WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Association des Centres Distributeurs E.Leclerc - A.C.D Lec v. Ho Nim / Above.com Domain Privacy

Case No. D2011-0070

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 Respondents are Ho Nim of Shanghai, the People's Republic of China; Above.com Domain Privacy of Beaumaris, Australia (hereinafter “the Respondent”).

2. The Domain Name and Registrar

The disputed domain name <www-leclerc.com> is registered with Above.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2011. On January 13, 2011, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On January 14, 2011, Above.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent Ho Nim is listed as the registrant and providing the contact details. On January 21, 2011 the Center contacted the Registrar regarding the change of name of the registrant to Above.com Domain Privacy, and on January 24, 2011 the Registrar confirmed that the details provided in their registrar verification of January 14, 2011 remained current.

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 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 17, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 18, 2011.

The Center appointed Harini Narayanswamy as the sole panelist in this matter on February 28, 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

The Complainant is a French entity that runs a supermarket chain under the name “Association des Centres Distributeurs E.Leclerc.” The Complainant uses the trademark LECLERC for its business and owns the registered community trademark No. 2700656 for its trademark LECLERC that was filed on May 2002.

The Respondent registered the disputed domain name <www-leclerc.com> on December 10, 2009.

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain name on the grounds that the disputed domain name is identical or confusingly similar to its trademark LECLERC. The Complainant states it owns several French, Community and International trademarks with the term “Leclerc” and some of these marks are registered since 1967. The Complainant contends that the trademark is being currently used and it has acquired undisputed status. The “www“ prefix with the trademark in the disputed domain name does not reduce confusion with its trademark as “www” stand for “world wide web” which is common for any URL.

The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name, as the Respondent is not commonly known by the domain name or has a company or entity with that name or uses it for fair use purposes. The Respondent has not been authorized by the Complainant to use the LECLERC mark and the website “www.www-leclerc.com” is used as a parking website.

The Complainant argues that the disputed domain name was registered and is being used in bad faith, as Respondent ought to have searched for any potential infringement prior to registration. The Complainant states that it opened its first store in Landerneau, Brittany and presently has over five hundred supermarkets in France, consequently its trademark LECLERC is well known in several European countries. The Complainant states that attempts to contact the Respondent by registered mail on June 14, 2010 and on October 6, 2010, through the Registrar were unsuccessful. Further, the website content has no relationship with the typically French name “Leclerc”. The sole purpose of the Respondent registering the disputed domain name was to benefit from the fame of the Complainant’s trademark and cause Internet users confusion, as users may associate the disputed domain name with the Complainant.

B. Respondent

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

6. Discussion and Findings

To obtain the remedy of transfer of the disputed domain name, the Policy states that the Complainant has to establish three elements under paragraph 4(a).

(i) The disputed domain name is identical or confusingly similar to a 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 was registered and is being used in bad faith by the Respondent.

A. Identical or Confusingly Similar

The first element under paragraph 4(a) of the Policy requires the Complainant to prove that the disputed domain name is identical or confusingly similar to a mark in which it has rights.

The Complainant has established its rights in the LECLERC trademark by submitting documents of its trademark registration in several classes and its use for an extended period. The disputed domain name consists of the trademark LECLERC with the prefix “www-”. Several UDRP decisions have recognized that a domain name that consists of a trademark along with the prefix “www” is confusingly similar to the trademark. See for instance Allianz SE v.Venkateshwara Distributor Private Limited/Privacy Prote.,org, WIPO Case No. D2010-0951, where the domain name <wwwallianz.com> was found confusingly similar to the ALLIANZ trademark.

The addition of a hyphen with the prefix “www” is insignificant and does little to avoid confusing similarity with the trademark. See Suncor Energy Inc. v. Kean Lee Lim, WIPO Case No. D2010-0320. (<www-petro-canada.com> and <www-petro-points.com>) where adding a hyphen after “www” did not affect the finding of confusing similarity with the trademark. In the present case, the Panel finds that the disputed domain name <www-leclerc.com> is confusingly similar to the Complainant’s trademark LECLERC despite the addition of the prefix “www“ and the hyphen, as the trademark is the core term of the disputed domain name.

For the above reasons discussed the Panel finds the Complainant has satisfied the first requirement under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie finding that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name, as the Respondent has not been given any authorization to use its trademark. Under paragraph 4(c) of the Policy the Respondent can demonstrate its rights or legitimate interests in the disputed domain name if the Respondent can establish that:

(i) The Respondent has used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services;

(ii) The Respondent has been commonly known by the disputed domain name;

(iii) The Respondent is making legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or tarnish the trademark of the Complainant.

The Policy provides that paragraph 4(c) of the Policy is not an exhaustive listing. A respondent can therefore establish rights by showing any aspect mentioned in paragraph 4(c) of the Policy or put forward submissions other than those mentioned in paragraph 4(c) of the Policy to establish rights in the domain name. The Respondent in the present case has not responded in these proceedings and has not provided any material to show any rights or legitimate interests in the disputed domain name.

The web pages linked to the disputed domain name show that the website functions as a link farm. A link farm website has little or no original content but consists of only sponsored hyperlinks to various other websites. Registration of domain names containing trademarks that are used for link farm websites to redirect traffic for the respondent’s commercial gain through sponsored links is not recognized as a bona fide activity under paragraph 4(c) of the Policy. See for instance F. Hoffmann-La Roche AG v. Transure Enterprise Ltd,. WIPO Case No. D2008-0422 where it was found that the domain name <wwwroche.com> was being used to direct traffic to a website where the respondent likely obtained commercial gain through sponsored links. Such activity was not considered bona fide activity under paragraph 4(c) of the Policy as efforts to misleadingly divert customers with the intent of commercial gain is not considered bona fide use of the domain name under paragraph 4(c)(i) of the Policy. See Société Nationale des Chemins de Fer Français (SNCF) v. Comdot Internet Services Private Limited. / Privacy Protect.org, WIPO Case No. D2008-0025 (<wwwsncf.com>).

The Panel finds the facts and circumstances in the present case shows that the Respondent has not used the disputed domain name for a bona fide offering of goods or services or that the Respondent has not been commonly known by the disputed domain name or makes any legitimate noncommercial fair use of the website linked to the disputed domain name. In the absence of any submissions from the Respondent, the Panel finds from the material on record that the Respondent lacks rights or legitimate interests in the disputed domain name.

In the Panel’s view, the use of the Complainant’s mark in the disputed domain name is likely to mislead the public and Internet users that the disputed domain name refers to the Complainant. This is because the Respondent is not connected with the Complainant or its business but uses the Complainant’s trademark in the disputed domain name in a manner that is likely to mislead unsuspecting Internet users. A domain name that gives a false impression to Internet users and misleads Internet users does not confer legitimate rights. This view has been upheld in several prior UDRP decisions, see for instance, Pfizer Inc. v. Alex Schreiner/ Schreiner & Co., WIPO Case No. D2004-0731.

For the reasons discussed the Panel is satisfied that the Complainant has made a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name as required under the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The third element under paragraph 4(a) of the Policy requires the Complainant to prove that the disputed domain name has been registered and is being used in bad faith.

The Complainant has argued that the Respondent has registered the disputed domain name for the fame associated with its mark. Given the prior use of the trademark by the Complainant, it is the Panel’s view that the use of the Complainant’s trademark in the disputed domain name gives rise to the inference that the Respondent ought to have registered the disputed domain name for its trademark value. Further the use of sponsored links by the Respondent are apparently for purposes of generating Internet traffic and for deriving some form of commercial gain by using the Complainant’s trademark in the disputed domain name.

The Panel finds the Respondent has intentionally tried to take advantage of the reputation associated with the Complainant’s mark and has registered the disputed domain name for the purpose of attracting Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, and affiliation of the website which is recognized as bad faith registration and use under paragraph 4(b)(iv) of the Policy. See AXA, S.A. v. PrivacyProtect.org / Koddos, Ronald Linco, WIPO Case No. D2010-0270.

Adding “www” to the trademark is recognized as a form of typo-squatting that is characterized as bad faith registration and use under the Policy. The use of the prefix “www” with the trademark is itself is a strong indication of bad faith that shows the Respondent intended to take unfair advantage of a common typing error on the part of Internet users. See Compagnie Gervais Danone, Bonafont S.A. de C.V v. Privacy Protec.org, WIPO Case No. D2009-1659 and Schering-Plough Corporation, Schering Corporation,

Schering Plough Ltd. v. Stementali Quemistas, WIPO Case No. D2009-0841. (Domain names that begin with “www” followed by the name of the website are calculated to divert Internet traffic and confuse end uses seeking to find the website the complainant.)

The Panel also notes that the registrant of the disputed domain name was changed subsequent to the registrar verification. The change of registrant could not have been done without the Registrar’s assistance. Further the Registrar has not provided any satisfactory reply to the Center’s queries about such changes to the disputed domain name, which was supposed to be in a locked status. Changes to the domain name registration in this manner would appear to be in this Panel’s view in contravention to the Policy. It also gives rise to suspicion about the Registrar’s motives in facilitating changes being made to the disputed domain name registration.

Based on the circumstances in the present case, where the Respondent has added the “www” prefix in the disputed domain name, which is recognized as a classic form of typo-squatting, the Respondent’s use of the website connected to the disputed domain name as a link farm, and the changes to the domain name registration after the Registrar verification, in the Panel’s view demonstrate bad faith registration and use of the disputed domain name by the Respondent.

The Panel finds the Complainant has successfully established that the disputed domain name was registered and is being used in bad faith.

7. Decision

For all 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 <www-leclerc.com> be transferred to the Complainant.

Harini Narayanswamy
Sole Panelist
Dated: March 14, 2011