WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Association des Centres Distributeurs E.Leclerc - A.C.D. Lec v. Joao Pedro Pereira
Case No. D2011-1357
1. The Parties
Complainant is Association des Centres Distributeurs E.Leclerc - A.C.D. Lec of Ivry-sur-Seine Cedex, France, represented by Inlex IP Expertise, France.
Respondent is Joao Pedro Pereira of Lagos, Portugal.
2. The Domain Names and Registrar
The disputed domain names <e-leclercalgueirao.com>, <e-leclercamora.com>, <e-leclercbarcelos.com>, <e-leclercbobadela.com>, <e-leclercbraga.com>, <e-leclerccaldasdarainha.com>, <e-leclerccascais.com>, <e-leclercchaves.com>, <e-leclercentroncamento.com>, <e-leclercfafe.com>, <e-leclercfigueiradafoz.com>, <e-leclercguimaraes.com>, <e-leclerclamego.com>, <e-leclerclordelo.com>, <e-leclerclousada.com>, <e-leclercmontijo.com>, <e-leclercparchal.com>, <e-leclercportalegre.com>, <e-leclercportimao.com>, <eleclercportimao.com>, <e-leclercsantamariadafeira.com>, <e-leclercsantarem.com>, <e-leclercvalongo.com>, <e-leclercvianadocastelo.com>, <e-leclercvilanovadefamalicao.com> are registered with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2011. On August 10, 2011, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the disputed domain names. On August 10, 2011, Dotster, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center received email communications from Respondent on August 10, 2011 and August 15, 2011, to which Complainant replied via email on August 16, 2011.
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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 6, 2011. Respondent did not submit any formal response by the due date.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on September 16, 2011. 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
Complainant is a French association of independent storekeepers. The founder of the organization, Mr. Edouard Leclerc, as well as the organization itself enjoys a great reputation in France and in other countries in the European Community such as Portugal. With 17.4 % of market shares on all products, Complainant is one of the leaders of merchandise distribution in France. In 2010, the turnover of Complainant's hypermarkets/supermarkets (except fuel) reached 28,6 billion Euros (34,8 billions with fuels) in France and 31 billions Euros by including the international results. 94,900 people are employed by Complainant. In France, there exist 554 hypermarkets/supermarkets LECLERC, and 115 hypermarkets/supermarkets LECLERC elsewhere in Europe, including 40 in Portugal.
Complainant advertises and promotes the E LECLERC trademark. Complainant owns several French, Community and International trademarks registered since 1967, composed of the term "e leclerc". "e leclerc" stands for "edouard leclerc" which is the name of the founder of the organization. Among other trademark registrations in several countries, Complainant obtained the following international registration for the trademark E LECLERC under the Madrid Agreement, valid also in Portugal:
Int. Reg. No. 603839
All Classes from 1 to 42
Reg. Date: 28-June-1993
5. Parties’ Contentions
Complainant argues that the disputed domain names are confusingly similar to the E LECLERC trademark owned by Complainant; that Respondent has no rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
Respondent did not submit a Response to Complainant’s contentions. However, the Center received email communications from Respondent on August 10, 2011 and August 15, 2011, claiming that Respondent bought all the disputed domain names and on all websites there were disclaimer “SITE NÃO OFICIAL - APENAS DEMO PRIVADA” (in English: No Official Site - Demo Only Private). Respondent also indicated the intention to sale the disputed domain names to Complainant at compensation, to which Complainant declined.
6. Discussion and Findings
To succeed, Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The burden of proving these elements is on Complainant.
A. Identical or Confusingly Similar
The disputed domain names reproduce entirely the trademark E LECLERC with the addition of a dash-sign (-), in combination with names of Portuguese cities such as "Amora", "Barcelos", or "Braga".
The element "e-leclerc" in the disputed domain names is almost identical with Complainant's registered trademark, and the added elements are merely geographical descriptions that do not serve to distinguish the disputed domain names from Complainant's trademark.
There are numerous UDRP decisions where it was found that the addition of geographich terms does not serve to distinguish the domain name from the trademark, but rather, would reinforce the association of the trademark with the domain name. As decided in Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768: “In addition, the Panel also concurs with the finding of previous WIPO UDRP panels that the use of a famous mark in its entirety together with a geographic term in a domain name creates a domain name that is confusingly similar to the famous mark.”
Therefore, the Panel finds that all 25 disputed domain names are confusingly similar to the trademark E LECLERC to which Complainant has rights and, thus, the requirement of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
The disputed domain names were all registered after Complainant started to use and registered the trademark E LECLERC. Therefore, the prior rights over such trademark are clearly on Complainant’s side.
In addition, Respondent does not run any legitimate business activity in connection with the disputed domain names.
Accordingly, Complainant established a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain names. Since Respondent has not replied to the Complaint and, thus, has not presented any other evidence or elements to justify any rights or legitimate interests in connection with the disputed domain names, the Panel has found no indication that any of the circumstances described in paragraph 4(c)(i)-(iii) of the Policy could apply to the present matter.
Therefore, given the circumstances described above, the Panel finds that Respondent has no rights or legitimate interests in respect to the disputed domain names (paragraph 4(a)(ii) of the Policy).
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, Complainant must prove registration and use of the disputed domain names in bad faith by Respondent. Paragraphs 4(b)(i)-(iv) of the Policy contain a non-exhaustive list of circumstances, which shall constitute evidence of registration and use of a domain name in bad faith.
It has been proven to the Panel’s satisfaction that Complainant’s trademark E LECLERC is well-known, and the Panel accepts that Respondent could not likely reasonably ignore the high reputation of the products and services that such trademark identify. Actually, Respondent expressly recognized that he had prior knowledge of Complainant’s activities in email messages exchanged with Complainant’s representative prior to the initiation of this UDRP proceeding.
In this sense, there is little doubt that Respondent intended to earn profit from the confusion created with Internet users, who believe to be accessing Complainant’s website. In this regard, see Molmed S.p.A. v. Prof. Asif Ahmed, WIPO Case No. D2002-0177: “Indeed, by redirecting Internet users looking for the website of Molmed S.p.A. to its own pages, Respondent is attempting to attract them for commercial gain, while creating a likelihood of confusion with Complainant’s trademark.”
The Panel noticed that in the websites that can be accessed under the disputed domain names there is currently no content other than Complainant’s distinctive “L” logo (also used without Complianant’s authorization) and the expression “SITE NÃO OFICIAL” (in English: “non-official site”). In that regard, the Panel notes that consumers are initially attracted to the disputed domain names by the use of the E LECLERC trademark in the disputed domain names, which is enough to contravene the Policy. This has been the consensus among UDRP decisions since the beginning of the UDRP system, as decided, among others, in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003: “the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by Respondent to amount to the domain name being used in bad faith.”
Furthermore, Respondent wrote on February 3, 2011 an e-mail message to Complainant’s representative stating that he wished to be financially compensated for his work. This also shows that Respondent intended to unduly profit from the non-authorized registration of the 25 disputed domain names incorporating Complainant’s trademark, which is another indication of Respondent’s bad faith.
Thus, the Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other online location, by creating a likelihood of confusion with Complainant’s mark and that Complainant has proven that Respondent’s registration and use of the disputed domain names were in bad faith, according to paragraph 4(a)(iii) under the Policy.
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 <e-leclercalgueirao.com>, <e-leclercamora.com>, <e-leclercbarcelos.com>, <e-leclercbobadela.com>, <e-leclercbraga.com>, <e-leclerccaldasdarainha.com>, <e-leclerccascais.com>, <e-leclercchaves.com>, <e-leclercentroncamento.com>, <e-leclercfafe.com>, <e-leclercfigueiradafoz.com>, <e-leclercguimaraes.com>, <e-leclerclamego.com>, <e-leclerclordelo.com>, <e-leclerclousada.com>, <e-leclercmontijo.com>, <e-leclercparchal.com>, <e-leclercportalegre.com>, <e-leclercportimao.com>, <eleclercportimao.com>, <e-leclercsantamariadafeira.com>, <e-leclercsantarem.com>, <e-leclercvalongo.com>, <e-leclercvianadocastelo.com>, <e-leclercvilanovadefamalicao.com> be transferred to Complainant.
Gabriel F. Leonardos
Dated: September 30, 2011