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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Association des Centres Distributeurs E. Leclerc - A.C.D Lec v. Noorinet

Case No. D2015-0024

1. The Parties

The Complainant is Association des Centres Distributeurs E. Leclerc - A.C.D Lec of Ivry-sur-Seine, France, represented by Inlex IP Expertise, France.

The Respondent is Noorinet of Daegu, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <mobileleclerc.com> is registered with Gabia, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2015. On January 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 14, 2015, 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 January 16, 2015, the Center notified the Parties in both English and Korean that the language of the Registration Agreement for the disputed domain name was Korean. On the same day, the Complainant confirmed its request for English to be the language of the proceeding, to which the Respondent has not replied.

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 the Respondent of the Complaint, and the proceedings commenced on January 23, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 12, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2015.

The Center appointed Thomas P. Pinansky as the sole panelist in this matter on February 27, 2015. 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 is a French association which owns several trademarks involving the term “leclerc” including; Community Trademark registration LECLERC No. 002700656 filed on May 17, 2002 and registered on July 21, 2003; French Trademark registration LECLERC No. 511972 registered on January 27, 1987; French and Community Trademark registration E. LECLERC MOBILE No. 006603468 filed on January 23, 2008 and registered on February 13, 2009.

The Complainant uses its trademarks in connection with a chain of supermarket and hypermarket stores located throughout France and other countries in Europe, including Italy, Spain, Portugal, Poland, Andorra and Slovenia. The Complainant also offers mobile telephony services to consumers in France and throughout Europe.

The Respondent registered the disputed domain name on August 7, 2008, three days after the Complainant’s trademark E. LECLERC MOBILE was published.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its trademarks LECLERC and E. LECLERC MOBILE in which the Complainant has rights. The Complainant alleges that though the disputed domain name differs from the Complainant’s trademark E. LECLERC MOBILE by the omission of the letter “e”, this distinction is insufficient to lessen the confusing similarity between the disputed domain name and the Complainant’s trademark. The Complainant further notes that the inversion of the words “leclerc” and “mobile” represents so minor a distinction that consumers will be unable to differentiate the disputed domain name from the Complainant’s trademark.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant notes that the Respondent has no trademark rights relating to the name “LeClerc”, and that the Complainant has not authorized the use of its trademarks to the Respondent. The Complainant further contends that the disputed domain name is not used in connection with a bona fide offering of goods or services. According to the Complainant, the Respondent merely seeks to take unfair advantage from the trademark LECLERC by diverting consumers from the Complainant’s website to the disputed domain name where the Respondent unfairly benefits by receiving pay-per-click commissions.

Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant notes that the founder and promoter of the association, Mr. Edouard Leclerc, enjoys a great reputation in France and Europe, with 642 hypermarkets/supermarkets operating in connection with the LECLERC name in France, and 123 throughout Europe. The Complainant also notes that “LeClerc” is a surname with no specific meaning in French or English and that it is highly unlikely that Respondent registered the disputed domain name in question as a matter of coincidence. The Complainant further contends that because the registration of the disputed domain name occurred three days after the Complainant’s publication of its trademark E.LECLERC MOBILE, and because the disputed domain name contains hyperlink information in French, that the registration of the disputed domain name was in bad faith. The Complainant further notes that the disputed domain name resolves into a parking webpage with several hyperlinks related to the mobile telephony field, and that it contains links to the Complainant’s website as well as to the Complainant’s direct competitors’ websites. The Complainant stipulates that the disputed domain name is used in order to take unfair advantage of the well-known character of its trademarks by diverting customers looking for the Complainant’s website to the disputed domain name, where the Respondent benefits from the confusion and diversion by receiving pay-per-click commissions.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Preliminary Issue: Language of the Proceeding

Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the registration agreement, unless otherwise agreed to by the parties, subject to the authority of the panel to determine otherwise. In this case, the language of the registration agreement is Korean, and the Complainant submitted arguments as to why English is more appropriate, citing a number of factors.

In adopting a language other than that of the registration agreement, the Panel has to exercise its discretion in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs. Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432.

First, the Panel notes that English does not appear to be the mother tongue of either party. Given the fact that the Complainant is based in France and the Respondent is based in the Republic of Korea, English would appear to be the fairest neutral language for rendering this Decision. The Panel also notes that the disputed domain name displays its content in English and in French. The Panel additionally notes that the Respondent has been involved in eight (8) past UDRP proceedings in which English was accepted as the language of the proceeding, without this fact being contested by the Respondent. Further, the Panel notes that the Respondent has chosen not to participate in this proceeding.

For the above-mentioned reasons, the Panel concludes that it will proceed in line with the Center’s preliminary decision to accept the Complaint as filed in English, and issue a decision in English.

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Paragraph 4(a) of the Policy requires that a complainant must prove each of the following three elements to obtain an order that a domain name be cancelled or transferred:

(i) the domain name registered by a respondent 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 domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

According to paragraph 4(a)(i) of the Policy, the Complainant must prove that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark in which the Complainant has rights.

The Complainant has demonstrated that it holds several trademark registrations for LECLERC and E. LECLERC MOBILE which are closely associated with its business activities in Europe.

The disputed domain name wholly incorporates the Complainant’s trademark with the addition of the generic Top-Level Domain (gTLD) “.com”. It is well established that the addition of the gTLD “.com” is without legal significance when comparing the disputed domain name to the Complainant’s registered trademark. See Guccio Gucci S.p.A. v. Brenda Hawkins, WIPO Case No. D2013-0603; cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374.

Further, the disputed domain name <mobileleclerc.com> incorporates the Complainant’s existing trademark, and merely switches the word order and omits the single letter “e”. The disputed domain name incorporates the dominant feature of the Complainant’s mark and is, in the Panel’s view, confusingly similar to the Complainant’s mark. See Olympus USA, Inc., Olympus America, Inc., and Olympus Optical Co., Ltd v. World Photo Video and Imaging Corp., WIPO Case No. D2001-1464.

For the reasons stated above, the Panel finds that pursuant to the Policy, paragraph 4(a)(i), the disputed domain name is confusingly similar to the Complainant’s trademarks, and the first element has been established.

B. Rights or Legitimate Interests

According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. In connection with the burden of proof, several past UDRP decisions have held that once a complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the respondent to rebut the showing (see among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).

On the basis of the present record, the Panel finds that the Complainant has made the required allegations to support a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant contends that it has not licensed or otherwise permitted the Respondent to use any of its trademarks, and that there is no business relationship between the Complainant and the Respondent. The Panel agrees that this supports that the Respondent lacks rights or legitimate interests in the disputed domain name. See Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102 (finding that an absence of license permitting to use complainant’s trademark or to apply for any domain name incorporating any such mark is prima facie evidence that the respondent has no rights or legitimate interests in the disputed domain name).

The Respondent in the present case has chosen to file no Response. Accordingly, there is no evidence or allegation in the record that would warrant a finding in favor of the Respondent on this point.

For the reasons provided above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the second element of the Policy has been established.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must prove that disputed domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for a complainant to show bad faith registration and use of domain names. One such criteria which indicates bad faith, listed under paragraph 4(b)(iv), includes “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.

The Panel finds that the Complainant has adequately supported the inference that the Respondent’s actions satisfy the requirement of paragraph 4(b)(iv) of the Policy. In the present case, the disputed domain name was at one point linked to a domain parking service which had sponsored links to the Complainant and the Complainant’s competitors’ websites. On this parking service page, the Respondent offered the disputed domain for sale. The fact that the domain name parking service had links to the Complainant and the Complainant’s competitors’ websites shows that the Respondent was aware of the Complainant, its products and its trademarks, and intentionally created a likelihood of confusion. The mere fact of diverting users in this misleading manner is evidence of bad faith.

The Panel also notes that the Respondent registered the disputed domain name on August 7, 2008, three days after the Complainant’s trademark E.LECLERC MOBILE was published. This fact, coupled with the alleged financial gain which the Respondent received through pay-per-click submissions, is further evidence of bad faith registration and use.

The Panel further notes that there is a history of bad faith findings in cases involving the Respondent. See LEGO Juris A/S v. Noorinet, WIPO Case No. D2010-1705; Kshocolat Ltd v. Nurinet, WIPO Case No. D2010-0577; Key Relocation Center AB v. Nurinet, WIPO Case No. D2013-1885; Microsoft Corporation and Skype v. Nurinet (Noorinet), WIPO Case No. D2012-0536. Having considered the Respondent's registration of multiple confusingly similar domain names to well-known trademarks, the Panel finds that these registrations constitute a pattern of bad faith registration and use under paragraph 4(b) of the Policy. See Audi AG v. Noorinet, WIPO Case No. D2014-1879.

For the reasons given above, the Panel finds that the third and final element of the Policy has been established.

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 <mobileleclerc.com> be transferred to the Complainant.

Thomas P. Pinansky
Sole Panelist
Date: March 16, 2015

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