant employs 123,000 people in France and generates revenue in excess of 40 billion Euros in 2016.
The Complainant owns the following trade mark registrations incorporating the term LECLERC:
Jurisdiction
Trade Mark
Registration No.
Registration Date
Class
European Union
LECLERC
2700656
February 26, 2004
1-45
France
LECLERC VOYAGES
1418425
July 16, 1987
36, 37, 39, 41 & 43
The Complainant is also the registrant of, and operates websites at the following domain names:
-
-
-
The disputed domain name was registered on July 20, 2017. According to the evidence submitted by the Complainant, the disputed domain name resolves to a parking website containing links to the Complainant’s competitors’ websites. 5. Parties’’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical and/or confusingly similar to its LECLERC and LECLERC VOYAGES trade marks. The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has been registered and is being used in bad faith.
The Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.
The language of the Registration Agreements for the disputed domain names is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and requested that English be the language of the proceeding.
The Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:
(a) the disputed domain names are registered in Latin characters, rather than Chinese script;
(b) according to the evidence submitted by the Complainant, the Respondent has replied in reasonably proficient English via email of August 27, 2017 to the Complainant’s cease-and-desist letter sent on August 24, 2017, drafted in English; and
(c) based on a reverse WhoIs search independently conducted by the Panel, the Respondent has registered several other domain names comprising English words, such as , , , , , , and .
Additionally, the Panel notes that:
(a) the Center has notified the Respondent of the proceeding in both Chinese and English;
(b) the Respondent has been given the opportunity to present its case in this proceeding; and
(c) the Center has informed the Respondent that it would accept a Response in either English or Chinese.
Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case.
The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be translated into Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English. 6.2 Substantive Issues
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in LECLERC and LECLERC VOYAGES by virtue of its use and registration of the same as trade marks.
The disputed domain name incorporates the Complainant’’s LECLERC and LECLERC VOYAGES trade marks in their entirety. The addition of the country code Top-Level Domain “.co” does not in this instance impact the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trade marks.
Consequently, the Panel finds that the disputed domain name is identical to the Complainant’s trade mark LECLERC VOYAGES and confusingly similar to the Complainant’s trade mark LECLERC.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of establishing that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
(See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd,WIPO Case No. D2013-0974).
The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the LECLERC and LECLERC VOYAGES trade marks or to seek registration of any domain name incorporating the trade marks. The Respondent appears to be an individual by the name of Pan Shuai Lou. There is no evidence suggesting that the Respondent is commonly known by the disputed domain name or that the Respondent has any rights in the term/name “Leclerc”.
According to the evidence submitted by the Complainant, the disputed domain name resolves to a parking website containing links to the Complainant’s competitors’ websites. The consensus view of previous UDRP panels is that use of a domain name to post parking and landing pages or pay-per-click links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” of the domain name.
The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to establish his rights or legitimate interests in the disputed domain name. Since the Respondent did not file a response to the Complaint and has thus failed to offer any explanation for his registration of the disputed domain name, the prima facie case has not been rebutted.
Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a disputed domain name in bad faith, namely:
(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark 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 disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark 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 the respondent’s 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 the respondent’s website or location or of a product or service on the respondent’s website or location.
The Panel accepts that the Complainant and its trade mark LECLERC enjoy a strong reputation in France. The Complainant has claimed that its trade mark LECLERC is well-known in France and several other European countries. As LECLERC has no meaning in the English or the French language, the term is highly distinctive. Given the Complainant’s obvious online presence, it is quite improbable that the Respondent was unaware of the existence of the Complainant and its trade marks at the time of registering the disputed domain name. Registration of a domain name that incorporates a complainant’s well-known trade mark suggests opportunistic bad faith.
According to the evidence submitted by the Complainant, the Respondent had immediately offered to sell the disputed domain name to the Complainant upon receiving the Complainant’s cease-and-desist letter. Indeed, the Respondent had asked for a price of USD 1,200 for the disputed domain name - this is obviously in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name. The circumstances under paragraph 4(b)(i) of the Policy clearly apply.
In registering a disputed domain name that is a typographical variant of the Complainant’s official website address “www.m”, the Respondent may be seeking to use the disputed domain name to offer sponsored links or redirect Internet users to websites offering other goods and services. In so doing, the Respondent will be depriving the Complainant of the opportunity to sell its goods and services to prospective clients who are clearly looking for the Complainant. Indeed, according to the evidence submitted by the Complainant, the disputed domain name resolves to a parking website containing links to the Complainant’s competitors’ websites. The Panel notes the presumption that the Respondent or a third party stands to profit or make a “commercial gain” from advertising revenue by such an arrangement trading on the Complainant’s trade marks. In the Panel’s opinion, such links clearly seek to capitalise on the trade mark value of the Complainant’s LECLERC and LECLERC VOYAGES trade marks resulting in misleading diversion. Such use of the disputed domain name cannot be in good faith.
An inference can therefore be drawn that the Respondent is engaging in an act of typo-squatting and has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website. As such, the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy may be applicable to the present case.
In view of the above finding that the Respondent does not have rights or legitimate interests in the disputed domain name, and taking into account all the circumstances, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) 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 name be transferred to the Complainant.
Sok Ling MOI
Sole Panelist
Date: December 29, 2017
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