WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Association des Centres Distributeurs E. Leclerc - A.C.D Lec v. Oneandone Private Registration,1&1 Internet Inc. - www.1and1.com / Sharon Ulrich
Case No. D2014-2171
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 Oneandone Private Registration,1&1 Internet Inc. - www.1and1.com of Chesterbrook, Pennsylvania, United States of America (“United States”) / Sharon Ulrich of Minneapolis, Minnesota, United States.
2. The Domain Names and Registrar
The disputed domain names <fr-leclerc.com> and <fr-leclerc.net> are registered with 1&1 Internet AG (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2014. On December 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 16, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 17, 2014, 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 18, 2014.
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 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 11, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 12, 2015.
The Center appointed Charles Gielen as the sole panelist in this matter on January 21, 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 owns several French, Community and International trademarks registered since 1967, composed of the term “Leclerc”.
The Complainant notably owns:
Community Trademark registration nr. 002700656, registered on July 21, 2003; French Trademark registration nr. 307790, registered on May 2nd, 1985; and International Trademark registration nr. 511972, registered on January 27th, 1987.
The disputed domain names <fr-leclerc.com> and <fr-leclerc.net> were created on June 29, 2014.
5. Parties’ Contentions
The Complainant contends that it is a French association, known under the name “E. Leclerc”. The name “Leclerc” is the family name of the founder and promoter of the association, Mr. Edouard Leclerc.
The Complainant widely uses its LECLERC trademarks in connection with a chain of super- and hypermarket stores. The Complainant’s chain of stores and the LECLERC trademark are well-known in France and in several other European countries. The founder and promoter of the association, Mr. Edouard LECLERC, enjoys a great reputation in France.
Fifty years after the opening of the first store in France, Leclerc has become the first European organization of independent storekeepers. The hypermarkets I supermarkets Leclerc enjoy also a reputation in several other countries of the European Union where the Complainant runs its business, such as Italy, Spain, Portugal, Poland, Andorra and Slovenia.
There are 642 hypermarkets and supermarkets operated under the name “Leclerc” in France and 123 hypermarkets orsupermarkets operated under that name in the rest of Europe.
With 18% of market shares on all products, the Complainant is the leader of distribution in France. In 2013, the turnover of the Complainant was EUR 45.6 billion. 101,000 people are employed by the Complainant in France.
The disputed domain names resolve to the websites “www.fr-leclerc.net” and “www.fr-leclerc.com” which display identical content, namely the message “ERROR 522- connection timed out”.
The Complainant contends that the disputed domain names are confusingly similar to the Complainant’s trademark LECLERC.
Furthermore the Complainant states that the Respondent for a number of reasons does not have any rights or legitimate interests in the name “Leclerc” that forms the dominant element in the disputed domain names; the Respondent is not known under the name “Leclerc”, the Respondent does not pretend to own any trademark or other rights in that name and the lack of a legitimate interest also follows from that fact that the Respondent did hide its real identity when registering the disputed domain names. Finally the Complainant states that the respondent registered and uses the disputed domain names in bad faith. The basis for the claim that the registrations were made in bad faith first of all is that the trademark LECLERC is well known, furthermore that it is implausible that the Respondent was unaware of the activities of the Complainant and of the existence of the trademark LECLERC and finally that the registrations were made anonymously. The Complainant contends that the disputed domain names were not only registered in bad faith but are also being used in bad faith, because the Complainant tried to get in contact with the Respondent without any reply being given, because there is no real and substantial offering of products on the websites associated with the disputed domain names and finally because the disputed domain names could deceive Internet users into believing that the websites to which they resolve are of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
First of all the Panel notes that it has before it a Complaint against Oneandone Private Registration,1&1 Internet Inc. - www.1and1.com and an amended Complaint against Sharon Ulrich. The amended Complaint was filed as a result of the Registrar check by the Center of the data concerning the registration of the disputed domain names. It appeared that the original registrant, Oneandone Private Registration,1&1 Internet Inc. - www.1and1.com, was used by the real customer of the Registrar, who made use of the so-called Private Domain Registration feature, known under the name 1&1 Internet, Inc., with the object of hiding its real identity. The Registrar, upon verification of the registration details by the Center, put the registrations in the name of the real owner, Sharon Ulirich, who is now to be considered as the Respondent following the filing of the amended Complaint by the Complainant. For practical purposes the Panel will keep the first registrant as a party to these proceedings.
The Panel is of the opinion that the Complainant’s contentions are justified and that the disputed domain names should be transferred to the Complainant. The Panel gives the following reasons for its decision.
A. Identical or Confusingly Similar
The Complainant proves that it has rights in the trademark LECLERC based on different trademark registrations. This trademark is a strong and very distinctive mark; it certainly is not a common term. The disputed domain names contain this trademark as the most dominant part, since the prefix “fr” followed by a hyphen is a descriptive element indicating the country France. The use of this prefix enhances the likelihood of confusion, since the Complainant is a company well-known in France under the name “Leclerc”. In making the comparison between the trademark and the disputed domain names the generic Top-Level Domain (“gTLD”) suffixes “.com” and “.net” are usually disregarded. The Panel is of the opinion that applying these principles to this case, the disputed domain names should be considered confusingly similar to the trademarks.
Therefore, the requirement under paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
The Panel is of the opinion that the Complainant made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The first reason is that the distinctive name “Leclerc” is not a name one would choose as a domain name without having specific rights to such a name. The Panel has not been given evidence of any such (Respondent) rights, so it must be held that such rights do not exist. The name “Leclerc” certainly is not a descriptive term serving to indicate specific characteristics of any goods or services. Furthermore the Panel notes that the Respondent has not been granted any rights to use the name “Leclerc” as part of the disputed domain names. The fact presented by the Complainant as an indication of lack of rights or legitimate interests, namely that the Respondent tried to hide its real identity by using a so called private registration service, is not decisive. Although in a number of cases such private registration services will be used by bad faith registrants, it does not necessarily mean that the person using a private registration service will lack any rights or legitimate interests in all cases.
In view of the aforementioned, the Panel is of the opinion that the requirement of paragraph 4(a)(ii) of the Policy is met.
C. Registered and Used in Bad Faith
The Panel is of the opinion that the disputed domain names were registered and are being used in bad faith. The Panel recalls first of all that the trademark LECLERC and the name “Leclerc” are well-known in France and in some other European jurisdictions and that it has a strong distinctive character. The trademark was used and registered before the disputed domain names were registered. It must be held that the Respondent knew of the existence of the trademark at the time of its registration, which is reflected by the fact that it uses the prefix “fr” in the disputed domain names indicating that the registrations were in first instance aimed at French customers. So, the Panel is of the opinion that the registrations by the Respondent were made in bad faith. Also the use of the disputed domain names is bad faith use, not only since the attempts of the Complainant to be in touch with the Respondent failed because the Respondent did not reply to these attempts, but also because the websites associated with the disputed domain names do not show any (legitimate) offering of goods or services and do not present any other serious activity. Finally, the use of the disputed domain names could result in consumers being deceived or confused as to the origin of the websites associated with the disputed domain names.
The Panel therefore considers the requirement of paragraph 4(a)(iii) to be met.
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 <fr-leclerc.com> and <fr-leclerc.net> be transferred to the Complainant.
Date: January 23, 2015