WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Association des Centres Distributeurs E. Leclerc - A.C.D Lec v. Jiang Li
Case No. D2017-2186
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 Jiang Li of Chengdu, Sichuan, China.
2. The Domain Name and Registrar
The disputed domain name <leclerk.org> (the “Domain Name”) is registered with Bizcn.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2017. On November 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 8, 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 November 15, 2017, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On November 16, 2017, 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 November 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2017.
The Center appointed Karen Fong as the sole panelist in this matter on December 28, 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 a French Association ACD Lec (Association Des Centres Distributions E. Leclerc). “Leclerc” refers to the family name of the founder and promoter of the association – Mr. Edouard Leclerc. It is a European organisation of independent storekeepers. The Complainant has been using the trade mark LECLERC in France for over 60 years in connection with a chain super and hypermarket stores. There are 652 LECLERC hypermarkets/supermarkets in France and 123 elsewhere in Europe. The Complainant employs 123,000 people and its turnover in 2016 was EUR 43.4 billion.
The Complainant owns a European Union Trade Mark Registration for LECLERC under No. 002700656, filed on May 17, 2002 and registered on February 26, 2004 in classes 1 to 45 (the “Trade Mark”). The Complainant also owns its own generic Top-Level Domain (“gTLD”) comprising the Trade Mark – “.leclerc”. The Complainant’s official websites are found at “www.e-leclerc.com” and “www.mouvement.leclerc”.
The Respondent, a Chinese national based in Chengdu, Sichuan registered the Domain Name on September 4, 2017. The Domain Name is connected to a pay-per-click parking page (the “Website”) which makes references to the Trade Mark and has hyperlinks to the Complainant’s websites as well as its competitor’s websites.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The 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 Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
6.2. Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits that the language of the proceeding should be English. The Complainant contends that the Domain Name is in Latin characters and the Website contains English and French words which suggest that the Respondent has knowledge of the English language. Further in response to a letter from the Complainant’s legal representatives, the Respondent responded by email in English thus showing the ability to comprehend and communicate in the English language. The Complainant and its legal representatives do not understand Chinese. If it has to conduct the proceeding in the Chinese language, it will be subject to disproportionate expense and undue delay caused by the cost of translation services and the inconvenience of having to conduct the proceeding in Chinese. Further, English is the most widely used language in international relations and it is also the most neutral language to use in this instance given that one party is French and the other Chinese.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel accepts the Complainant’s submissions. The Respondent has chosen not to respond. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding.
6.3. Substantive Analysis
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to establish if the domain name is identical or confusingly similar to the complainant’s trade mark. The trade mark would generally have to be recognizable within the domain name. In this case the Domain Name integrates the Trade Mark in its entirety except that for the last letter “c” in the Trade Mark being replaced by the letter “k”. Aurally the pronunciation of the Trade Mark and the Domain Name are identical. The difference in this one letter does not negate the confusing similarity encouraged by the Respondent’s complete integration of the Trade Mark in the Domain Name. A misspelling of a trade mark does not eliminate confusion. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the gTLD. It is viewed as a standard registration requirement.
The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it 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 has been commonly known by the domain name, even if it has acquired no trade mark 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 trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of production always remaining on the complainant.
The Complainant contends that the Respondent is not commonly known by the Domain Name or the Trade Mark. The Complainant has no commercial link with the Respondent. It has not granted the Respondent any authorization, licence or any right whatsoever to use the Trade Mark or any mark similar to the Trade Mark as part of the Domain Name. Nor is the Respondent an authorised dealer, licensee or distributor of the Complainant. The Website does not show there to be a bona fide offering of goods or services.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant’s trade mark when he registered the Domain Name. It is implausible that he was unaware of the Complainant when he registered the Domain Name given the reputation of the Complainant. F
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The terms “leclerc” or “leclerk” do not have any dictionary significance. It is striking that the letter “k” which has the same phonetic sound as “c” is used to replace the last letter of the Trade Mark which is typical in typosquatting cases. It is clearly inconceivable that the Domain Name was selected by the Respondent without the Complainant in mind. References to the Trade Mark on the Website is an indicator of fore knowledge on the part of the Respondent of the Trade Mark prior to registration. Further, as outlined under the second element above, the clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the Domain Name is also a significant factor to consider (as stated in section 3.1.1 of WIPO Overview 3.0). The Domain Name falls into the category stated above and the Panel finds that registration is in bad faith
The Panel also concludes that the actual use of the Domain Name is in bad faith. The use of a misspelling of the Trade Mark as the Domain Name is intended to capture Internet traffic from Internet users who are looking for the Complainant’s products. Once on the Website, references to the Trade Mark on the pay-per-click parking page which will no doubt profit the Respondent. In addition, the Respondent’s providing the Complainant with the choice to pay him USD 500 to transfer the Domain Name or pay the larger sum of USD 1,500 to start the UDRP process is a clear demonstration that the Domain Name has been used in bad faith. The offer to transfer the domain names for sums exceeding the reasonable cost of registration and maintenance falls squarely within the circumstances in paragraph 4(b)(i) of the Policy which is evidence of bad faith. The Respondent has not raised any substantive points to challenge these allegations. Considering the circumstances, the Panel considers that this domain name was also used in bad faith.
The above is clearly bad faith under paragraph 4(b)(iv) of the Policy and the Panel concludes that the Respondent’s registration and use of the Domain Name is in bad faith.
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, <leclerk.org>, be transferred to the Complainant.
Date: January 2, 2018