WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Association des Centres Distributeurs E. Leclerc - ACD Lec v. zaiyige
Case No. D2016-1324
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 zaiyige of Taiyuan, Shanxi, China.
2. The Domain Name and Registrar
The disputed domain name <sporteleclerc.com> is registered with eName Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2016. On June 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 30, 2016, 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 July 4, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 and 4, the Center formally notified the Respondent of the Complaint, in both Chinese and English, and the proceedings commenced on July 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 2, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2016.
The Center appointed Francine Tan as the sole panelist in this matter on August 11, 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 a French association wherein the name “E. Leclerc” refers to the initial and family name of the founder and promoter of the association, Mr. Edourd Leclerc.
The Complainant owns European Union Trade Mark Registration No. 002700664 for E LECLERC, filed on May 17, 2002 and registered on January 31, 2005, covering all 45 classes of goods and services of the Nice Classification.
The E LECLERC trade mark is used in connection with a chain of supermarket and hypermarket stores. Since the opening of its first store in France about 60 years ago, the E LECLERC supermarkets and hypermarkets have become widely known in countries such as Italy, Spain, Portugal and Poland. There are 652 E LECLERC hypermarkets/supermarkets in France and another 123 in other locations in Europe. In 2015, the Complaint had an employee count of 110,000 and its turnover was EUR 44.3 billion.
The Complainant, notably, markets a range of sports goods on its retail website “www.sport.leclerc”.
The disputed domain name was registered on April 18, 2016. It resolves to an inactive website.
The representative of the Complainant sent on May 27, 2016 a cease-and-desist letter by email to the Respondent, requesting him to cancel the disputed domain name or to transfer it to the Complainant for free. The Respondent responded to say that the disputed domain name would be used as a “sports site”. Further, the Respondent tried to sell the disputed domain name for USD 1,500 and after the Complainant firmly rejected this offer, the Respondent lowered his price to USD 1,200.
5. Parties’ Contentions
1. The disputed domain name is confusingly similar to the Complainant’s distinctive E LECLERC trade mark. The Complainant’s mark has been reproduced in the disputed domain name, and used in combination with the generic and descriptive term “sport”. The addition of the element “sport” merely serves to inform Internet users of the type of products or services offered by the disputed domain name holder and of its activity, but does not serve to avoid the confusing similarity with the Complainant’s trade mark. The generic Top-Level Domain (“gTLD”) “.com” in the disputed domain name is also of no help in avoiding the risk of confusion.
2. The Respondent has no rights or legitimate interests in the disputed domain name. To the best of the Complainant’s knowledge, the Respondent is not commonly known by the name “Eleclerc” or “Leclerc”, does not make use of a business name including the name “Eleclerc” or “Leclerc”, nor does he have rights (including trade mark rights) in the name “Eleclerc” or “Leclerc”. The Respondent has not been authorized by the Complainant to use the name “Eleclerc” or “Leclerc”, nor is there any business relationship between the Complainant and the Respondent. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The email correspondence mentioned above shows that the disputed domain name was registered for the sole purpose of obtaining “unlawful material benefits” from the Complainant’s reputation in its E LECLERC trade mark. The Respondent, after having his offer to sell the disputed domain name at the price of USD 1,500 rejected by the Complainant, responded by stating:
“Even if you succeed arbitration, we also filed a lawsuit in Chinese courts. We will acquire an interest in this domain. Of course, you have to pay more time and more money. We are very sincere. Our price can be reduced to 1200 US dollars. This is the final price. If you do not agree. We will not reply to any message.”
3. The disputed domain name was registered and is being used in bad faith. The Complainant states that its chain of E LECLERC stores and its E LECLERC trade mark are well known in France and several other European countries. The Complainant enjoys significant reputation in France. It is unlikely that the Respondent was unaware of the Complainant and its activities, and of the Complainant’s E LECLERC trade mark when he registered the disputed domain name, bearing in the mind the reputation and size of the Complainant’s business. E LECLERC has no meaning in French, English and does not exist in Chinese. There is no reasonable explanation that can be offered for the Respondent’s choice of the disputed domain name. The disputed domain name is nearly identical to the Complainant’s official website name which is dedicated to the area of sports – “www.sport.leclerc”. The disputed domain name was registered only two months after the registration of the Complainant’s domain name <sport.leclerc>.
The Respondent’s response to the cease-and-desist letter and subsequent lowering of the price to USD 1,200 show that the disputed domain name was registered for the purpose of taking unfair advantage of the well-established reputation of the Complainant and its LECLERC and E. LECLERC trade marks, and/or of selling it for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name.
It is doubtful that the Respondent was indeed intending to use the disputed domain name as a “sports site”, in light of the content of the Respondent’s emails. It is believed that the Respondent simply wanted to put pressure on the Complainant to purchase the disputed domain name at a high price.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceeding
The Complainant filed the Complaint in English and requested that English be the language of the proceeding notwithstanding that the Registration Agreement is in Chinese. The reasons given are that the Respondent has the ability to communicate in English as shown in the email exchanges between the Complainant and the Respondent. The Complainant, on the other hand, is unable to communicate in Chinese and would have to incur substantial expenses in retaining the services of a translator in order to translate the Complaint and annexes into Chinese.
Paragraph 11(a) of the Rules stipulates that: “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Paragraph 10(c) of the Rules stipulates that “the Panel shall ensure that the administrative proceeding takes place with due expedition”.
It is evident in this case that the Respondent is very comfortable with, and is able to communicate (and even negotiate) in the English language. The Panel refers to the Respondent’s first written response to the Complainant’s cease-and-desist letter which reads:
“Thank you for your email, our first time to notify the Ministry of Justice to assess this matter. After our consideration. We did not infringe your trademark and business. Our website will be on-line. A sports site. Of course, for you mail us very seriously. In order to avoid confusion and misleading you. We decided to stop the construction site domain names. Of course, we can transfer the domain name. The domain price is 1500 dollars. We are very sincere to resolve the dispute. The price is a very low price. You should be very clear. We hope to resolve this matter as soon as possible. Look forward to your letter. Thank.”
The Panel finds in this case that it would be appropriate for English to be the language of the proceeding. The Policy mandates that the proceeding should take place with due expedition. Requiring the Complainant to translate the Complaint and the evidence into Chinese would involve additional time and delay the proceeding. Such a burden placed on the Complainant appears to be unmerited in this instance where the Respondent is clearly able to comprehend and communicate in English.
B. Identical or Confusingly Similar
The Complainant has established that it has registered trade mark rights in E LECLERC. The entire trade mark has been incorporated into the disputed domain name. The Panel finds that the addition of the generic term “sport” does not at all remove the confusing similarity with the Complainant’s trade mark E LECLERC, all the more so in view of the existence of the Complainant’s online sportswear retail website “www.sport.leclerc”.
The Panel therefore finds that the first element of paragraph 4(a) has been satisfied.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out specific circumstances (non-exhaustive) whereby a respondent can demonstrate it has rights or legitimate interests in a domain name in dispute. They are:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has provided prima facie evidence of the non-existence of the above circumstances. The Respondent, on the other hand failed to show or assert that he is commonly known by the name “Eleclerc” or “Leclerc”, has been trading using the name “Eleclerc” or “Leclerc”, or that he has rights in the name “Eleclerc” or “Leclerc”. The Respondent did not dispute the Complainant’s claim that the Respondent must have known of the Complainant and its trade mark. The content of the Respondent’s emails show that he has no genuine intention to make legitimate noncommercial or fair use of the disputed domain name and was only eager to dispose of it for a consideration well above the out-of-pocket costs incurred for its registration. The Respondent has therefore failed to show he has rights or legitimate interests in the disputed domain name.
The Panel therefore finds that the Complainant has established the second element of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
The aim of the Policy is to deal with the abusive registration of domain names in circumstances where the registrant seeks to exploit the trade mark of another and to profit monetarily therefrom. This objective is captured in paragraph 4(b) of the Policy which states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trade mark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The Panel is persuaded by the evidence tendered by the Complainant, namely stemming from (i) the content of the Respondent’s emails, (ii) the combination of the word “sport” with “eleclerc” in the disputed domain name, and the failure of the Respondent to file a response in this proceeding, that the circumstances fall within that described in paragraph 4(b)(i) of the Policy.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) 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, <sporteleclerc.com>, be transferred to the Complainant.
Date: August 27, 2016