WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ACD Lec (Association des Centres Distributeur Leclerc) v. Dzone Inc.
Case No. D2012-2103
1. The Parties
Complainant is ACD Lec (Association des Centres Distributeur Leclerc) of Ivry sur Seine, France, represented by Inlex IP Expertise, France.
Respondent is Dzone Inc. of Seoku, Gwangju, Republic of Korea.
2. The Domain Names and Registrar
The disputed domain names, <leclercdomain.com>, <leclercdomains.com>, and <leclercnic.com>, are registered with Fabulous.com (“Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on October 22, 2012. On October 22, 2012 the Center transmitted by email to the Registrar a request for registrar verification in connection with each of the disputed domain names referenced in the Complaint. On October 23, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information that differed from that contained in the Complaint and providing the other details of the registrations. The Center sent an email communication to Complainant on October 30, 2012 providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. On October 31, 2012, the Complainant filed an amended Complaint.
The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“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 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2012.
No Response was filed with the Center. Accordingly, the Center notified Respondent’s default on November 21, 2012.
The Center appointed Debra J. Stanek as the sole panelist in this matter on December 10, 2012. 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 owns several trademark registrations for the mark LECLERC, including a French trademark, Community trademark and International Trademark, the earliest of which was registered in 1985. The mark is used in connection with a large and well-known super- and hypermarket chain.
The domain names were each registered on June 14, 2012 and are used with websites that display a message stating that the relevant domain name is for sale, along with a number of generic links. In August 2012, Complainant contacted Respondent by email to object to its use of each of domain names, but did not receive a response.
5. Parties’ Contentions
1. Identical or Confusingly Similar
Complainant owns registrations for, and uses its LECLERC trademark in connection with, a chain of super- and hypermarket stores. The earliest of these is its French registration, which issued in 1985.
Each of the disputed domain names is confusingly similar to Complainant’s LECLERC trademark.
Because the term “leclerc” has no specific meaning, it is a highly distinctive trademark. Each domain name consists of that distinctive term followed by a generic term “domain”, “domains”, and “nic”, which refers to “network information center.” The use of these generic terms is not sufficient to dispel confusion with Complainant’s mark.
2. Rights or Legitimate Interests
Respondent has no right to the marks LECLERC, LECLERCDOMAIN(S), or LECLERNIC.
Respondent has no legal or business relationship with Complainant and has not been authorized to register the disputed domain names.
Respondent is not currently using, and has not used the domain names. Instead, each domain name directs a visitor to a parking website that indicates that the name is for sale, demonstrating that Respondent does not intend to use them in connection with its own activities.
3. Registered and Used in Bad Faith
Respondent registered and is using the disputed domain names in bad faith.
Respondent did not respond to Complainant’s August communications advising it of Complainant’s rights in the LECLERC mark and requesting transfer of the domain names.
Complainant’s chain of stores and the LECLERC trademark is well-known in France and several other European countries.
The websites associated with the domain names are parking sites that offer the domain names for sale – therefore Respondent did not register the domain names intending to use them.
Respondent is attempting to attract visitors to those sites, using Complainant’s mark, for Respondent’s own commercial gain. In addition to offering to sell the domain names, Respondent generates pay-per-click revenue.
Complainant submitted an application to establish “.leclerc” as a new generic top-level domain. Its application, along with others was published by ICANN on June 13, 2012. The next day, Respondent registered the three domain names at issue.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Procedural Matters
1. Identity of Respondent
The Rules define a “Respondent” as “the holder of a domain-name registration against which a complaint is initiated.” See Rules, paragraph 1, s.v. “Respondent.” The Panel is of the view that a complaint is “initiated” when it is filed with the Center as described in the Rules, paragraph 3. This is consistent with the paragraph 3(a) of the Rules1, which provides (emphasis added):
Any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules to any Provider approved by ICANN.
Therefore, under the Panel’s view, the original Complaint correctly named the identity shield service as the Respondent. It was only after this proceeding was filed and commenced that the registrar changed the registration records and identified as the “registrant”, an entity called “DZone Inc.”. Nonetheless, as the Complainant did thereafter amend its Complaint to identify the newly-revealed entity, the Panel deems the Respondent in this matter to be that entity alone.
2. Multiple Domain Names
The Complaint also seeks relief as to three domain names. The Rules provide that: “The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.” See Rule 3(c).
B. Substantive Matters
In order to prevail, a complainant must prove, as to the disputed domain name, that:
(i) It is identical or confusingly similar to a mark in which the complainant has rights.
(ii) The respondent has no rights or legitimate interests in respect to it.
(iii) It has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent’s bad faith registration and use, see Policy, paragraph 4(b).
Although Respondent has not answered the Complaint, a default does not automatically result in a finding for Complainant. Rather, Complainant continues to have the burden of establishing the required elements. The Panel may, however, draw such inferences from Respondent’s default as it considers appropriate. See Rules, paragraph 14(b).
1. Identical or Confusingly Similar
Complainant has established its rights in the mark LECLERC by virtue of the evidence of its trademark registrations.
None of the disputed domain names is identical to Complainant’s mark. Therefore, Complainant must establish that each is confusingly similar to the Complainant’s mark, determined with reference to the degree of resemblance between the domain name and mark at issue as to appearance, sound, and meaning. Here, each begins with the LECLERC mark, followed by another word or letters.
The Panel is of the view that, as a general matter, a domain name is likely to be confusingly similar to a mark if it incorporates the mark or a variation of the mark, although such a finding is not automatic. For example, here, Respondent might have been able to advance an argument that that the additional word or letters render each of the domain names sufficiently different in appearance, pronunciation and connotation from Complainant’s LECLERC trademark. By virtue of its default, however, Respondent has not advanced any argument.
Under these circumstances, the Panel finds that Complainant has established that each of the domain names is confusingly similar to its LECLERC mark. The LECLERC mark appears in each to be the dominant portion of each domain name. The addition of the word “domain” or “domains” or of the term “nic” (even absent the space between the two terms and the addition of the generic top-level domain “.com”, which are not relevant for these purposes), does not sufficiently differentiate or distinguish any of the domain names from the mark.
The Panel finds that each of the domain names is confusingly similar to a mark in which Complainant has rights.
2. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing that a respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ( “WIPO Overview 2.0”), paragraph 2.1 (once complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to respondent).
Paragraph 4(c) of the Policy sets out the following examples:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds that Complainant has made a prima facie showing as to the examples set out in the Policy.
There is no reason to believe, from the WhoIs record or otherwise, that Respondent is or could be known by any of the domain names2. It does not appear that Respondent is making a legitimate noncommercial or fair use of the domain name. Each displays a generic page that presumably generates “click through” revenue for the Registrar or Respondent or both.
Complainant does not appear to be using any of the domain names in connection with a bona fide offering of any kind. As noted above, each of disputed domain names is confusingly similar to Complainant’s mark and each is used with a site that offers the domain name for sale and appears to generate “per click” revenue. Under these circumstances, the Panel concludes that this use meets Complainant’s obligation to make a prima facie showing as to the example in Paragraph 4(c)(i) of the Policy.
The Panel concludes that Complainant has established that Respondent lacks any rights or legitimate interests in each of the domain names.
3. Registered and Used in Bad Faith
A complainant must establish that the domain name was registered and is being used in bad faith. The Policy sets out four circumstances, evidence of which may establish bad faith (see Policy, paragraph 4(b)(i)-(iv)):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs (see Policy, paragraph 4(b)(i)).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct (see Policy, paragraph 4(b)(ii)).
(3) Registering the domain name primarily to disrupt the business of a competitor (see Policy, paragraph 4(b)(iii)).
(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or a product or service on [the respondent’s] web site or location, (see Policy, paragraph 4(b)(iv)).
Complainant’s rights in the LECLERC mark long predate the registration of the disputed domain names. The Panel finds it is most probable – particularly in light of the fact of the registrations being made one day after Complainant’s application to register “.leclerc” as a generic top-level domain – that Respondent was aware of Complainant’s LECLERC mark at the time the disputed domain names were registered.
Under these circumstances, including the adverse inferences drawn by Respondent’s failure to respond, its use of an identity shield, and its registration of multiple “leclerc” domain names, the Panel finds that Complainant has established that Respondent registered and is using the above domain names in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <leclercdomain.com>, <leclercdomains.com>, and <leclercnic.com>, be transferred to Complainant.
Debra J. Stanek
Date: December 27, 2012
1 See also, Rules, paragraph 4, which is entitled “Notification” of Complaint and does not refer to “initiation.” Instead, paragraph 4(c) refers to the “commencement” of the proceedings.
2 The Panel is aware that “Leclerc” may function as a surname; however, there is no evidence that Respondent is using the term in that fashion.