WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Association des Centres Distributeurs E. Leclerc - ACD Lec v. Above.com Domain Privacy / Transure Enterprise Ltd, Host Master
Case No. D2012-2470
1. The Parties
The Complainant is Association des Centres Distributeurs E. Leclerc - ACD Lec of Ivry-sur-Seine, France, represented by Inlex IP Expertise, France.
The Respondent is Above.com Domain Privacy of Beaumaris, Victoria, Australia; Transure Enterprise Ltd, Host Master of Tortola, Virgin Islands, Overseas Territory of the United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <pharma-leclerc.com> is registered with Above.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2012. On December 17, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 2012, 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 19, 2012 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 20, 2012.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 14, 2013.
The Center appointed Stefan Abel as the sole panelist in this matter on January 21, 2013. 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 runs under the trademark LECLERC a chain of supermarkets in France and other countries like Spain, Italy, Slovenia, Poland and Portugal. The Complainant started its business 50 years ago and runs today over 500 supermarkets in France. The Complainant owns various trademarks containing the sign LECLERC. In particular, the Complainant owns since over ten years several trademarks consisting of the terms LECLERC and PARAPHARMACY which are inter alia protected for consulting and distribution services for pharmaceutical and parapharmaceutical products. Further, the Complainant owns several domain names consisting of the terms “Leclerc” and “Parapharmacie”.
The Respondent registered the disputed domain name in August 2012. The Respondent’s site of the disputed domain name contains a number of links to numerous commercial websites and, in particular, to “LECLERC supermarkets”.
5. Parties’ Contentions
In summary, the Complainant’s contentions are as follows:
The disputed domain name is confusingly similar to the Complainant’s LECLERC trademarks.
The combination of the well known sign LECLERC with the generic term “Pharma” is likely to generate a risk of confusion in the consumer’s mind who would think that the disputed domain name will lead him to an official website of the Complainant related to the pharmacy business.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not authorized the Respondent to use the sign LECERLC. The Respondent uses the domain name for a parking website in order to earn profits by pay-per-click revenues.
The Respondent registered and is using the disputed domain name in bad faith. Having been contacted by the Complainant, the Respondent requested a reimbursement of administrative and registration costs in the amount of USD 900 which the Complainant considered to be a prohibitive price.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy provides for a transfer or cancellation of the disputed domain name if the Complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:
(i) the Respondent’s 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 has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out certain circumstances which, in particular, but without limitation, shall be evidence of registration and use of the domain name in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark containing the term “Leclerc”.
The disputed domain name consists of this distinctive element of the Complainant’s trademark in combination with the term “Pharma”. The panel finds this additional generic term describes only the services in relation to pharmaceutical and parapharmaceutical products the Complainants trademark are registered for. The term “Pharma” added to the element “Leclerc” in the disputed domain name therefore does not only lack any distinctive character with regard to the signs owned by the Complainant but reinforces the confusing similarity of the domain name to these marks.
As a general rule, the addition of a generic term to the domain name consisting of a trademark rarely excludes a finding of confusing similarity under the Policy. This finding is consistent with a number of previous UDRP decisions (See, e.g., Bravomedia LLC v. Name, Administrator, Hong Kong domains LLC, WIPO Case No. D2009-0586; Grupo Televisa, S.A., Televisa S.A. de C.V., Comercio Mas, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v Registrant firstname.lastname@example.org 9876543210, WIPO Case No. D2003-0735; British Broadcasting Corporation v. Registrant (187640) email@example.com +1.25255572, WIPO Case No. D2005-1143).
The Panel finds that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
There is no indication that the Respondent is licensed or otherwise authorized by the Complainant to use its registered trademarks or to register the disputed domain name.
The element “Leclerc” used in the disputed domain name does not have any descriptive meaning related to the content of the Respondent’s website. The terms “Pharma-Leclerc” or “Leclerc” on the website at the disputed domain name are not apparently used as a designation for a person or a company other than the Complainant or for services or products other than those provided by the Complainant.
By producing evidence on these circumstances, the Complainant has established a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name. The evidentiary burden therefore shifts to the Respondent. The Respondent must then by concrete evidence demonstrate its rights or legitimate interests in that domain name in order to refute the prima facie case. The Respondent has made no such showing.
The Panel finds that the Respondent’s default in refuting the prima facie case made by the Complainant is sufficient to establish this element of the Policy as it is an impossible task for the Complainant to prove a negative that is primarily within the knowledge of the Respondent, such as the lack of rights or legitimate interests in the domain name.
Producing prima facie evidence that the Respondent has no rights or legitimate interests in the disputed domain name must therefore be regarded as sufficient under these circumstances to establish the requirement of paragraph 4(a)(ii) of the Policy if the Respondent fails to rebut the prima facie case. This finding is consistent with the consensus in previous UDRP decisions (see e.g., Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
The Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the Complainant has established this element in accordance with paragraph 4(b)(iv) of the Policy for the following reasons:
The Panel finds that, by using the disputed domain name for a set of pay-per-click links the Respondent has intentionally attempted to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with the Complainant’s LECLERC trademarks as to source, sponsorship and affiliation of the website (paragraph 4(b)(iv) of the Policy).
The disputed domain name combines the Complainant’s trademark LECLERC with the term “Pharma” which is descriptive of the services offered under the Complainants’ trademarks. In the Panel’s view, Internet users are therefore likely to get the idea that the Respondent’s site at the disputed domain name is sponsored by the Complainant or affiliated with the Complainant. Such likelihood of confusion will likely attract more customers to the site at the disputed domain name which will result in commercial gain as the Respondent’s site provides links to numerous commercial websites.
The Panel finds that the Respondent acted intentionally. It is not conceivable to the Panel that the Respondent could have registered the disputed domain name without having the Complainant and its trademarks in mind. The Respondent’s intention to use the disputed domain name as a reference to the Complainant and its trademarks is obvious to the Panel considering that no rights or legitimate interests in using the domain name are apparent and that the Complainant’s trademarks have been registered years before the registration of the disputed domain name.
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 <pharma-leclerc.com> be transferred to the Complainant.
Date: February 4, 2013