WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Association des Centres Distributeurs E. Leclerc - ACD Lec v. Whoisguard Protected, Whoisguard, Inc. / Tomas Gregy

Case No. D2017-0315

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 Whoisguard Protected, Whoisguard, Inc. of Panama, Panama / Tomas Gregy of Dallas, Texas, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <promotionleclerc.com> (the “Disputed 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 February 16, 2017. On February 17, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 19, 2017, 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 February 20, 2017 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 February 22, 2017.

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 February 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 20, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2017.

The Center appointed John Swinson as the sole panelist in this matter on April 3, 2017. 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 - ACD Lec. The Complainant is a well-known operator of supermarkets and hypermarkets in France as well as in several other European Union countries. According to the Complaint, the Complainant has been in operation for over 60 years and there are currently 652 Leclerc stores in France and 123 stores in Europe.

According to the Complaint, “Leclerc” refers to the family name of the founder and promoter of the Complainant – Mr. Edouard Leclerc.

The Complainant owns a number of registered trade marks incorporating LECLERC, including a registered trade mark for LECLERC in the European Union (registration number 002700656) which was registered on February 26, 2004 (the “Trade Mark”). The Complainant also owns the domain name <e-leclerc.com> which was registered on May 28, 1996 and corresponds with the Trade Mark.

The Respondent is Tomas Gregy, an individual of the United States and the registered owner of the Disputed Domain Name. The Respondent did not file a Response, and consequently little information is known about the Respondent.

The Disputed Domain Name was registered on November 23, 2016.

At the time that the Complaint was filed, the website associated with the Disputed Domain Name featured a heading that read “Subscribe To Our Newsletter” and a sub-heading that read “Sign up now to our newsletter and you’ll be one of the first to know our newest offers” with a text field for entering an email address. It appears that there was no other information available on the home page to indicate the nature of the newsletters or the offers provided therein circulated to subscribers.

At the time of this decision, the website at the Disputed Domain Name currently states “You have reached a domain that is pending ICANN verification”.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions.

Identical or Confusingly Similar

Since opening its first store over 60 years ago, the Complainant has continuously used the Trade Mark in connection with a chain of super and hypermarket stores.

The Disputed Domain Name is confusingly similar to the Trade Mark. The Disputed Domain Name incorporates the Trade Mark in its entirety. The addition of the descriptive term “promotion” does not dispel the confusion and in fact adds to the potential confusion as this term is commonly used in loyalty programs and promotional offers provided by the Complainant to its customers. Use of the term “promotion” in connection with the Trade Mark may lead consumers to believe that the Disputed Domain Name is linked, affiliated with or at least endorsed by the Complainant. There are previous UDRP decisions which found that the addition of the term “promotion” does not serve to distinguish the disputed domain name from the relevant trade mark.

The addition of the generic Top level Domain (“gTLD”) “.com” does not assist in dispelling potential confusion.

Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in the Disputed Domain Name for the following reasons:

- The Respondent used a privacy service for concealment purposes.

- The Respondent has not operated a legitimate website at the Disputed Domain Name.

- The Respondent is not commonly known by the Disputed Domain Name or the Trade Mark.

- There is no evidence that the Respondent has used the Disputed Domain Name in connection with a bona fide offering of goods or services.

- The Respondent has not been authorised by the Complainant to use the Trade Mark.

Registered and Used in Bad Faith

The Trade Mark has gained a strong reputation in France and in other countries of the European Union (such as Italy, Spain, Portugal, Poland, Andorra and Slovenia) since the Complainant opened its first store in France over 60 years ago. The Respondent sought to take advantage of the reputation of the Trade Mark by registering the Disputed Domain Name.

It is unlikely and implausible that the Respondent was not aware of the Trade Mark prior to registering the Disputed Domain Name. Use of the Trade Mark in the Disputed Domain Name cannot be a coincidence as “LECLERC” is the famous personal name of the Complainant’s founder and it has no meaning in French or in English as a common word.

The Respondent used a privacy service to register the Disputed Domain Name in order to avoid detection and conceal his identity which indicates bad faith.

The Respondent registered and used the Disputed Domain Name with the intent to mislead consumers into believing that it is associated with the Complainant. The website at the Disputed Domain Name is not legitimate or fair use of the Disputed Domain Name as its content lacks information regarding the nature of the newsletters and the offers provided therein, the goods or services to which the newsletter relates and the website owner or operator. This information is typically provided on legitimate websites that offer newsletter subscription services.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service 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 has been registered and is being used in bad faith.

The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.

A. Procedural issues

The Respondent’s failure to file a Response does not automatically result in a decision in favour of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.

The Panel considers that the Disputed Domain Name is confusingly similar to the Trade Mark. The Trade Mark has been wholly incorporated into the Disputed Domain Name and is combined with the descriptive term “promotion”. The term “promotion” can be easily associated with the loyalty programs and promotional offers which the Complainant provides in relation to its goods and services.

It is also well established that the addition of a descriptive term, such as “promotion”, to a trade mark does not prevent confusing similarity and in these circumstances is immaterial for trade mark distinguishing purposes (see, e.g. Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110 and The Sporting Exchange Limited v. Josh Adams, WIPO Case No. D2008-0343).

In this case, the gTLD “.com” is irrelevant in assessing confusing similarity under the Policy and may be ignored. The Panel finds that the Trade Mark remains the dominant element in the Disputed Domain Name.

The Complainant succeeds on the first element of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

The Panel finds that the Complainant has made out a prima facie case. This finding is based on the following:

- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The website at the Disputed Domain Name (when it was active) appeared to feature newsletter subscription services for promotional offers without any of the information typically provided by such a website such as the nature of the offers, the goods and services to which they pertain, and contact or background details of the website owner or operator. In the circumstances, this is not a bona fide use of the Disputed Domain Name under the Policy.

- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name or the Trade Mark, or has registered or common law trademark rights in relation to the Trade Mark.

- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the Trade Mark. There is no content at the Disputed Domain Name, or other evidence before the Panel, which would suggest such use.

The Respondent had the opportunity to demonstrate his rights or legitimate interests, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.

In light of the above, the Complainant succeeds on the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and used the Disputed Domain Name in bad faith.

The Complainant has been operating for over 60 years. The Complainant has provided evidence of its registered rights in the Trade Mark from at least as early as 2002 and in the domain name <e-leclerc.com>, which incorporates the Trade Mark, since 1996.

The Disputed Domain Name was registered on November 23, 2016. In light of the reputation of the Complainant and the Trade Mark, as well as the Trade Mark not having any apparent dictionary meaning in French or English, not to mention the website content, it is clear that the Respondent had knowledge of the Trade Mark at the time he registered the Disputed Domain Name. Where the reputation of a complainant in a given mark is significant and the mark has strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred (see e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909 and cases cited therein). Here, the Panel can reasonably infer that the Respondent sought to take advantage of the reputation of the Complainant and the Trade Mark and registered the Disputed Domain Name in bad faith.

The Complainant, as an operator of supermarkets and hypermarkets, provides a broad range of goods and services. While the website at the Disputed Domain Name does not refer to particular goods or services in relation to the newsletter, this lack of specificity indicates that it is probable that the Respondent registered and used the Disputed Domain Name in order to attract Internet users to the Disputed Domain Name by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation, or endorsement of the Complainant.

Further, Internet users visiting the Disputed Domain Name were invited to provide their email addresses on the premise that newsletters containing promotional offers would be sent to their email. It appears that the Respondent is using the harvest email addresses for commercial gain, presumably by deriving marketing revenue from the circulated newsletters.

In these circumstances, the registration of the Disputed Domain Name using a privacy service also supports a finding of bad faith (see e.g., The Uder Company Pty Ltd and Stay In Bed Milk & Bread Pty Ltd (trading as Aussie Farmers Direct) v. PrivacyProtect.org, Domain Admin, ID # 10760, WIPO Case No. D2012-0924 and cases cited therein).

In light of the above, and in the absence of a Response and any evidence rebutting bad faith registration and use, the Panel finds that the Complainant has succeeded on the third element of the Policy.

7. Decision

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 <promotionleclerc.com> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: April 10, 2017