WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Association des Centres Distributeurs E. Leclerc - A.C.D. Lec v. Na Shan
Case No. D2017-1640
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 Na Shan of Shenyang, Liaoning, China.
2. The Domain Name and Registrar
The disputed domain name, <eleclerc.club> ("Disputed Domain Name"), is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on August 23, 2017. On August 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 24, 2017, 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 August 29, 2017, the Center transmitted an email in English and Chinese regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on August 30, 2017. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in English and Chinese of the Complaint, and the proceedings commenced on September 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 25, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 26, 2017.
The Center appointed Kar Liang Soh as the sole panelist in this matter on October 2, 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.
Due to exceptional circumstances, the Panel extended the decision due date to November 15, 2017.
4. Factual Background
The Complainant is a French association of hypermarkets and supermarkets. At the time of the Complaint, the Complainant operated 652 hypermarkets/supermarkets in France and another 123 in other parts of Europe. In 2016, the Complainant's turnover was 43.4 billion Euros. The Complainant employed about 110,000 people in France.
The Complainant owns European Union trademark registration no 002700664 for the trademark E LECLERC which was derived from the name of its founder, Mr. Edouard LECLERC. The trademark was registered on January 31, 2005 and has been used for many years in connection with hypermarkets and supermarkets. The trademark E LECLERC has been recognized by a prior UDRP decisions as having considerable reputation in France and other European countries (Association of E. Leclerc Distributor Centers against Christian Belisle, WIPO Case No. D2017-0657).
Very little information about the Respondent is available beyond the WhoIs information associated with the Disputed Domain Name. The Respondent appears to be an individual based in Shenyang, Liaoning, China.
Prior to the Respondent coming onto the scene, the Disputed Domain Name was registered to a third party. It was the subject of a Uniform Rapid Suspension System (URS) complaint filed by the Complainant on December 1, 2016 which concluded in the Complainant's favour. The Disputed Domain Name was suspended in accordance with the URS process until March 30, 2017. The Disputed Domain Name became available for registration thereafter and became registered in association with the Respondent on or after June 27, 2017. Around that time, the Disputed Domain Name also resolved to a parking webpage which contained links to the Complainant's official website at "www.e-leclerc.com".
On July 10, 2017, the Complainant issued a cease-and-desist letter to the Respondent requiring inter alia the parking webpage to be taken down and the Disputed Domain Name removed or transferred to the Complainant for free. Correspondence was exchanged between the Complainant and the Respondent during which the Respondent claimed that the parking webpage was created in error. The Respondent also indicated a willingness to transfer the Disputed Domain Name subject to compensation of USD 500 which the Complainant refused. By around August 22, 2017, the Disputed Domain Name no longer resolved to a webpage.
5. Parties' Contentions
The Complainant contends that:
a) The Disputed Domain Name is identical or confusingly similar to the E LECLERC Mark. It incorporates the trademark E LECLERC which is highly distinctive and refers to the name of the Complainant's founder. The words "E LECLERC" has no meaning in French or English. The addition of the generic Top-Level Domain (gTLD) ".club" does not help in avoiding the risk of confusion, but reinforces the risk of confusion as a perceived loyalty program of the Complainant for privileged customers;
b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The name of the Respondent is not composed of the names E LECLERC or LECLERC. The Respondent is neither commonly known by these names nor uses them as business names. The Complainant has not authorized the Respondent to use these names. There is no business relationship or link of any nature between the parties. The Disputed Domain Name is neither used in connection with a bona fide offering of goods/services nor constitute a legitimate noncommercial or fair use; and
c) The Disputed Domain Name was registered and is being used in bad faith. The trademark E LECLERC is well-known in France and other European countries. The registration of the Disputed Domain Name cannot be coincidence. The Respondent registered the Disputed Domain Name with the intention to attract, for commercial gain, Internet users to the website associated with the Disputed Domain Name by creating in their mind a confusion with the Complainant's brands and activities. The Respondent tried to sell the Disputed Domain Name for valuable consideration in excess of his out-of-pocket costs. The resolution of the Disputed Domain Name to a parking webpage was in order to take unfair advantage of the well-known character of the Complainant's trademark by diverting consumers from the Complainant's website. Before the Complainant's cease-and-desist letter, the Respondent was taking advantage of the Complainant's E LECLERC Mark by diverting consumers looking for the Complainant's goods and services to the website resolved from the Disputed Domain Name by creating a likelihood of confusion. After the cease-and-desist letter, the inactiveness of the Disputed Domain Name cannot be considered a legitimate noncommercial or fair use.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1. Language of Proceeding
The Registration Agreement was in Chinese. The Complainant has requested instead that English should be the language of the proceeding. Having considered the reasons provided and the circumstances of the case, the Panel hereby adopts English as the language of the proceeding. In making this decision, the Panel has taken into account the following factors:
(a) The Complainant is French and has no knowledge of Chinese;
(b) The Complaint has already been submitted in English;
(c) The Respondent having been notified of the Complaint in both English and Chinese did not file a Response;
(d) The Respondent did not object to the Complainant's request for the language of the proceeding to be English;
(e) No benefit to the efficacy of the proceeding may be achieved by requiring the language of the proceeding to be Chinese; and
(f) There will likely be unnecessary delay to the proceeding if the Panel insists on Chinese being adopted as the language of the proceeding.
To succeed in this proceeding, the Complainant must establish the following limbs of paragraph 4(a) of the Policy:
(a) The Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights;
(b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(c) The Disputed Domain Name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
In view of the trademark registration for the E LECLERC Mark, the Complainant has shown that it has rights in the same. It is the consensus practice of past UDRP panels that gTLDs, in this case ".club", should typically be disregarded when comparing domain names with trademarks. There is no reason to depart from this practice in the present case. As the space character is an invalid character for domain name registration, the Panel is satisfied that the Disputed Domain Name incorporates the trademark E LECLERC in its entirety. Accordingly, the Panel finds the Disputed Domain Name to be identical or confusingly similar to the trademark E LECLERC and holds that the first limb of paragraph 4(a) of the Policy is established.
B. Rights or Legitimate Interests
There is nothing in the evidence to suggest that the Respondent is known by any name other than "Na Shan". The Complainant has denied any relationship with the Respondent and asserted that the Respondent is not authorized to use the trademark E LECLERC that the Respondent. There is also no evidence of any legitimate noncommercial use of the Disputed Domain Name. A parking webpage can hardly be taken down to be a legitimate noncommercial use. Moreover, as soon as the Respondent received the Complainant's cease-and-desist letter, the Respondent took down the webpage claiming it to be a mistake. The Panel finds that the Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. Since this has not been rebutted by any Response, the Panel holds that the second limb of paragraph 4(a) of the Policy is also established.
C. Registered and Used in Bad Faith
The evidence shows that the Respondent was clearly aware of the Complainant and the trademark E LECLERC. The deliberate linking of the parking webpage to the Complainant's official website shows that such awareness cannot be coincidental. Such a circumstance points directly towards the situation of bad faith registration and use described in paragraph 4(b)(iv) of the Policy, namely:
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location"
The Respondent's use of the Disputed Domain Name in the resolved website would likely attract users by creating a likelihood of confusion with the trademark E LECLERC as to the source, sponsorship, affiliation, or endorsement of that website. The Complainant's categorical assertion that the Respondent intentionally attempted to attract Internet users to the website for commercial gain was met with silence by the Respondent. The Respondent was given at least two opportunities to vindicate himself, firstly when he received the Complainant's cease-and-desist letter, and secondly when he received the Complaint. It is curious that not only did the Respondent not make any attempt to deny the allegations or explain himself, he simply admitted his mistake for setting up the parking webpage. The circumstances are such that the Panel may only infer that the Respondent is unable to deny the Complainant's assertions.
In view of the above, the holds that the third limb of paragraph 4(a) of the Policy is also made out.
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 <eleclerc.club> be transferred to the Complainant.
Kar Liang Soh
Date: November 15, 2017