WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
L’Association des centres distributeurs E. Leclerc - ACD LEC v. CC
Case No. D2005-1071
1. The Parties
The Complainant is L’Association des centres distributeurs E. Leclerc - ACD LEC, Issy les Moulineaux, France, represented by Inlex Conseil, France.
The Respondent is CC, Bayland, St Michael, Barbados.
2. The Domain Name and Registrar
The disputed domain name <leclercmusic.com> is registered with DomainsAtCost Corporation.
3. Procedural History
The Complaint was filed by e-mail with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2005. On October 12, 2005, the Center transmitted by e-mail to NameScout Corp. a request for registrar verification in connection with the domain name at issue. On October 12, 2005, DomainsAtCost Corporation transmitted by e-mail to the Center its verification response indicating that the disputed domain name <leclercmusic.com> was registered through DomainsAtCost Corporation, a sister corporation of NameScout Corp., and that the Respondent was not listed as the registrant and providing the contact details for the administrative, billing and technical contact. In response to a notification on November 1, 2005, by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 11, 2005. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 17, 2005. In accordance with the Rules, paragraph 5 (a), the due date for the Response was December 7, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2005.
The Center appointed Emmanuelle Ragot as the sole panelist in this matter on December 21, 2005. 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. The language of the proceedings is English.
4. Factual Background
The Complainant is an organization in charge of guiding the general orientation of the E. Leclerc movement and of approving the membership of E. Leclerc franchisees operating stores under the E. Leclerc name. The Complainant has enclosed in Annex A to the Complaint documents pertaining to the organization of the E. Leclerc movement and its businesses.
According to the registrar, the Respondent in this administrative proceeding is CC, Bayland, St Michael.
Respondent registered the domain name at issue on June 30, 2004 (Complaint Annex B) and uses the name at issue as a portal for the entity M.O.K MAGIC ON KIOSK in the business of selling music downloading devices (Complaint Annex D).
The parties have tried to settle their dispute between July 12 and September 30, 2005, (Complaint Annex E) without success.
5. Parties’ Contentions
The Complainant claims that it owns numerous trademark registrations including the word “Leclerc”. The Complainant cited trademark registrations such as Registration No. 511972, dated January 27, 1987, (LECLERC, registered internationally), Registration No. 002700664, dated January 31, 2005, (E LECLERC, registered in the European Union), Registration No. 603839, dated June 28, 1993 (E.LECLERC and design, registered internationally), and Registration No. 737207, dated April 14, 2000, (BBJ E.LECLERC, registered internationally).
Complainant contends that the Respondent has registered the domain name <leclercmusic.com> that combines the distinctive element of a number of French, European and International trademarks held by the Complainant (“Leclerc”), with the generic term “music”.
The Complainant contends that the Respondent has registered a domain name which is confusingly similar to the Complainant’s trademark and that it is difficult to differentiate the two since the domain name incorporates the trademark of the Complainant and since the addition of “music” and the extension “.com” is of no help in avoiding the confusion.
The Complainant contends that the Respondent has no rights or legitimate interests to the domain name at issue, and that the Respondent has registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant.
(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent’s domain name has been registered and is being used in bad faith.
The Complainant must prove in the administrative proceedings that each of the aforesaid three elements are present so as to warrant relief, according to paragraph 4(a) of the Policy.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable pursuant to paragraph 15(a) of the Rules.
A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the LECLERC trademarks based on Complainant’s French, European and International registrations of the mark (Complaint Annex F).
The disputed domain name is confusingly similar to the Complainant’s trademarks because the distinctive element “Leclerc” is reproduced and used in the domain name.
Given the appearance, sound, connotation and commercial similarity of the domain name and the marks, the Panel finds the Respondent’s domain name <leclercmusic.com> and Complainant’s name and trademark LECLERC are confusingly similar.
Thus, the Panel finds for the Complainant on the first element.
B. Rights or Legitimate Interests
A complainant is required to make out an initial prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name. Once such prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the domain name.
It is the Panel’s finding that the Complainant has established rights in registered trademarks which include the word “Leclerc” as a distinctive element (Complaint Annex F). Furthermore, as a matter of fact and absent evidence to the contrary, the Complainant has not granted any license or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the said marks and no commercial relationship exists between the Complainant and the Respondent.
The Respondent has provided nothing to support a conclusion that it has a legitimate interest in the subject domain name. The Respondent in not responding to the Complaint has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the domain name.
The Panel finds that the Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name. As the Respondent has failed to provide any evidence to rebut this prima facie case, the Panel finds that the Complainant has established the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides the following non-exclusive list of circumstances that may evidence registration and use of a domain name in bad faith:
“(i) circumstances indicating that you [the Respondent] have registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant with the owner of a trademark or service trademark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered a domain name in order to prevent the owner of the trademark or service trademark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or enforcement of your website or location or of a project or service on your website or location.”
The Complainant asserts that in pre-filing correspondence between the parties, a person purportedly representing the Respondent stated, “The business of our company is the sales of music downloading devices. Our business plan involves the entire sector of high volume retail outlets and especially certain members of the Leclerc group.” It appears therefore that the Respondent was most likely aware of the Complainant’s trademarks and business when it registered the disputed domain name.
Further, as discussed above, it appears that the Respondent holds no right in the word “Leclerc” which could legitimize the registration of the disputed domain name. The disputed domain name itself was at one time linked to a website which advertised services and products, some of which competed with the services and products of the Complainant, although the domain name is now not linked to any active website. It therefore appears that the Respondent made use of the LECLERC trademark to increase its business volume and to generate traffic on its Internet site.
Based on these facts, the Panel finds that the Respondent registered and has used the disputed domain name in order to attract, for commercial gain, Internet users to the website linked to the domain name by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website.
Therefore, the Panel finds that the Complainant has established the third element of the Policy.
For all the foregoing reasons, the Panel finds that the domain name <leclercmusic.com> is confusingly similar to trademarks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name in issue has been registered and is being used in bad faith by the Respondent.
Accordingly, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <leclercmusic.com> be transferred to the Complainant.
Date: January 15, 2006