WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Association des Centres Distributeurs E. Leclerc - ACD Lec v. Eric Daneil
Case No. D2016-1964
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 Eric Daneil of Paris, France.
2. The Domain Name and Registrar
The disputed domain name <leclerc-drive-fr.info> (the "Domain Name") is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 28, 2016. On September 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 29, 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.
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, and the proceedings commenced on October 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 26, 2016. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on October 28, 2016.
The Center appointed Jane Seager as the sole panelist in this matter on November 21, 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 well-known operator of supermarkets/hypermarkets in France as well as in several other European Union countries. It has been in operation for over 60 years. There are currently 652 LECLERC stores in France and 123 in Europe. The Complainant is the market leader in France, employs 110 000 people, and its turnover was EUR 44.3 billion in 2015.
The Complainant launched the LECLERC DRIVE concept in 2007. This allows customers to purchase items online and then pick them up directly in a store of their choice. There are currently over 600 supermarkets/hypermarkets proposing the LECLERC DRIVE service and in 2015 turnover relating to this was 2.3 billion dollars. Last year over 24 million orders were placed on the website "www.leclercdrive.fr".
The Complainant has supplied evidence that it owns numerous registered trademarks in the term LECLERC and E.LECLERC DRIVE which significantly pre-date the registration of the Domain Name, for example French trademark n°1307790 (LECLERC) and n°3865024 (E.LECLERC DRIVE), registered on May 2, 1985 and March 16, 2012 respectively.
The Domain Name was registered on March 9, 2016 and currently points to the hosting provider's website.
5. Parties' Contentions
Taking each of the requirements under the Policy, the Complainant asserts as follows:
(i) The Domain Name is confusingly similar to the Complainant's trademark
The Complainant states that it owns several French, European and international trademarks either exclusively composed of LECLERC or associated with a generic term such as "drive", "photo" or "telecom" and specifically evidences three LECLERC trademarks, namely:
- French trademark n°1307790 registered on May 2, 1985;
- European Union trademark n°002700656 registered on February 26, 2004; and
- International trademark n°511972 registered on January 27, 1987.
The Complainant also evidences three E.LECLERC DRIVE trademarks, namely:
- French Trademark n°3865024 registered on March 16, 2012;
- French word and device Trademark n°3711622 registered on July 23, 2010; and
- International word and device Trademark n°1052904 registered on July 20, 2010.
The Complainant points out that these trademarks were all filed and registered prior to the Domain Name.
The Complainant argues that the Domain Name is confusingly similar to the Complainant's trademarks for the following four reasons:
- The Domain Name identically reproduces the Complainant's well known trademark LECLERC in combination with the generic and descriptive terms "drive" and "fr". The Complainant emphasizes that LECLERC has no meaning in French or English and is highly distinctive. In the Complainant's opinion, the name LECLERC is all more noticeable within the Domain Name as it is separated from the other elements by a dash. Furthermore, the addition of the word "drive" merely serves to inform Internet users of the type of services potentially offered by the Domain Name holder, and does not differentiate the signs enough to avoid the likelihood of confusion. Indeed, the Complainant argues that the addition of the term "drive", corresponding to the Complainant's online business, enhances the risk of confusion and leads consumers to believe that the Domain Name is linked to, affiliated with, or at least endorsed by the Complainant.
- The Domain Name is very similar to the Complainant's E. LECLERC DRIVE trademark, identically reproducing the terms LECLERC and DRIVE. The Complainant asserts that the addition of the letter "E" in the trademark, corresponding to the first letter of the name of Mr Edouard LECLERC (founder of the Complainant), is clearly insufficient to overcome the similarities between the signs.
- The addition of a country identifier "fr", referring to France, does little other than further reinforce the suggestion of a connection between the Complainant and the website associated with the Domain Name, since the country identifier suggests the location of the Complainant's business (namely France) and the public to which the Domain Name and the associated website is directed.
- Finally, the Complainant argues that the addition of the ".info" extension is of no help in avoiding the risk of confusion.
The Complainant notes that in similar cases, panels have already recognized the confusion between the Complainant's trademarks and the following domain names:
- <leclerc-drive.info>, <leclerc-drive.net> and <leclerc-drive.org> (Association des Centres Distributeurs E. Leclerc - A.C.D Lec v. Tony Fitoussi, WIPO Case No. D2012-1575);
- <sportleclerc.com> (TPI Holdings, Inc. v. Nikhil Jerath, Linxworks Solutions, LLC, WIPO Case No. D2016-1324);
- <mobileleclerc.com> (Association des Centres Distributeurs E. Leclerc - A.C.D Lec v. Noorinet, WIPO Case No. D2015-0024);
- <leclerc-pharma.net> (Association des Centres Distributeurs E. Leclerc - A.C.D Lec v. Orsun, Fabrice Guigonnat, WIPO Case No. D2014-0222);
- <leclerc-parapharmacie-discount.com>, <leclerc-pharmacie-discount.com>, <parapharmacie-leclerc-discount.com> and <pharmacie-leclerc-discount.com> (Association des Centres Distributeurs E. Leclerc - A.C.D Lec v. Marie-Laure Neau/Anne-Charlotte Neau/Guillaume Neau/Philippe Neau, WIPO Case No. D2013-1793);
- <wwwleclercvoyages.com> (Association des Centres Distributeurs E. Leclerc - A.C.D Lec v. Anonyme / Pavol Icik, WIPO Case No. D2013-0977); and
- <leclerc-location.com> (Association des Centres Distributeurs E. Leclerc - A.C.D Lec v. Petit Aurélian, WIPO Case No. D2012-0824).
(ii) The Respondent has no rights or legitimate interests in the Domain Name
The Complainant lists five arguments as to why, to the best of the Complainant's knowledge, the Respondent has no rights or legitimate interests in the Domain Name, as follows:
- The name of the Respondent does not include the word LECLERC and the Respondent is not commonly known by the name LECLERC.
- The Respondent does not make any use of a business name including the name LECLERC.
- The Respondent has no rights, including trademark rights, in the terms LECLERC or LECLERC DRIVE.
- The Respondent has not been authorized by the Complainant to use the name LECLERC or LECLERC DRIVE. In addition, there is no business relationship between the Complainant and the Respondent.
- The Domain Name is neither used in connection with a bona fide offering of goods and services nor constitutes a legitimate noncommercial or fair use. Indeed, the Domain Name is pointing to an automatically generated webpage displaying the message:
"Web server's Default Page. This page is generated by Parallels Plesk, the leading hosting automation software. You see this page because there is no Web site at this address"
(iii) The Domain Name was registered and is being used in bad faith
As far as registration in bad faith is concerned, the Complainant points out that the Complainant's supermarkets/hypermarkets are very well known in France as well as in several other European Union countries, and therefore argues that it is unlikely that the Respondent, resident in France, was unaware of the Complainant's activities and of the existence of its trademarks upon registration of the Domain Name.
The Complainant therefore asserts that the registration of the Domain Name cannot be a coincidence for the following reasons:
- The Domain Name incorporates the name of the founder of the Complainant, LECLERC, as its essential distinguishing feature.
- LECLERC has no meaning in French or English. It is not a dictionary or common word. In the Complainant's opinion, there is thus no reasonable explanation for choosing the Domain Name.
- The Domain Name is almost identical to the Complainant's official website dedicated to the drive concept and found at "www.leclercdrive.fr".
- The addition of the ".info" extension might suggest to the Complainant's customers that the corresponding website provides information about its LECLERC DRIVE concept.
- The Respondent resides in France and thus could not be unaware of the business of the Complainant under the names LECLERC and LECLERC DRIVE.
In the Complainant's opinion there is no room for doubt that at the time of the registration the Respondent was well aware of the existence of the business and rights of the Complainant. The Complainant therefore argues that it is obvious that the Domain Name was registered in bad faith and primarily for the purpose of taking unfair advantage of the Complainant's well-established name and trademarks.
Turning to bad faith use, the Complainant argues as follows:
- There is no real and substantial offer of goods and/or services on the website associated with the Domain Name as it is pointing to the hosting provider's website. In the Complainant's opinion this case is a classic passive holding case, as outlined in the decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
- Given that the Domain Name is confusingly similar to the Complainant's name and trademarks, the Complainant argues that it could deceive Internet users into believing that the site to which it resolves is the Complainant's website. The Complainant points out that this risk is increased by the fact that the Complainant's official website relating to the drive concept, "www.leclercdrive.fr", is almost identical to the Domain Name. As a result, the Complainant's customers may incorrectly believe that the Complainant's website is not functioning, and this perception will obviously be very harmful for the activities and image of the Complainant.
- The Complainant has attempted to enter into contact with the Respondent. On April 28, 2016, the representative of the Complainant sent a cease and desist letter to the address indicated in the WhoIs database asking the Respondent to cancel the Domain Name. However, there was no response, despite a subsequent reminder.
For the above reasons, the Complainant concludes that the Domain Name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainant must prove each of the following three elements:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The standard of proof is on the balance of probabilities (Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434).
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality and weight of the evidence.
In addition, paragraph 14(b) of the Rules further provides that if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
The Panel notes that the Respondent has failed to respond to the Complaint. The Respondent's failure to respond, however, does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules, see paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
Taking the aforementioned provisions into consideration, the Panel finds as follows:
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Panel to first consider whether the Complainant has established relevant trademark rights. The Complainant has provided evidence of a number of registered trademarks in the terms LECLERC and E.LECLERC DRIVE, for example French trademark n°1307790 (LECLERC) and n°3865024 (E.LECLERC DRIVE), registered on May 2, 1985 and March 16, 2012 respectively.
As mentioned above, the Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Name is identical or confusingly similar to the Complainant's trademark. In this regard, the Panel notes that the Domain Name incorporates the Complainant's distinctive LECLERC trademark in its entirety, as well as the Complainant's distinctive E.LECLERC DRIVE trademark (apart from the letter "E"). In addition it contains the term "fr", which presumably refers to France, the country where both the Complainant and the Respondent are based. The Panel agrees with the Complainant that these variations are insufficient to avoid confusion with the Complainant's trademark. Indeed the Panel finds that they only serve to increase such confusing similarity, given that the term "drive" is used by the Complainant to describe its online services and "fr" denotes France, a country which is closely associated with the Complainant.
Furthermore, it is widely accepted that the ".info" generic Top-Level Domain ("gTLD") is generally irrelevant for the purpose of assessing identity or confusing similarity between a trademark and a domain name.
The Panel therefore finds that the Domain Name is confusingly similar to the Complainant's trademark. Accordingly, the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including:
(i) before any notice to the respondent of the dispute, the respondent's 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Based on the statements and evidence put forward by the Complainant, the Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the Domain Name and that, as a result of his default, the Respondent has failed to rebut such a showing.
The Respondent cannot be considered to be making a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy referred to above, given that the Domain Name is pointing to the hosting provider's website. Neither can such use be said to be a legitimate noncommercial or fair use of the Domain Name within the meaning of paragraph 4(c)(iii). Furthermore, the Complainant has stated that it has not authorized the Respondent to make any use of its trademark and it is highly unlikely that the Respondent would be "commonly known" by the Domain Name, as referred to at paragraph 4(c)(ii), given the notoriety surrounding the Complainant's trademark.
The Panel is also of the view that the Respondent's failure to submit a Response is, in the circumstances of this case, also evidence of the Respondent's lack of rights or legitimate interests in the Domain Name. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493 ("non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one's own rights").
The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name. As such, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, including:
(i) circumstances indicating that the respondent has registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trademark or service mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's 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 the respondent's website or location.
Although none of the factors listed in paragraph 4(b) perfectly describe the circumstances of this case, there are other factors in this case not listed in paragraph 4(b) of the Policy that strongly indicate bad faith.
The evidence put forward by the Complainant amply demonstrates the Complainant's notoriety and the extensive use of its trademarks in France and the European Union, all of which significantly pre-date the registration of the Domain Name. The Panel therefore finds, on the balance of probabilities, that the Respondent was aware of the Complainant's rights at the time of registration of the Domain Name, and thus registered it in bad faith seeking to profit from the Complainant's rights.
As far as the use of the Domain Name is concerned, it has long been established that passive holding of a domain name does not prevent a finding of bad faith. Under the circumstances, including the Complainant's notoriety, the nature of the Domain Name itself (reflecting not only the Complainant's distinctive trademarks, but also generic terms directly relating to the Complainant's business), the false WhoIs details (Paris is not in "Adrenne" as stated) and the lack of response of the Respondent, both to the Complainant's cease and desist letters and to the Complaint, the Panel here finds sufficient indicia of bad faith to satisfy the Policy. Indeed, the Panel finds that it is simply not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate, as it would inevitably result in misleading diversion and taking unfair advantage of the Complainant's rights.
The Panel therefore finds that the Domain Name has been registered and is being used in bad faith and that paragraph 4(a)(iii) of the Policy is satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <leclerc-drive-fr.info> be transferred to the Complainant.
Date: December 1, 2016