WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Association des Centres Distributeurs E. Leclerc - ACD Lec v. WhoisGuard Protected, WhoisGuard, Inc. / Robert Jurek
Case No. D2017-2552
1. The Parties
The Complainant is Association des Centres Distributeurs E. Leclerc - ACD Lec of lvry-sur-Seine, France, represented by Inlex IP Expertise, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Robert Jurek of Eagan, Minnesota, United States of America.
2. The Domain Name and Registrar
The disputed domain name <leclerc-officiel.com> is registered with NameCheap, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 21, 2017. On the same day, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the disputed domain name. On December 21, 2017, the Registrar transmitted by e-mail 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 e-mail communication to the Complainant on December 26, 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 December 26, 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 January 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 5, 2018.
The Center appointed Nayiri Boghossian as the sole panelist in this matter on March 5, 2018. 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 owns European Union trademark registration for LECLERC (Registration No 002700656, filed on May 17, 2002, and registered on February 26, 2004).
The Respondent registered the disputed domain name on September 8, 2017. The disputed domain name does not resolve to an active website.
5. Parties' Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant owns many trademark registrations for LECLERC and is a well-known chain of supermarkets. The disputed domain name postdates the trademark registrations of the Complainant. The use of the generic term "officiel" does not eliminate confusion with the Complainant's trademark nor does the use of the generic Top-Level Domain (gTLD) ".com".
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name as there is no evidence to show that the Respondent is commonly known by the domain name or the term "leclerc" nor that it is making a legitimate noncommercial or fair use of it. In addition, the Respondent was not authorized by the Complainant to use the trademark LECLERC. In fact, the website to which the disputed domain name resolves is inactive.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The trademark of the Complainant is well-known in France and its chain of supermarkets are well-known not only in France but also in other European countries. The Complainant owns and operates 660 stores and owns a 20 percent market share. It is unlikely that the Respondent was not aware of the Complainant, its trademark and its business when registering the disputed domain name. Furthermore, the term "leclerc" is not a dictionary word either in French or English and the Respondent has concealed its identity. The disputed domain name is being used in bad faith as the Complainant has no rights or legitimate interests in the disputed domain name and is furthermore causing disruption and harm to the Complainant's business and image as the disputed domain name creates the impression of being affiliated with the Complainant while the website to which it resolves does not operate properly. In addition, the Respondent did not respond to the Complainant's cease-and-desist letter.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant holds a trademark registration for the trademark LECLERC in the European Union. The Panel is satisfied that the Complainant has established its ownership of the trademark LECLERC. The disputed domain name comprises the Complainant's trademark LECLERC in its entirety combined with the word "officiel" which means in English "official" and does not eliminate the confusing similarity with the trademark LECLERC particularly as the trademark LECLERC represents the first and main part of the disputed domain name. The gTLD ".com" should typically be ignored when assessing confusing similarity as established by prior UDRP panels.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that it never authorized the Respondent to use its trademark as part of the disputed domain name.
The Respondent has not provided evidence of circumstances of the types specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name. Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The element of bad faith is evidenced by the fact that the trademark LECLERC is registered since 2004 while the disputed domain name is registered 13 years thereafter. Hence, it must be that the Respondent was aware of the Complainant and its trademark when it registered the disputed domain name.
The website to which the disputed domain name resolves is non-operative. Hence, we find ourselves before a scenario of passive holding which is considered a sign of bad faith in many UDRP decisions. Furthermore, the Respondent did not respond to the Complainant's cease-and-desist letter nor has the Respondent provided a Response to the Complaint demonstrating actual or contemplated good faith use. In addition, there is no explanation of the Respondent's choice of the word "leclerc". Therefore, the Panel concludes that the disputed domain name is being used in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) 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 <leclerc-officiel.com> be transferred to the Complainant.
Date: March 15, 2018