WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Association des Centres Distributeurs E. Leclerc - A.C.D. Lec v. Wang Lian Feng
Case No. D2018-0659
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 Wang Lian Feng of Beijing, China.
2. The Domain Names and Registrar
The disputed domain names <leclerc.online> and <leclerc.tech> are 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 March 23, 2018. On March 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 27, 2018, 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 March 28, 2018, the Center sent an email in English and Chinese regarding the language of the proceedings. The Complainant requested that English be the language of the proceedings on the same day. 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 April 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 25, 2018.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on May 2, 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 is a French association, Association des Centres Distributeurs E. Leclerc or ACD Lec, whereby “E. Leclerc” or “Lec” refers to the last name of the founder of the association, being Mr. Edouard Leclerc. The Complainant operates a chain of supermarkets and hypermarkets in France and in various other European countries.
The Complainant owns a trademark registration (word mark) for LECLERC in the European Union (“EU”). The Complainant’s trademark was successfully registered as an EU trademark on February 26, 2004 (registration no. 002700656).
The disputed domain names were both registered on December 5, 2017.
The disputed domain names resolve to inactive websites.
5. Parties’ Contentions
The Complainant essentially contends that the disputed domain names are confusingly similar to its prior trademark for LECLERC, that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names were registered, and are being used in bad faith.
The Complainant claims that its brand has obtained a strong reputation in France as well as in other European countries where the Complainant is active. The Complainant has also provided evidence establishing that its LECLERC trademarks are used intensively and have developed a substantial reputation and recognition.
The Complainant has also provided evidence that the disputed domain names are linked to inactive websites. The Complainant essentially contends that even though those websites are inactive, they are still registered and used in bad faith since they cause consumer confusion, they are not used legitimately or fairly and because the disputed domain names disturb the Complainant’s business. The Complainant contends that such use was not authored or permitted by the Complainant.
The Complainant requests the transfer of the disputed domain names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Issue: Language of proceedings
Pursuant to paragraph 11(a) of the Rules, the language of the administrative 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. The Panel notes that the Complainant’s request that English be the language of the proceedings on the basis, inter alia, that it is the fairest language (the Complainant being based in France and the Respondent being based in China) and that the Complainant will incur considerable expenses in retaining the services of a translator to translate the Complaint into Chinese. The Panel also notes that no evidence or arguments have been submitted by the Respondent in reply, even though it was given the chance to do so. The Panel therefore rules that the language of proceedings shall be English.
6.2. Substantive Issues
The Policy requires the Complainant to prove three elements:
(i) the disputed domain names are 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 disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Based on the evidence submitted, the Panel’s findings are as follows:
A. Identical or Confusingly Similar
The Panel finds that the Complainant has shown that it has valid rights in the sign LECLERC based on its intensive use and registration of the same as a trademark.
Moreover, the disputed domain names are identical to the Complainant’s trademark LECLERC, incorporating it in its entirety. The generic Top-Level Domains (“gTLDs”) “.online” and “.tech” do not differentiate the disputed domain names from the Complainant’s trademark.
Accordingly, the Panel rules that the disputed domain names are identical to the Complainant’s trademark and the first element required by the Policy has been fulfilled.
B. Rights or Legitimate Interests
The Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has not granted license or permission for the Respondent to register the disputed domain names fully incorporating the Complainant’s trademarks. Moreover, as stated before in Pharmacia & Upjohn Company v. Moreonline, WIPO Case No. D2000-0134, “mere registration does not establish rights or legitimate interests in the disputed domain name”. The Panel notes that no apparent active use is being made of the disputed domain names, and that none of the circumstances giving rise to any rights or legitimate interests, as envisaged by paragraph 4(c) of the Policy, would appear to apply. The Panel notes that no evidence or arguments have been submitted by the Respondent in reply. The Panel therefore rules that the Complainant has satisfied the requirements of the second requirement under the Policy.
C. Registered and Used in Bad Faith
Given the reputation and fame of the Complainant’s trademark, the registration of the disputed domain names is clearly intended to mislead and attract consumers to the disputed domain names. The choice of gTLDs is in this case even likely to increase the likelihood of confusion. It may induce Internet users to believe that there is an association between the disputed domain names and the Complainant, as it suggests that the disputed domain names lead to the official online marketplace for goods and services marketed by the Complainant. In the Panel’s view, this clearly indicates the bad faith of the Respondent, and the Panel therefore rules that it has been demonstrated that the Respondent registered the disputed domain names in bad faith.
As to use of the disputed domain names in bad faith, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition states in this regard: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding”. Having regard to all elements of the case at hand, and in particular to the identity between the Complainant’s trademark and the disputed domain names, the distinctiveness and reputation of the Complainant’s trademark and the Respondent’s provision of false contact details in the WhoIs records for the disputed domain names, the Panel rules that it has been demonstrated that the Respondent has used and is using the disputed domain names in bad faith.
Moreover, the Respondent has failed to provide any response or evidence to otherwise establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under 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 names, <leclerc.online> and <leclerc.tech> be transferred to the Complainant.
Deanna Wong Wai Man
Date: May 14, 2018