WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Association des Centres Distributeurs E. Leclerc - ACD Lec v. Above.com, Domain Privacy / domain admin, dcw group investments
Case No. D2016-0125
1. The Parties
The Complainant is Association des Centres Distributeurs E. Leclerc - ACD Lec of Ivry-sur-Seine of France, represented by Inlex Conseil, France.
The Respondent is Above.com, Domain Privacy of Beaumaris, Australia / domain admin, dcw group investments of Walnut, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <lerclerc.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 January 20, 2016. On January 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 21, 2016, 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 January 25, 2016 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 January 27, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 18, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 19, 2016.
The Center appointed David Stone as the sole panelist in this matter on March 1, 2016. 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 Association des Centres Distributeurs E. Leclerc (ADC Lec). The Complainant owns several French, Community and International trademarks for LECLERC. The Complainant owns, in particular: Community Trademark registration number 002700656, filed on May 17, 2002 and registered on February 26, 2004; French Trademark registration number 1307790, filed on May 2, 1985; and International Trademark registration number 511972, registered on January 27, 1987, all for LECLERC.
The Complainant uses its LECLERC trademarks in connection with a chain of supermarket and hypermarket stores.
The Respondent registered the disputed domain <lerclerc.com> on August 11, 2015. The associated website “ww25.lerclerc.com” lists several hyperlinks related to supermarket distribution and the mass retailing field.
5. Parties’ Contentions
The Complainant submits that the disputed domain name <lerclerc.com> is highly similar to the Complainant’s trademarks LECLERC differing only in the addition of an “r” in the third position. This addition is not sufficient, it says, to overcome the visual and phonetic similarities between the disputed domain name and the Complainant’s trademarks so as to avoid confusion. The term “Leclerc” is a family name and has no meaning in the French or English language and is therefore highly distinctive.
The Complainant submits that the Respondent lacks rights or legitimate interests in the disputed domain name. The name of the Respondent is not composed of the disputed domain name nor is the Respondent commonly known under that name. To the best of the knowledge of the Complainant, the Respondent does not use the disputed domain name as a business name and has no rights, including trademark rights, in the sign LERCLERC.
The Complainant further submits that the LECLERC supermarket and hypermarket network is well known in France and in several other countries of the European Union. The word “Leclerc” is associated by French consumers with the brand name LECLERC, and enjoys a reputation in several other European countries where the Complainant runs its business. It is implausible, it says, that the Respondent was unaware of the activities of the Complainant and of the existence of the trademark LECLERC. The word “Leclerc” is a surname and there is no reasonable explanation for choosing this name when the disputed domain name incorporates the term LECLERC in a nearly identical way. There is no legitimate use of the disputed domain name and it could deceive Internet users into believing that the sites to which it resolves are the Complainant’s sites.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
A. Identical or Confusingly Similar
The Complainant has shown that it owns multiple registered trademarks for LECLERC, including French, European and International trademarks. It is also noted that these trademarks pre-date the Respondent’s registration of the disputed domain name.
The disputed domain name <lerclerc.com> contains only an additional “r”. The Panel notes that the letter and the placement of the letter are such that it is likely to be a common typographical error. In any event, the additional “r” is not sufficient to make the disputed domain name distinct from the Complainant’s registered trademarks. LECLERC and LERCLERC are clearly confusingly similar.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the criteria which determine whether a domain name proprietor has rights or legitimate interests in a domain name, namely if it has a:
(i) prior bona fide offering of goods or services;
(ii) common association with the disputed domain name; or
(iii) legitimate noncommercial use.
The Respondent does not appear to run any business activity in connection with the disputed domain name. Rather, the associated website “ww25.lerclerc.com” lists sponsored hyperlinks and offers the disputed domain name for sale. It can be seen that the disputed domain name is not used by the Respondent in connection with a genuine offering of goods or services. There does not appear to be any connection between the disputed domain name and the name or business of the Respondent, nor does the Respondent have any relationship with the Complainant.
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not replied to the Complaint and thus has not presented any evidence or elements to justify any rights or legitimate interest in connection with the disputed domain name.
There is no indication that any of the circumstances described in paragraph 4(c)(i) – (iii) of the Policy could apply to the present matter. Therefore, the Panel finds that the Respondent has no right or legitimate interest in respect of the disputed domain name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the non-exhaustive criteria for bad faith. Bad faith constitutes the intention to register and use a domain name in order to:
(i) sell, rent, or transfer the disputed domain name to the trademark owner (or a competitor thereof) for a profit;
(ii) prevent the trademark owner from registering its trademark in a domain name;
(iii) disrupt the business of a competitor; or
(iv) divert Internet traffic for commercial gain.
The disputed domain name resolves to a parking webpage with sponsored hyperlinks, including those related to the supermarket distribution or mass retailing field. The Panel accepts the Complainant’s submission that the use of the disputed domain name by the Respondent disrupts the Complainant’s business and causes harm to the Complainant’s brand image. It also accepts that the Respondent is exploiting the reputation of the Complainant’s trademark in order to attract Internet users to a website not related to the Complainant.
The present case is a typical example of typo-squatting by use of an incorrect spelling of the trademark LECLERC. The practice of typo-squatting in itself is evidence of bad faith registration and use of a domain name (Associazione Radio Maria v. Ho Nim, WIPO Case No. D2010-0607 and Humana Inc. v. Cayman Trademark Trust, WIPO Case No. D2006-0073).
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
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, <lerclerc.com> be transferred to the Complainant.
Date: March 14, 2016